The Supreme Court recently provided a clear guiding principle that the Lanham Act’s trademark infringement provisions only extend to where the claimed infringing use in commerce is domestic.

But in so doing, the high court reversed course on decades of extraterritoriality case law, left many questions unanswered, and may have unsettled the contours of trademark law for even domestic conduct.

The Dispute

Abitron Austria GmbH v. Hetronic International, Inc. centers around trademark and trade dress infringement claims by remote-control maker Hetronic against its former European distributor Abitron. After the parties’ relationship soured, Abitron began selling its own reverse-engineered versions of Hetronic’s controls with identical or similar trademarks and trade dress.

Hetronic sued in Oklahoma federal court, even though Abitron was a foreign company and made 97% of its sales outside the US. A jury found Abitron liable and awarded $96 million in damages, including for Abitron’s foreign sales.

On appeal, the Tenth Circuit affirmed liability for Abitron’s foreign conduct. It relied on Steele v. Bulova Watch Co., where the Supreme Court had previously applied the Lanham Act extraterritorially, and noted that all circuits later addressing the issue had relied on ...

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