Abitron Austria GmbH v. Hetronic Int'l, Inc. ( 2023 )

(Slip Opinion) OCTOBER TERM, 2022 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
ABITRON AUSTRIA GMBH ET AL. v. HETRONIC
INTERNATIONAL, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE TENTH CIRCUIT
No. 21–1043. Argued March 21, 2023—Decided June 29, 2023
This case requires the Court to decide the foreign reach of 15 U. S. C.
§1114(1)(a) and §1125(a)(1), two provisions of the Lanham Act that
prohibit trademark infringement. The case concerns a trademark dis-
pute between Hetronic (a U. S. company) and six foreign parties (col-
lectively Abitron). Hetronic manufactures remote controls for con-
struction equipment. Abitron, once a licensed distributor for Hetronic,
claimed ownership of the rights to much of Hetronic’s intellectual prop-
erty and began employing Hetronic’s marks on products it sold.
Hetronic sued Abitron in the Western District of Oklahoma for
trademark violations under two related provisions of the Lanham Act,
both of which prohibit the unauthorized use in commerce of protected
marks when, inter alia, that use is likely to cause confusion. See
§§1114(1)(a), 1125(a)(1). Hetronic sought damages for Abitron’s in-
fringing acts worldwide. Abitron argued that Hetronic sought an im-
permissible extraterritorial application of the Lanham Act. The Dis-
trict Court rejected Abitron’s argument, and a jury later awarded
Hetronic approximately $96 million in damages related to Abitron’s
global employment of Hetronic’s marks. The District Court also en-
tered a permanent injunction preventing Abitron from using
Hetronic’s marks anywhere in the world. On appeal, the Tenth Circuit
narrowed the injunction, but otherwise affirmed the judgment, con-
cluding that the Lanham Act extended to “all of [Abitron’s] foreign in-
fringing conduct.”
Held: Applying the presumption against extraterritoriality, §1114(1)(a)
and §1125(a)(1) of the Lanham Act are not extraterritorial and extend
only to claims where the infringing use in commerce is domestic.
Pp. 3–15.
2 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Syllabus
(a) The presumption against extraterritoriality reflects the
longstanding principle “that legislation of Congress, unless a contrary
intent appears, is meant to apply only within the territorial jurisdic-
tion of the United States.” Morrison v. National Australia Bank Ltd.,
561 U. S. 247, 255. The presumption “serves to avoid the international
discord that can result when U. S. law is applied to conduct in foreign
countries” and reflects the “commonsense notion that Congress gener-
ally legislates with domestic concerns in mind.” RJR Nabisco, Inc. v.
European Community, 579 U. S. 325, 335–336.
Applying the presumption involves a two-step framework, which
asks at step one whether the statute is extraterritorial. This step
turns on whether “Congress has affirmatively and unmistakably in-
structed that” the provision at issue should “apply to foreign conduct.”
Id., at 335. If Congress has provided such an instruction, then the
provision is extraterritorial. If not, then the provision is not extrater-
ritorial and step two applies. That step resolves whether a suit seeks
a (permissible) domestic or (impermissible) foreign application of the
provision. That determination requires courts to identify the “focus”
of congressional concern underlying the provision at issue, id., at 336,
and then “as[k] whether the conduct relevant to that focus occurred in
United States territory,” WesternGeco LLC v. ION Geophysical Corp.,
585 U. S. ___, ___. Thus, to prove that a claim involves a domestic
application of a statute, “plaintiffs must establish that ‘the conduct rel-
evant to the statute’s focus occurred in the United States.’ ” Nestlé USA,
Inc. v. Doe, 593 U. S. ___, ___ (emphasis added). Step two is designed
to apply the presumption to claims that involve both domestic and for-
eign conduct, separating the activity that matters from the activity
that does not. After all, the Court has long recognized that the pre-
sumption would be meaningless if any domestic conduct could defeat
it. See Morrison, 561 U. S., at 266. Pp. 3–5.
