Trademarks

Abitron v. Hetronic: Drawing the Line at Domestic 'Use in Commerce'

The Supreme Court holds the Lanham Act's core infringement provisions reach only conduct where the infringing use in commerce is domestic, vacating a $96 million judgment.

April 7, 2026
Shipping containers at an international port at dusk
Abitron narrows the Lanham Act to infringing 'use in commerce' that occurs on U.S. soil. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Abitron Austria GmbH v. Hetronic International, Inc., No. 21-1043 (U.S. June 29, 2023), the Supreme Court confronted a question that had divided the lower courts for decades: how far across national borders do the Lanham Act’s principal infringement provisions reach? Argued March 21, 2023, and decided June 29, 2023, the case produced a unanimous judgment vacating and remanding the Tenth Circuit’s decision, but a sharply divided rationale. Justice Alito wrote for a five-Justice majority (joined by Justices Thomas, Gorsuch, Kavanaugh, and Jackson), holding that 15 U.S.C. §§ 1114(1)(a) and 1125(a)(1) are not extraterritorial and extend only to claims in which the infringing “use in commerce” is domestic. Justice Jackson filed a concurrence; Justice Sotomayor, joined by Chief Justice Roberts and Justices Kagan and Barrett, concurred only in the judgment, objecting to the majority’s conduct-centered test.

At a glance

  • Case: Abitron Austria GmbH v. Hetronic International, Inc., No. 21-1043
  • Court: Supreme Court of the United States
  • Argued / Decided: March 21, 2023 / June 29, 2023
  • Vote: Unanimous as to the judgment (vacate and remand); 5-4 split as to the governing test
  • Majority: Alito, J., joined by Thomas, Gorsuch, Kavanaugh, and Jackson, JJ.
  • Separate opinions: Jackson, J., concurring; Sotomayor, J., concurring in the judgment, joined by Roberts, C.J., and Kagan and Barrett, JJ.
  • Holding: Sections 1114(1)(a) and 1125(a)(1) are not extraterritorial; they reach only conduct where the claimed infringing “use in commerce” occurs in the United States.
  • Disposition: Tenth Circuit judgment vacated and remanded.

Hetronic International, an Oklahoma manufacturer of radio remote controls for construction equipment, sued a cluster of foreign defendants—former licensees and distributors operating chiefly in Europe—for selling products bearing Hetronic’s marks. Only about three percent of the contested sales were destined for the United States; the vast bulk were foreign sales to foreign customers. A federal jury in the Western District of Oklahoma nonetheless awarded roughly $96 million in Lanham Act damages premised on the defendants’ worldwide sales, and the district court entered a broad injunction. The Tenth Circuit trimmed the injunction’s geographic sweep but otherwise affirmed, reasoning that the statute reached the defendants’ foreign infringing conduct. The Supreme Court took the case to resolve how the presumption against extraterritoriality applies to the Act.

The presumption against extraterritoriality

The decision rests on a canon the Court has steadily fortified over the last fifteen years: a presumption that federal statutes “appl[y] only within the territorial jurisdiction of the United States” unless Congress affirmatively indicates otherwise. The rationale is part separation of powers and part comity. Courts hesitate to read domestic statutes as governing conduct abroad, both because doing so risks “international discord” and because foreign commerce is the province of the political branches, not the judiciary. The presumption is not a clear-statement formality to be brushed aside whenever a statute mentions “foreign commerce”; it is a substantive default rule that resolves ambiguity against extraterritorial reach.

That framing mattered here because the Lanham Act’s definition of “commerce” expressly includes “all commerce which may lawfully be regulated by Congress”—language Hetronic and the Tenth Circuit treated as evidence Congress intended a global statute. The majority disagreed. A boilerplate jurisdictional definition that simply tracks the outer limit of the Commerce Clause is not the kind of “clear, affirmative indication” the presumption demands. The Court had said as much in RJR Nabisco about analogous language, and it reaffirmed that a generic reference to foreign commerce does not rebut the presumption.

RJR Nabisco’s two-step framework

The Court analyzed the question through the two-step structure it set out in RJR Nabisco, Inc. v. European Community, 579 U.S. 325 (2016).

Step one asks whether the statute gives a clear, affirmative indication that it applies extraterritorially. If it does, the inquiry ends and the provision governs foreign conduct. Applying that standard, the majority held that neither § 1114(1)(a) (registered-mark infringement) nor § 1125(a)(1) (unregistered marks and false designations) contains the requisite signal. The definitional reference to “foreign commerce” was insufficient, so both provisions are not extraterritorial.

Step two then asks whether a particular suit nonetheless seeks a permissible domestic application of the statute. That requires identifying the provision’s “focus”—the object of congressional concern—and asking whether the conduct relevant to that focus occurred on U.S. soil. If the focus-related conduct is domestic, the application is permissible even if other relevant conduct happened abroad; if it is foreign, the suit impermissibly seeks an extraterritorial application. This is where the Justices fractured.

