In the U.S., at the federal level, the Lanham Act is the main statute that governs trademark rights. Among the most important trademark rights that are protected is the right to exclusive use. That is, the Lanham Act prohibits infringement of a valid trademark by others.

There has long been a legal debate about the international reach of the Lanham Act and, in particular, about whether the Lanham Act reaches acts of infringement that occur outside of the borders of the U.S. Many U.S. Circuit Courts of Appeal have held that the Lanham Act DOES reach such international conduct. Further, the courts have held that, based on such infringing acts, U.S. plaintiffs are entitled to damages from such international-based infringement and that injunctions can be issued that cover the international behavior of infringing defendants.

However, in June 2023, the U.S. Supreme Court issued an opinion that rejected many of the decisions of the Courts of Appeals and limited the international reach of the Lanham Act. See Abitron Austria GmbH v. Hetronic International, Inc., Case No. 21–1043 (2023). The case involved alleged infringement by a German company against an American company involving industrial equipment remote control devices sold under the trademark HETRONIC.

Under the court’s analysis, deciding whether a U.S. statute applies extraterritorially involves a two-step process. The first step is to see if the statute explicitly and clearly indicates Congress’ intent to have the statute apply overseas. In this case, the U.S. Supreme Court held that Congress had made no such clear indication in the Lanham Act. Thus, as a general matter, the Lanham Act has no international reach.

However, any domestic-focused statute can reach foreign defendants under certain circumstances. Thus, in step two of the court’s analysis, the court must determine the “focus” of the applicable statute and then evaluate claims involving both domestic and foreign conduct, separating the activity that matters to the “focus” from the activity that does not. Put another way, as the court stated, “[t]he ultimate question regarding permissible domestic application turns on the location of the conduct relevant to the focus.”

The parties to the case and the amicus curiae offered various suggested “focus” points of the Lanham Act, including preventing infringing use of trademarks, protecting the goodwill of mark owners, and preventing consumer confusion. The Supreme Court rejected these and, taking words directly from the Lanham Act, stated that the proper focus is “use in commerce.” As the court concluded, “‘use in commerce’ provides the dividing line between foreign and domestic applications of these Lanham Act provisions.”

It should be noted that, despite the seeming simplicity, the court made clear that “use in commerce” DOES contain an attached requirement that infringing use in commerce must also cause confusion among consumers. That is the basic definition of infringement in the Lanham Act.

In any event, Abitron’s rule will, in theory, severely limit the international reach of the Lanham Act. The Lanham Act will not reach trademark infringement if all of the “use in commerce” is/was located overseas. Of course, with clever litigation strategies and argumentation, in given cases, it might not be too difficult to convince a U.S. judge that “use in commerce” occurred domestically, given the international reach of the internet and the connectedness of the global marketplace.

Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Post-Abitron Litigation Trends: How Courts Are Applying the ‘Use in Commerce’ Test

Since the Supreme Court issued Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), district courts and circuit courts have been working to apply the “use in commerce” test to the specific facts of international trademark cases. Several courts have held that even minimal domestic use in commerce — such as a foreign manufacturer shipping infringing goods into the United States, placing infringing goods on a U.S.-facing website, or creating consumer confusion in U.S. markets through domestic advertising — is sufficient to invoke Lanham Act jurisdiction. For U.S. brand owners with international exposure, the Lanham Act remains a viable enforcement tool when at least some infringing activity has a domestic nexus.

Alternative International Enforcement Strategies

For infringement occurring entirely outside the United States — where Abitron clearly forecloses Lanham Act claims — trademark owners have a range of alternative enforcement mechanisms:

• Madrid Protocol registrations. The Madrid Protocol (administered by WIPO) allows U.S. trademark owners to file a single international application designating 130+ member countries. Protection in each designated country is governed by local law and is the most cost-effective method for maintaining enforceable rights internationally.
• WIPO UDRP proceedings. When international trademark infringement occurs through a domain name, the UDRP provides a fast, inexpensive administrative proceeding before a WIPO-appointed panel. A successful complainant can obtain domain transfer within 60 to 90 days without filing a lawsuit in any country.
• Customs recordation and CBP enforcement. U.S. Customs and Border Protection allows trademark owners to record federal registrations with CBP’s Intellectual Property Rights branch. When infringing goods are imported, CBP can seize and forfeit them at the border — a powerful tool against goods manufactured abroad for U.S. sale.
• International Trade Commission Section 337 proceedings. For significant commercial infringement where infringing goods are imported into the United States, a Section 337 investigation can result in an exclusion order barring goods from entry. Section 337 proceedings are faster than district court litigation and result in in rem relief against the goods themselves.
• Local counsel and national enforcement. For infringement concentrated in a specific country, retaining local trademark counsel to pursue national enforcement is often the most direct approach. Revision Legal coordinates multi-jurisdictional enforcement strategies with trademark counsel worldwide.

Gray Market Goods and Parallel Imports

A related international trademark issue that Abitron did not address is the treatment of “gray market” goods — genuine goods bearing an authentic trademark that are manufactured abroad and imported into the United States without the U.S. trademark owner’s authorization. Under K Mart Corp. v. Cartier, Inc., 486 U.S. 281 (1988), and its progeny, the legality of gray market imports depends primarily on whether the U.S. trademark owner is affiliated with the foreign manufacturer and whether the goods are materially different from those authorized for U.S. sale. Material differences — including warranty terms, labeling, safety certifications, and product formulation — can support a Lanham Act infringement claim against gray market importers.

Trademark owners should ensure that products authorized for international markets include clear geographic limitations in distribution agreements, register trademarks with CBP for border enforcement, and document material differences between U.S. and international product versions consistently. Contact Revision Legal’s trademark attorneys at (855) 473-8474 to develop an international enforcement strategy tailored to your situation.