Vanity Fair Mills, Inc. v. T. Eaton Co., Ltd.

Mills (plaintiff), a U.S. underwear manufacturer using the "Vanity Fair" mark since 1914 (including in Canada since 1917), and Eaton (defendant), a Canadian retailer that had its own "Vanity Fair" clothing mark registration in Canada since 1915 (though denied for underwear due to Mills's priority), had a period where Eaton sold Mills's branded goods before resuming use of its own "Vanity Fair" mark on its own, cheaper goods in 1953, allegedly also advertising and selling to U.S. consumers by mail. Mills sued in U.S. federal court for infringement in both the U.S. and Canada; the district court found the American and Canadian issues too intertwined to separate, concluded it lacked jurisdiction over the Canadian conduct, and dismissed with leave to amend limited to American claims. Mills appealed.