The “use in commerce” focus

For the majority, the dispositive question at step two was simple to state: what conduct is the “focus” of §§ 1114 and 1125? Alito located it in the statutory phrase “use in commerce.” Both provisions prohibit the unauthorized “use in commerce” of a protected mark in a manner likely to cause confusion. That phrase, the Court held, identifies the relevant conduct, and the relevant conduct must be domestic for the statute to apply. In the Court’s words, “use in commerce” is the dividing line between foreign and domestic applications of these provisions.

The majority pointedly rejected the alternative the government had pressed—that the focus is “likelihood of confusion” among U.S. consumers, such that any foreign sale producing domestic confusion would be actionable. Treating confusion as the touchstone, Alito warned, would make virtually every globally marketed product a candidate for U.S. trademark liability and invite precisely the international friction the presumption exists to avoid. Confusion is an element of the violation, but the conduct the statute regulates—and the conduct that must be domestic—is the infringing use in commerce itself.

The concurrence

Justice Jackson joined the majority in full but wrote separately to flesh out what “use in commerce” means, drawing on the statutory definition that a mark is “used in commerce” when goods bearing it are sold or transported in commerce. Her concurrence suggested the line is not drawn solely at the point of an initial foreign sale: goods first sold abroad could later be “used in commerce” domestically—for instance, when a marked product is resold or displayed in the United States—potentially supporting liability even against a foreign maker. Her gloss signals that “use in commerce” may prove more capacious than a narrow point-of-sale reading.

Justice Sotomayor, joined by the Chief Justice and Justices Kagan and Barrett, concurred only in the judgment. She agreed the Tenth Circuit’s worldwide-damages theory could not stand, but she rejected the majority’s conduct-only test as a misapplication of step two. In her view, the focus of the Lanham Act is protection against consumer confusion, so the proper question is whether confusion is likely in the United States, regardless of where the defendant’s conduct occurred. She accused the majority of collapsing the framework into a “myopic conduct-only” rule that ignores the statute’s protective purpose and the Court’s own precedent. The two camps thus agreed on the result but disagreed fundamentally about whether the geography of the wrong or the geography of the harm controls.

Open questions

  • What counts as domestic “use in commerce”? The majority did not define the term’s outer bounds, and Justice Jackson’s concurrence and Justice Sotomayor’s opinion sketch competing visions. Lower courts must now decide whether a domestic resale, importation, or in-country display by a third party suffices to expose a foreign manufacturer.
  • How does this interact with importation and counterfeiting statutes? Section 1124 and the Tariff Act address goods crossing the border; their relationship to the new “use in commerce” line is unsettled.
  • Does the same focus analysis govern dilution and other Lanham Act claims? The Court addressed only §§ 1114(1)(a) and 1125(a)(1), leaving the framework’s reach to dilution and false-advertising theories for another day.
  • What happens on remand? Hetronic’s recovery must be recalculated to exclude purely foreign uses, but the precise damages methodology for the small domestic slice remains to be worked out.

Implications

  • Worldwide damages theories are dead on arrival. A U.S. plaintiff can no longer leverage a domestic foothold to recover for a foreign defendant’s foreign sales to foreign customers.
  • Foreign trademark registration is now essential. Brand owners who relied on the Lanham Act as a global enforcement backstop must instead register and litigate in the jurisdictions where infringement actually occurs.
  • The contested ground is “use in commerce.” Litigation will shift from whether the Act applies abroad to whether enough infringing use touched the United States—pleading and proof will focus on domestic transactions, imports, and downstream domestic uses.
  • Plaintiffs may emphasize importation and downstream conduct. Following Justice Jackson’s reasoning, claimants will try to show that marked goods were used in U.S. commerce even when the initial sale was overseas.
  • Comity is ascendant. The decision continues the Court’s trend of reading IP and economic-regulation statutes narrowly to avoid conflict with foreign law.

Frequently asked questions

Does Abitron mean foreign infringement is never actionable in U.S. courts? No. It means the infringing “use in commerce” must be domestic. Foreign-only sales to foreign customers are outside §§ 1114(1)(a) and 1125(a)(1), but conduct that constitutes a domestic use in commerce—including, potentially, downstream domestic uses—can still support a claim.

Was the decision unanimous? The judgment vacating and remanding was unanimous, but the Court split 5-4 on the governing test. Five Justices adopted a “use in commerce” conduct test; four concurred only in the judgment, favoring a focus on likelihood of domestic consumer confusion.

What should brand owners do differently after Abitron? Treat the Lanham Act as a domestic tool, not a global one. Secure trademark registrations and enforcement mechanisms in foreign markets, and, in U.S. litigation, build the record around infringing uses that occurred in the United States.

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