Two Years After Abitron: Navigating the Limits of US Trademark Enforcement Abroad
Two years after the US Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc., US trademark owners and global businesses continue to grapple with its implications for cross-border enforcement. The ruling marked a significant shift in how—and where—trademark rights can be asserted under the Lanham Act, prompting many companies to reassess their international intellectual property strategies.
The dispute arose when Hetronic, a US-based manufacturer of radio remote controls, sued its former European distributor, Abitron, for selling products that closely resembled Hetronic’s and bore its trademarks and distinctive trade dress. A US jury ultimately awarded Hetronic over $90 million in damages, including for sales occurring outside the United States. On review, the Supreme Court reversed, holding that the Lanham Act does not apply extraterritorially absent a clear “use in commerce” occurring within the United States.
Writing for the majority, Justice Alito applied a two-step framework for assessing extraterritoriality. The Court concluded that the relevant provisions of the Lanham Act—§§ 1114(1)(a) and 1125(a)(1)—do not rebut the presumption against extraterritoriality. The statute’s focus, the Court explained, is on the location of the infringing “use in commerce.” As such, only uses that occur domestically fall within the Lanham Act’s reach.
In the two years since Abitron, courts and practitioners have worked to define the practical scope of what constitutes “use in commerce” within the United States. The rise of e-commerce and complex global supply chains has made it increasingly challenging to determine when foreign sales or online offers to US consumers trigger Lanham Act protections. As a result, courts have reached varied conclusions, and the boundaries of domestic use under the Lanham Act remain a developing and sometimes uncertain area of law for trademark owners.
From a practical standpoint, the decision underscores the importance of proactively managing trademark rights outside the United States. US companies can no longer assume that the Lanham Act will provide a remedy for foreign infringements with domestic consequences. Instead, businesses must ensure that trademarks are registered and enforceable in key foreign jurisdictions—and that their contracts with international partners include clear IP protections and enforcement mechanisms.
As global commerce continues to expand, Abitron serves as a reminder of the territorial limits of US trademark law and the growing importance of a coordinated international trademark enforcement strategy.
This article is available in the Jenner & Block Japan Newsletter. / この記事はJenner & Blockニュースレターに掲載されています。
Writing for the majority, Justice Alito applied a two-step framework for assessing extraterritoriality. The Court concluded that the relevant provisions of the Lanham Act—§§ 1114(1)(a) and 1125(a)(1)—do not rebut the presumption against extraterritoriality. The statute’s focus, the Court explained, is on the location of the infringing “use in commerce.” As such, only uses that occur domestically fall within the Lanham Act’s reach.
In the two years since Abitron, courts and practitioners have worked to define the practical scope of what constitutes “use in commerce” within the United States. The rise of e-commerce and complex global supply chains has made it increasingly challenging to determine when foreign sales or online offers to US consumers trigger Lanham Act protections. As a result, courts have reached varied conclusions, and the boundaries of domestic use under the Lanham Act remain a developing and sometimes uncertain area of law for trademark owners.
From a practical standpoint, the decision underscores the importance of proactively managing trademark rights outside the United States. US companies can no longer assume that the Lanham Act will provide a remedy for foreign infringements with domestic consequences. Instead, businesses must ensure that trademarks are registered and enforceable in key foreign jurisdictions—and that their contracts with international partners include clear IP protections and enforcement mechanisms.
As global commerce continues to expand, Abitron serves as a reminder of the territorial limits of US trademark law and the growing importance of a coordinated international trademark enforcement strategy.
This article is available in the Jenner & Block Japan Newsletter. / この記事はJenner & Blockニュースレターに掲載されています。
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© 2026 Jenner & Block LLP. Attorney Advertising. Jenner & Block LLP is an Illinois Limited Liability Partnership including professional corporations. This publication, presentation, or event is not intended to provide legal advice but to provide information on legal matters and/or firm news of interest to our clients and colleagues. Readers or attendees should seek specific legal advice before taking any action with respect to matters mentioned in this publication or at this event. The attorney responsible for this communication is Brent E. Kidwell, Jenner & Block LLP, 353 N. Clark Street, Chicago, IL 60654-3456. Prior results do not guarantee a similar outcome. Jenner & Block London LLP, an affiliate of Jenner & Block LLP, is a limited liability partnership established under the laws of the State of Delaware, USA and is authorised and regulated by the Solicitors Regulation Authority with SRA number 615729. Information regarding the data we collect and the rights you have over your data can be found in our Privacy Notice. For further inquiries, please contact dataprotection@jenner.com.
