The Lanham Act provides federal protection to, and private rights of enforcement for, both registered and unregistered trademarks in the United States. In 2023, the Supreme Court is set to address the extraterritorial application of the protections provided by the Lanham Act. In particular, the court is positioned, in granting certiorari in Abitron Austria GmbH et al. v. Hetronic International, to resolve a circuit split regarding whether, and to what extent, the Lanham Act may be applied to a foreign entity’s foreign sales that neither reached the United States nor were likely to cause consumer confusion in the United States. Given the historically limited application of the Lanham Act to hold entities liable for infringement of U.S. trademarks due to the sale of infringing products outside of the United States, the court’s decision may profoundly impact the scope of future Lanham Act litigation.

The Lanham Act

The Lanham Act imposes civil liability upon any person who “use[s] in commerce” a “reproduction, counterfeit, copy, or colorable imitation” of a mark registered with the U.S. Patent and Trademark Office if “such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a). It also provides a private cause of action against any person who “uses in commerce” a mark, whether registered or unregistered, that is “likely to cause confusion, or to cause mistake, or to deceive …” 15 U.S.C. 1125(a)(1).