COURT DISMISSES FALSE ADVERTISING CLAIMS BASED ON FAULTY UL CERTIFICATION CHALLENGE

In Board-Tech Electronics Co, Ltd v Eaton Electric Holdings LCC, 2017 WL 4990659 (SDNY October 31 2017), plaintiff and defendant competed in the lighting fixtures business. Board-Tech filed suit asserting that Eaton’s labeling of its lighting switches as “UL Certified” was false advertising and marketing under the Lanham Act. Board-Tech alleged that it had done its own testing of Eaton’s switches and found that they did not comply with UL certification standards. However, the court ruled that Board-Tech failed to allege an actionable falsity as Eaton had authorization to use the certification mark. The court viewed Board-Tech’s independent testing of Eaton’s switches as a usurpation of UL’s authority and responsibility as the certification mark owner. Indeed, the court was concerned that allowing such a suit to go forward would invite others to police certification marks in order to gain access to competitive information. In dismissing the case, the court suggested that if Board-Tech found UL derelict in its responsibilities, it had the option to petition to cancel the registration. This article first appeared on WTR Daily, part of World Trademark Review, in November of 2017. For further information, please go to

http://www.worldtrademarkreview.com/.

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