(b) Neither provision at issue provides an express statement of ex-
traterritorial application or any other clear indication that it is one of
the “rare” provisions that nonetheless applies abroad. Both simply
prohibit the use “in commerce” of protected trademarks when that use
“is likely to cause confusion.” §§1114(1)(a), 1125(a)(1). Hetronic main-
tains that the Lanham Act’s definition of “commerce”—“all commerce
which may lawfully be regulated by Congress,” §1127—rebuts the pre-
sumption against extraterritoriality. But this Court’s repeated hold-
ing that “ ‘even statutes . . . that expressly refer to “foreign commerce’ ”
when defining “commerce” are not extraterritorial, Morrison, 561
U. S., at 262–263, dooms Hetronic’s arguments. Pp. 5–7.
(c) Because §1114(1)(a) and §1125(a)(1) are not extraterritorial, the
Court must consider at step two when claims involve “domestic” appli-
Cite as: 600 U. S. ____ (2023) 3
Syllabus
cations of these provisions. Under the proper test, the ultimate ques-
tion regarding permissible domestic application turns on the location
of the conduct relevant to the focus of the statutory provisions. But
much of the parties’ dispute in this case misses this critical point and
centers on the “focus” of the relevant provisions without regard to the
“conduct relevant to that focus.” WesternGeco, 585 U. S., at ___.
Abitron contends that §1114(1)(a) and §1125(a)(1) focus on preventing
infringing use of trademarks, while Hetronic argues that they focus
both on protecting the goodwill of mark owners and on preventing con-
sumer confusion. The United States as amicus curiae argues that the
provisions focus only on likely consumer confusion. The parties all
seek support for their positions in Steele v. Bulova Watch Co., 344 U. S.
280, but because Steele implicated both domestic conduct and a likeli-
hood of domestic confusion, Steele does not answer which one deter-
mines the domestic applications of the provisions here.
The ultimate question regarding permissible domestic application
turns on the location of the conduct relevant to the focus. See, e.g.,
RJR Nabisco, 579 U. S., at 337. And the conduct relevant to any focus
the parties have proffered is infringing use in commerce, as defined by
the Act. This conclusion follows from the text and context of both pro-
visions. Both provisions prohibit the unauthorized “use in commerce”
of a protected trademark when that use “is likely to cause confusion.”
In other words, Congress proscribed the use of a mark in commerce
under certain conditions. This conduct, to be sure, must create a suf-
ficient risk of confusion, but confusion is not a separate requirement;
rather, it is simply a necessary characteristic of an offending use. Be-
cause Congress has premised liability on a specific action (a particular
sort of use in commerce), that specific action would be the conduct rel-
evant to any focus on offer today. WesternGeco, 585 U. S., at ___–___.
In sum, §1114(1)(a) and §1125(a)(1) are not extraterritorial, and
“use in commerce” provides the dividing line between foreign and do-
mestic applications of these provisions. The proceedings below were
not in accord with this understanding of extraterritoriality. Pp. 7–10,
14–15.
10 F. 4th 1016, vacated and remanded.
ALITO, J., delivered the opinion of the Court, in which THOMAS, GOR-
SUCH, KAVANAUGH, and JACKSON, JJ., joined. JACKSON, J., filed a concur-
ring opinion. SOTOMAYOR, J., filed an opinion concurring in the judg-
ment, in which ROBERTS, C. J., and KAGAN and BARRETT, JJ., joined.
Cite as: 600 U. S. ____ (2023) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
United States Reports. Readers are requested to notify the Reporter of
Decisions, Supreme Court of the United States, Washington, D. C. 20543,
pio@supremecourt.gov, of any typographical or other formal errors.
SUPREME COURT OF THE UNITED STATES
_________________
No. 21–1043
_________________
ABITRON AUSTRIA GMBH, ET AL., PETITIONERS v.
HETRONIC INTERNATIONAL, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE TENTH CIRCUIT
[June 29, 2023]
JUSTICE ALITO delivered the opinion of the Court.
This case requires us to decide the foreign reach of 15
U. S. C. §1114(1)(a) and §1125(a)(1), two provisions of the
Lanham Act that prohibit trademark infringement. Apply-
ing the presumption against extraterritoriality, we hold
that these provisions are not extraterritorial and that they
extend only to claims where the claimed infringing use in
commerce is domestic.
I
This case concerns a trademark dispute between a United
States company (Hetronic International, Inc.) and six for-
eign parties (five companies and one individual (collectively
Abitron)).1 Hetronic manufactures radio remote controls
for construction equipment. It sells and services these
products, which employ “a distinctive black-and-yellow
color scheme to distinguish them from those of its competi-
tors,” in more than 45 countries. 10 F. 4th 1016, 1024
(CA10 2021) (case below).
