Supreme Court Holds Lanham Act Does Not Apply Extraterritorially

For prior TLB coverage of this case, see here.

The Supreme Court today held unanimously in Abitron Austria GmbH v. Hetronic International Inc. that the Lanham Act (the federal trademark statute) does not rebut the presumption against extraterritoriality. Justice Alito, writing for a five-Justice majority (including Justices Thomas, Gorsuch, Kavanaugh, and Jackson), further held that a domestic application of the Lanham Act requires the allegedly infringing mark to be used in commerce within the United States. The majority opinion emphasized that conduct related to the statute’s focus must occur within the United States in order for a claim to entail a domestic application of a federal statute.

Justice Jackson wrote separately to explain that she understands “use in commerce” broadly to encompass resale of infringing goods within the United States, even if the defendant itself did not sell the allegedly infringing product here.

Justice Sotomayor (joined by Chief Justice Roberts and Justices Kagan and Barrett) concurred in the judgment. While she agreed that the Lanham Act does not rebut the presumption against extraterritoriality, she would hold that the Lanham Act still applies whenever there is a likelihood of consumer confusion in the United States. Under the approach of the concurrence, a federal statute applies domestically “when the object of the statute’s focus is found in, or occurs in, the United States.”

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