Abitron v. Hetronic: Scoping the Lanham Act’s Domestic “Use in Commerce” Requirement Broadly to Provide Meaningful Protections Against Foreign Trademark Infringement

Mia Juliano

In Abitron Austria GmbH v. Hetronic International, Inc., the Supreme Court of the United States addressed the extraterritorial reach of the Lanham Act (the “Act”), the primary statutory foundation of federal U.S. trademark law that prohibits trademark infringement. The Court applied a canon of statutory interpretation known as the presumption against extraterritoriality—a presumption against applying federal statutes in cases with both domestic and foreign facts—which the Supreme Court has recently strengthened in a triad of cases. The Court held that two provisions of the Lanham Act—§ 1114(1)(a) and § 11125(a)(1)—do not have an extraterritorial reach, a departure from its only prior opinion on the extraterritorial application of the Act. Further, with regard to whether the Plaintiff’s claims involved a permissible domestic application of the statute, the Court held that a suit for trademark infringement under the Act may proceed only if the relevant “use [of the mark] in commerce” occurred domestically. With its decision, the Court significantly altered the framework for analyzing Lanham Act cases involving foreign conduct. The Court intentionally left the meaning of “use in commerce” undefined, finding no occasion to determine the precise contours of the phrase. This Note aims to fill a gap in existing scholarship by defining when a “use in commerce” is domestic in circumstances containing both domestic and foreign facts. Because the Supreme Court is unlikely to consider another case involving the Lanham Act’s extraterritorial scope, this Note provides a framework for subsequent lower courts interpreting such an issue.