——————
1 The foreign companies are Abitron Germany GmbH, Abitron Austria
GmbH, Hetronic Germany GmbH, Hydronic-Steuersysteme GmbH, and
ABI Holding GmbH.
2 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
Abitron originally operated as a licensed distributor for
Hetronic, but it later concluded that it held the rights to
much of Hetronic’s intellectual property, including the
marks on the products at issue in this suit. After reverse
engineering Hetronic’s products, Abitron began to sell
Hetronic-branded products that incorporated parts sourced
from third parties. Abitron mostly sold its products in Eu-
rope, but it also made some direct sales into the United
States.
Hetronic sued Abitron in the Western District of Okla-
homa for, as relevant here, trademark violations under two
related provisions of the Lanham Act. First, it invoked
§1114(1)(a), which prohibits the unauthorized “use in com-
merce [of] any reproduction . . . of a registered mark in con-
nection with the sale, offering for sale, distribution, or ad-
vertising of any goods or services” when “such use is likely
to cause confusion.” Hetronic also invoked §1125(a)(1),
which prohibits the “us[e] in commerce” of a protected
mark, whether registered or not, that “is likely to cause con-
fusion.” Hetronic sought damages under these provisions
for Abitron’s infringing acts worldwide.
Throughout the proceedings below, Abitron argued that
Hetronic sought an impermissible extraterritorial applica-
tion of the Lanham Act. But the District Court rejected this
argument, and a jury later awarded Hetronic approxi-
mately $96 million in damages related to Abitron’s global
employment of Hetronic’s marks. This amount thus in-
cluded damages from Abitron’s direct sales to consumers in
the United States, its foreign sales of products for which the
foreign buyers designated the United States as the ultimate
destination, and its foreign sales of products that did not
end up in the United States. The District Court later en-
tered a permanent injunction preventing Abitron from us-
ing the marks anywhere in the world. On appeal, the Tenth
Circuit narrowed the injunction to cover only certain coun-
tries but otherwise affirmed the judgment. It concluded
Cite as: 600 U. S. ____ (2023) 3
Opinion of the Court
that the Lanham Act extended to “all of [Abitron’s] foreign
infringing conduct” because the “impacts within the United
States [were] of a sufficient character and magnitude as
would give the United States a reasonably strong interest
in the litigation.” 10 F. 4th, at 1046.
We granted certiorari to resolve a Circuit split over the
extraterritorial reach of the Lanham Act. 598 U. S. ___(2023).
II
A
“It is a ‘longstanding principle of American law “that leg-
islation of Congress, unless a contrary intent appears, is
meant to apply only within the territorial jurisdiction of the
United States.” ’ ” Morrison v. National Australia Bank
Ltd., 561 U. S. 247, 255 (2010). We have repeatedly ex-
plained that this principle, which we call the presumption
against extraterritoriality, refers to a “presumption against
application to conduct in the territory of another sovereign.”
Kiobel v. Royal Dutch Petroleum Co., 569 U. S. 108, 119
(2013) (citing Morrison, 561 U. S., at 265). In other words,
exclusively “ ‘[f]oreign conduct is generally the domain of
foreign law.’ ” Microsoft Corp. v. AT&T Corp., 550 U. S. 437,
455 (2007) (alteration omitted). The presumption “serves
to avoid the international discord that can result when
U. S. law is applied to conduct in foreign countries” and re-
flects the “ ‘commonsense notion that Congress generally
legislates with domestic concerns in mind.’ ” RJR Nabisco,
Inc. v. European Community, 579 U. S. 325, 335–336
(2016).
Applying the presumption against extraterritoriality in-
volves “a two-step framework.” Id., at 337. At step one, we
determine whether a provision is extraterritorial, and that
determination turns on whether “Congress has affirma-
tively and unmistakably instructed that” the provision at
issue should “apply to foreign conduct.” Id., at 335, 337;
4 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
accord, Kiobel, 569 U. S., at 117 (asking whether Congress
“intends federal law to apply to conduct occurring abroad”);
Nestlé USA, Inc. v. Doe, 593 U. S. ___, ___ (2021) (slip op.,
at 3). If Congress has provided an unmistakable instruc-
tion that the provision is extraterritorial, then claims alleg-
ing exclusively foreign conduct may proceed, subject to “the
limits Congress has (or has not) imposed on the statute’s
foreign application.” RJR Nabisco, 579 U. S., at 337–338.
