Supreme Court to Decide Extraterritorial Reach of Trademark Statute
November 4, 2022
Today the Supreme Court granted review in Abitron Austria GmbH v. Hetronic International, Inc. to consider when the federal trademark statute, known as the Lanham Act, applies extraterritorially. In Steele v. Bulova Watch (1952), the Court held that the act applied extraterritorially to the infringement of a U.S. trademark in Mexico. But lower courts have developed different tests for implementing Steele, creating a circuit split.
In recommending a grant of certiorari, the Solicitor General argued that the Court should apply its current two-step framework for the presumption against extraterritoriality to the Lanham Act. The result of that approach, she argued, would be that the Lanham Act applies only when infringement of a U.S. trademark abroad is likely to cause consumer confusion in the United States.
As I have previously written, the SG’s position makes a good deal of sense. But it also raises the important question whether courts should apply changed canons of statutory interpretation retroactively. The Supreme Court’s current two-step approach dates only from 2010. When Congress passed the Lanham Act in 1946, the Supreme Court was applying (inconsistently) a different presumption against extraterritoriality. And the Court pointedly refused to apply any presumption against extraterritoriality when it construed the Lanham Act in Steele. It will be interesting to see whether the Court addresses the question of changing canons directly in Abitron or simply ignores the question as it has done in the past.