Two years after the US Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc., US trademark owners and global businesses continue to grapple with its implications for cross-border enforcement. The ruling marked a significant shift in how—and where—trademark rights can be asserted under the Lanham Act, prompting many companies to reassess their international intellectual property strategies.
The dispute arose when Hetronic, a US-based manufacturer of radio remote controls, sued its former European distributor, Abitron, for selling products that closely resembled Hetronic’s and bore its trademarks and distinctive trade dress. A US jury ultimately awarded Hetronic over $90 million in damages, including for sales occurring outside the United States. On review, the Supreme Court reversed, holding that the Lanham Act does not apply extraterritorially absent a clear “use in commerce” occurring within the United States.
Writing for the majority, Justice Alito applied a two-step framework for assessing extraterritoriality. The Court concluded that the relevant provisions of the Lanham Act—§§ 1114(1)(a) and 1125(a)(1)—do not rebut the presumption against extraterritoriality. The statute’s focus, the Court explained, is on the location of the infringing “use in commerce.” As such, only uses that occur domestically fall within the Lanham Act’s reach.
In the two years since Abitron, courts and practitioners have worked to define the practical scope of what constitutes “use in commerce” within the United States. The rise of e-commerce and complex global supply chains has made it increasingly challenging to determine when foreign sales or online offers to US consumers trigger Lanham Act protections. As a result, courts have reached varied conclusions, and the boundaries of domestic use under the Lanham Act remain a developing and sometimes uncertain area of law for trademark owners.
From a practical standpoint, the decision underscores the importance of proactively managing trademark rights outside the United States. US companies can no longer assume that the Lanham Act will provide a remedy for foreign infringements with domestic consequences. Instead, businesses must ensure that trademarks are registered and enforceable in key foreign jurisdictions—and that their contracts with international partners include clear IP protections and enforcement mechanisms.
As global commerce continues to expand, Abitron serves as a reminder of the territorial limits of US trademark law and the growing importance of a coordinated international trademark enforcement strategy.
This article is available in the Jenner & Block Japan Newsletter. / この記事はJenner & Blockニュースレターに掲載されています。
Writing for the majority, Justice Alito applied a two-step framework for assessing extraterritoriality. The Court concluded that the relevant provisions of the Lanham Act—§§ 1114(1)(a) and 1125(a)(1)—do not rebut the presumption against extraterritoriality. The statute’s focus, the Court explained, is on the location of the infringing “use in commerce.” As such, only uses that occur domestically fall within the Lanham Act’s reach.
In the two years since Abitron, courts and practitioners have worked to define the practical scope of what constitutes “use in commerce” within the United States. The rise of e-commerce and complex global supply chains has made it increasingly challenging to determine when foreign sales or online offers to US consumers trigger Lanham Act protections. As a result, courts have reached varied conclusions, and the boundaries of domestic use under the Lanham Act remain a developing and sometimes uncertain area of law for trademark owners.
From a practical standpoint, the decision underscores the importance of proactively managing trademark rights outside the United States. US companies can no longer assume that the Lanham Act will provide a remedy for foreign infringements with domestic consequences. Instead, businesses must ensure that trademarks are registered and enforceable in key foreign jurisdictions—and that their contracts with international partners include clear IP protections and enforcement mechanisms.
As global commerce continues to expand, Abitron serves as a reminder of the territorial limits of US trademark law and the growing importance of a coordinated international trademark enforcement strategy.
This article is available in the Jenner & Block Japan Newsletter. / この記事はJenner & Blockニュースレターに掲載されています。
Related Lawyers
Related Articles
Related Capabilities
© 2026 Jenner & Block LLP. Attorney Advertising. Jenner & Block LLP is an Illinois Limited Liability Partnership including professional corporations. This publication, presentation, or event is not intended to provide legal advice but to provide information on legal matters and/or firm news of interest to our clients and colleagues. Readers or attendees should seek specific legal advice before taking any action with respect to matters mentioned in this publication or at this event. The attorney responsible for this communication is Brent E. Kidwell, Jenner & Block LLP, 353 N. Clark Street, Chicago, IL 60654-3456. Prior results do not guarantee a similar outcome. Jenner & Block London LLP, an affiliate of Jenner & Block LLP, is a limited liability partnership established under the laws of the State of Delaware, USA and is authorised and regulated by the Solicitors Regulation Authority with SRA number 615729. Information regarding the data we collect and the rights you have over your data can be found in our Privacy Notice. For further inquiries, please contact dataprotection@jenner.com.
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