If a provision is not extraterritorial, we move to step two,
which resolves whether the suit seeks a (permissible) do-
mestic or (impermissible) foreign application of the provi-
sion.2 To make that determination, courts must start by
identifying the “ ‘ “focus” of congressional concern’ ” underly-
ing the provision at issue. Id., at 336. “The focus of a stat-
ute is ‘the object of its solicitude,’ which can include the con-
duct it ‘seeks to “regulate,” ’ as well as the parties and
interests it ‘seeks to “protect” ’ or vindicate.” WesternGeco
LLC v. ION Geophysical Corp., 585 U. S. ___, ___ (2018)
(slip op., at 6) (alterations omitted).
Step two does not end with identifying statutory focus.
We have repeatedly and explicitly held that courts must
“identif[y] ‘the statute’s “focus” ’ and as[k] whether the con-
duct relevant to that focus occurred in United States terri-
tory.” Id., at ___ (slip op., at 5) (emphasis added); accord,
e.g., RJR Nabisco, 579 U. S., at 337. Thus, to prove that a
claim involves a domestic application of a statute, “plain-
tiffs must establish that ‘the conduct relevant to the statute’s
focus occurred in the United States.’ ” Nestlé, 593 U. S., at
___–___ (slip op., at 3–4) (emphasis added); see, e.g., West-
ernGeco, 585 U. S., at ___–___ (slip op., at 6–8) (holding that
a claim was a domestic application of the Patent Act be-
cause the infringing acts—the conduct relevant to the focus
——————
2 As we have noted, courts may take these steps in any order. See, e.g.,
Yegiazaryan v. Smagin, 599 U. S. ___, ___–___, n. 2 (2023) (slip op., at 6–
7, n. 2).
Cite as: 600 U. S. ____ (2023) 5
Opinion of the Court
of the provisions at issue—were committed in the United
States); Morrison, 561 U. S., at 266–267, 271–273 (conclud-
ing that a claim was a foreign application of the Securities
and Exchange Act because the “purchase-and-sale transac-
tions” at issue occurred outside of the United States).
Step two is designed to apply the presumption against ex-
traterritoriality to claims that involve both domestic and
foreign activity, separating the activity that matters from
the activity that does not. After all, we have long recog-
nized that the presumption would be meaningless if any do-
mestic conduct could defeat it. See Morrison, 561 U. S., at
266. Thus, “ ‘[i]f the conduct relevant to the statute’s focus
occurred in the United States, then the case involves a per-
missible domestic application’ of the statute, ‘even if other
conduct occurred abroad.’ ” WesternGeco, 585 U. S., at ___
(slip op., at 6) (quoting RJR Nabisco, 579 U. S., at 337). And
“if the relevant conduct occurred in another country, ‘then
the case involves an impermissible extraterritorial applica-
tion regardless of any other conduct that occurred in U. S.
territory.’ ” WesternGeco, 585 U. S., at ___ (slip op., at 6)
(quoting RJR Nabisco, 579 U. S., at 337). Of course, if all
the conduct “ ‘regarding [the] violations ‘took place outside
the United States,’ ” then courts do “not need to determine
. . . the statute’s ‘focus’ ” at all. RJR Nabisco, 579 U. S., at
337. In that circumstance, there would be no domestic con-
duct that could be relevant to any focus, so the focus test
has no filtering role to play. See, e.g., Nestlé, 593 U. S., at
___ (slip op., at 5); Kiobel, 569 U. S., at 124.
B
With this well-established framework in mind, the first
question is whether the relevant provisions of the Lanham
Act, see §§1114(1)(a), 1125(a)(1), provide “a clear, affirma-
tive indication” that they apply extraterritorially, RJR
6 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
Nabisco, 579 U. S., at 337.3 They do not.
It is a “rare statute that clearly evidences extraterritorial
effect despite lacking an express statement of extraterrito-
riality.” Id., at 340. Our decision in RJR Nabisco illus-
trates the clarity required at step one of our framework.
There, we held that the Racketeer Influenced and Corrupt
Organizations Act could have extraterritorial application in
some circumstances because many of its predicate offenses
“plainly apply to at least some foreign conduct” and “[a]t
least one predicate . . . applies only to conduct occurring
outside the United States.” Id., at 338.
Here, neither provision at issue provides an express
statement of extraterritorial application or any other clear
indication that it is one of the “rare” provisions that none-
theless applies abroad. Both simply prohibit the use “in
commerce,” under congressionally prescribed conditions, of
protected trademarks when that use “is likely to cause con-
fusion.” §§1114(1)(a), 1125(a)(1).
Hetronic acknowledges that neither provision on its own
signals extraterritorial application, but it argues that the
requisite indication can be found in the Lanham Act’s defi-
nition of “commerce,” which applies to both provisions. Un-
der that definition, “ ‘commerce’ means all commerce which
may lawfully be regulated by Congress.” §1127. Hetronic
offers two reasons why this definition is sufficient to rebut
the presumption against extraterritoriality. First, it argues
that the language naturally leads to this result because
Congress can lawfully regulate foreign conduct under the
Foreign Commerce Clause. Second, it contends that extra-
territoriality is confirmed by the fact that this definition is
unique in the U. S. Code and thus differs from what it de-
scribes as “boilerplate” definitions of “ ‘commerce’ ” in other
——————
3 Our cases sometimes refer to whether the “statute” applies extrater-
ritorially, but the two-step analysis applies at the level of the particular
provision implicated. See, e.g., RJR Nabisco, 579 U. S., at 346; Morrison
v. National Australia Bank Ltd., 561 U. S. 247, 264–265 (2010).
Cite as: 600 U. S. ____ (2023) 7
Opinion of the Court
statutes. Brief for Respondent 23.
Neither reason is sufficient. When applying the pre-
sumption, “ ‘we have repeatedly held that even statutes . . .
that expressly refer to “foreign commerce” ’ ” when defining
“commerce” are not extraterritorial. Morrison, 561 U. S., at262–263; see also RJR Nabisco, 579 U. S., at 344. This con-
clusion dooms Hetronic’s argument. If an express statutory
reference to “foreign commerce” is not enough to rebut the
presumption, the same must be true of a definition of “com-
merce” that refers to Congress’s authority to regulate for-
eign commerce. That result does not change simply because
the provision refers to “all” commerce Congress can regu-
late. See Kiobel, 569 U. S., at 118 (“[I]t is well established
that generic terms like ‘any’ or ‘every’ do not rebut the pre-
sumption against extraterritoriality”). And the mere fact
that the Lanham Act contains a substantively similar defi-
nition that departs from the so-called “boilerplate” defini-
tions used in other statutes cannot justify a different con-
clusion either.
C
Because §1114(1)(a) and §1125(a)(1) are not extraterrito-
rial, we must consider when claims involve “domestic” ap-
plications of these provisions. As discussed above, the
proper test requires determining the provision’s focus and
then ascertaining whether Hetronic can “establish that ‘the
conduct relevant to [that] focus occurred in the United
States.’ ” Nestlé, 593 U. S., at ___–___ (slip op., at 3–4).
Much of the parties’ dispute in this case misses this crit-
ical point and centers on the “focus” of the relevant provi-
sions without regard to the “conduct relevant to that focus.”
WesternGeco, 585 U. S., at ___ (slip op., at 5). Abitron con-
tends that §1114(1)(a) and §1125(a)(1) focus on preventing
infringing use of trademarks, while Hetronic argues that
they focus both on protecting the goodwill of mark owners
and on preventing consumer confusion. The United States
8 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
as amicus curiae argues that the provisions focus on only
likely consumer confusion.
The parties all seek support for their positions in Steele
v. Bulova Watch Co., 344 U. S. 280 (1952), but that decision
is of little assistance here. There, we considered a suit al-
leging that the defendant, through activity in both the
United States and Mexico, had violated the Lanham Act by
producing and selling watches stamped with a trademark
that was protected in the United States. Although we al-
lowed the claim to proceed, our analysis understandably did
not follow the two-step framework that we would develop
decades later. Our decision was instead narrow and fact-
bound. It rested on the judgment that “the facts in the rec-
ord . . . when viewed as a whole” were sufficient to rebut the
presumption against extraterritoriality. Id., at 285. In
reaching this conclusion, we repeatedly emphasized both
that the defendant committed “essential steps” in the
course of his infringing conduct in the United States and
that his conduct was likely to and did cause consumer con-
fusion in the United States.4 Id., at 286–287; accord, e.g.,
id., at 286 (“His operations and their effects were not con-
fined within the territorial limits of a foreign nation”); id.,
at 288 (“[P]etitioner by his ‘own deliberate acts, here and
elsewhere, brought about forbidden results within the
United States’ ” (alteration omitted)). Because Steele impli-
cated both domestic conduct and a likelihood of domestic
confusion, it does not tell us which one determines the do-
mestic applications of §1114(1)(a) and §1125(a)(1).
With Steele put aside, then, we think the parties’ partic-
ular debate over the “focus” of §1114(1)(a) and §1125(a)(1)
in the abstract does not exhaust the relevant inquiry. The
——————
4 For example, we noted that the trademark owner’s “Texas sales rep-
resentative received numerous complaints from [American] retail jewel-
ers . . . whose customers brought in for repair defective” branded
watches. Steele, 344 U. S., at 285; accord, Bulova Watch Co. v. Steele,
194 F. 2d 567, 571 (CA5 1952).
Cite as: 600 U. S. ____ (2023) 9
Opinion of the Court
ultimate question regarding permissible domestic applica-
tion turns on the location of the conduct relevant to the fo-
cus. See, e.g., RJR Nabisco, 579 U. S., at 337. And the con-
duct relevant to any focus the parties have proffered is
infringing use in commerce, as the Act defines it.
This conclusion follows from the text and context of
§1114(1)(a) and §1125(a)(1). Both provisions prohibit the
unauthorized use “in commerce” of a protected trademark
when, among other things, that use “is likely to cause con-
fusion.” §§1114(1)(a), 1125(a)(1). In other words, Congress
proscribed the use of a mark in commerce under certain
conditions. This conduct, to be sure, must create a suffi-
cient risk of confusion, but confusion is not a separate re-
quirement; rather, it is simply a necessary characteristic of
an offending use.5 Because Congress has premised liability
on a specific action (a particular sort of use in commerce),
that specific action would be the conduct relevant to any fo-
cus on offer today. See, e.g., WesternGeco, 585 U. S., at ___–
___ (slip op., at 6–8).
In sum, as this case comes to us, “use in commerce” is the
conduct relevant to any potential focus of §1114(1)(a) and
§1125(a)(1) because Congress deemed a violation of either
provision to occur each time a mark is used in commerce in
——————
5 Both provisions “refer to a ‘likelihood’ of harm, rather than a com-
pleted harm.” Moseley v. V Secret Catalogue, Inc., 537 U. S. 418, 432
(2003). In other words, “actual confusion is not necessary in order to
prove infringement.” Restatement (Third) of Unfair Competition §23, at
250, Comment b (1993); accord, id., §23, at 251, Comment d; 4 J. McCar-
thy, Trademarks and Unfair Competition §23:12, at 23–157 (5th ed.
2023) (McCarthy) (“ ‘[I]t is black letter law that actual confusion need not
be shown to prevail under the Lanham Act, since . . . the Act requires
only a likelihood of confusion’ ”). Instead, the provisions treat confusion
as a means to limit liability to only certain “bona fide use[s] of a mark in
the ordinary course of trade.” 15 U. S. C. §1127 (defining “use in com-
merce”); see Patent and Trademark Office v. Booking.com B. V., 591 U. S.
___, ___ (2020) (slip op., at 12) (“[A] competitor’s use does not infringe a
mark [under §1114(1)(a) and §1125(a)(1)] unless it is likely to confuse
consumers”).
10 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
the way Congress described, with no need for any actual
confusion. Under step two of our extraterritoriality stand-
ard, then, “use in commerce” provides the dividing line be-
tween foreign and domestic applications of these Lanham
Act provisions.
III
Resisting this straightforward application of our prece-
dent, JUSTICE SOTOMAYOR concludes that step two of our
extraterritoriality framework turns solely on whether “the
object of the statute’s focus is found in, or occurs in, the
United States.” Post, at 5 (opinion concurring in judgment).
Applied to the Lanham Act, the upshot of this focus-only
standard is that any claim involving a likelihood of con-
sumer confusion in the United States would be a “domestic”
application of the Act. This approach is wrong, and it would
give the Lanham Act an untenably broad reach that under-
mines our extraterritoriality framework.
A
To justify looking only to a provision’s “focus,” JUSTICE
SOTOMAYOR maintains that “an application of a statute”
can still be domestic “when foreign conduct is implicated.”
Post, at 7. If this assertion simply means that a permissible
domestic application can occur even when some foreign “ac-
tivity is involved in the case,” Morrison, 561 U. S., at 266,
then it is true but misses the point. When a claim involves
both domestic and foreign activity, the question is whether
“ ‘the conduct relevant to the statute’s focus occurred in the
United States.’ ” Nestlé, 593 U. S., at ___–___ (slip op., at 3–
4). If that “ ‘conduct . . . occurred in the United States, then
the case involves a permissible domestic application’ of the
statute ‘even if other conduct occurred abroad.’ ” Western-
Geco, 585 U. S., at ___ (slip op., at 6). But “if the conduct
relevant to the focus occurred in a foreign country, then the
case involves an impermissible extraterritorial application
Cite as: 600 U. S. ____ (2023) 11
Opinion of the Court
regardless of any other conduct that occurred in U. S. terri-
tory.” RJR Nabisco, 579 U. S., at 337; see, e.g., Western-
Geco, 585 U. S., at ___ (slip op., at 6–8); Nestlé, 593 U. S., at
___–___ (slip op., at 4–5); Morrison, 561 U. S., at 266–267,
271–273.
These holdings were not, as JUSTICE SOTOMAYOR sug-
gests, premised on this Court’s “first conclud[ing] (or as-
sum[ing] without deciding) that the focus of the provision
at issue was conduct.” Post, at 9. They were unambigu-
ously part of this Court’s articulation of the two-step frame-
work, and, in each case, these holdings came before we be-
gan analyzing the focus of the provisions at issue. For this
reason, none of our cases has ever held that statutory focus
was dispositive at step two of our framework. To the con-
trary, we have acknowledged that courts do “not need to de-
termine [a] statute’s ‘focus’ ” when all conduct regarding the
violations “ ‘took place outside the United States.’ ” RJR
Nabisco, 579 U. S., at 337 (quoting Kiobel, 569 U. S., at
124); see, e.g., Nestlé, 593 U. S., at ___ (slip op., at 5) (“To
plead facts sufficient to support a domestic application of
the [Alien Tort Statute], plaintiffs must allege more domes-
tic conduct than general corporate activity”). That conclu-
sion, as well as the decisions applying it, are inexplicable
under a focus-only standard. See supra, at 5.
Beyond straying from established precedent, a focus-only
approach would create headaches for lower courts required
to grapple with this new approach. For statutes (like this
one) regulating conduct, the location of the conduct relevant
to the focus provides a clear signal at both steps of our two-
step framework. See RJR Nabisco, 579 U. S., at 335, 337.
Under JUSTICE SOTOMAYOR’s standard, by contrast, liti-
gants and lower courts are told that the step-two inquiry
turns on the “ ‘focus’ ” alone, which (as we have said) “can be
‘conduct,’ ‘parties,’ or ‘interests’ that Congress sought to
protect or regulate.” Post, at 8; see WesternGeco, 585 U. S.,
12 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
at ___ (slip op., at 6). As a result, almost any claim involv-
ing exclusively foreign conduct could be repackaged as a
“domestic application.” And almost any claim under a non-
extraterritorial provision could be defeated by labeling it a
“foreign application,” even if the conduct at issue was exclu-
sively domestic. This is far from the measure of certainty
that the presumption against extraterritoriality is designed
to provide.
B
JUSTICE SOTOMAYOR’s expansive understanding of the
Lanham Act’s domestic applications threatens to negate the
presumption against extraterritoriality. In Morrison, we
warned that “the presumption against extraterritorial ap-
plication would be a craven watchdog indeed if it retreated
to its kennel whenever some domestic activity is involved in
the case.” 561 U. S., at 266. If a claim under the Act in-
volves a domestic application whenever particular “ ‘effects
are likely to occur in the United States,’ ” post, at 5–6, the
watchdog is nothing more than a muzzled Chihuahua. Un-
der such a test, it would not even be necessary that “some”
domestic activity be involved. It would be enough for there
to be merely a likelihood of an effect in this country. Apply-
ing that standard here would require even less connection
to the United States than some explicitly extraterritorial
statutes, which must have, at a minimum, actual domestic
effects to be invoked. See, e.g., Hartford Fire Ins. Co. v. Cal-
ifornia, 509 U. S. 764, 796 (1993) (holding that the extra-
territorial provision at issue “applies to foreign conduct that
was meant to produce and did in fact produce some substan-
tial effect in the United States”).
This approach threatens “ ‘international discord.’ ” Ki-
obel, 569 U. S., at 115. In nearly all countries, including the
United States, trademark law is territorial—i.e., “a trade-
mark is recognized as having a separate existence in each
Cite as: 600 U. S. ____ (2023) 13
Opinion of the Court
sovereign territory in which it is registered or legally recog-
nized as a mark.” 5 McCarthy §29:1, at 29–4 to 29–5. Thus,
each country is empowered to grant trademark rights and
police infringement within its borders. See, e.g., ibid.; In-
genohl v. Olsen & Co., 273 U. S. 541, 544 (1927); A. Bourjois
& Co. v. Katzel, 260 U. S. 689, 692 (1923).
This principle has long been enshrined in international
law. Under the Paris Convention for the Protection of In-
dustrial Property, July 14, 1967, 21 U. S. T. 1583, T. I. A. S.
No. 6923, a “mark duly registered in a country of the Union
shall be regarded as independent of marks registered in
other countries of the Union,” and the seizure of infringing
goods is authorized “on importation” to a country “where
such mark or trade name is entitled to legal protection.”
Arts. 6(3), 9(1), id., at 1639, 1647. The Convention likewise
provides mechanisms for trademark holders to secure
trademark protection in other countries under the domestic
law of those countries. Arts. 2(1), 4(1)–(2), id., at 1631–
1632; see also 5 McCarthy §29:1, at 29–6 to 29–7; Protocol
Relating to Madrid Agreement Concerning International
Registration of Marks, June 27, 1989, T. I. A. S. No. 03–
112, S. Treaty Doc. No. 106–41 (entered into force Dec. 1,
1995) (providing mechanisms for the extension of trade-
mark protection to multiple jurisdictions under domestic
law). The Lanham Act, which is designed to implement
“treaties and conventions respecting trademarks,” §1127,
incorporates this territorial premise, mandating that regis-
tration of a foreign trademark in the United States “shall
be independent of the registration in the country of origin”
and that the rights of that mark in the United States are
governed by domestic law, §1126(f ).
Because of the territorial nature of trademarks, the
“probability of incompatibility with the applicable laws of
other counties is so obvious that if Congress intended such
foreign application ‘it would have addressed the subject of
conflicts with foreign laws and procedures.’ ” Morrison, 561
14 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
Opinion of the Court
U. S., at 269. The use of a mark—even confined to one coun-
try—will often have effects that radiate to any number of
countries. And when determining exactly what form of ab-
stract consumer confusion is sufficient in a given case, the
Judiciary would be thrust into the unappetizing task of
“navigating foreign policy disputes belong[ing] to the polit-
ical branches.” Jesner v. Arab Bank, PLC, 584 U. S. ___,
___ (2018) (GORSUCH, J., concurring in part and concurring
in judgment) (slip op., at 1). If enough countries took this
approach, the trademark system would collapse.
This tension has not been lost on other sovereign nations.
The European Commission gravely warns this Court
against applying the Lanham Act “to acts of infringement
occurring . . . in the European Union” and outside of the
United States. Brief for European Commission on Behalf
of the European Union as Amicus Curiae 4 (emphasis
added). To “police allegations of infringement occurring in
Germany,” it continues, would be an “unseemly” act of
“meddling in extraterritorial affairs,” given “international
treaty obligations that equally bind the United States.” Id.,
at 28. As the Commission and other foreign amici recog-
nize, the “system only works if all participating states re-
spect their obligations, including the limits on their power.”
Id., at 29; see also, e.g., Brief for German Law Professors as
Amici Curiae 12; Brief for Guido Westkamp as Amicus Cu-
riae 2–3. It thus bears repeating our longstanding admon-
ition that “United States law governs domestically but does
not rule the world.” Microsoft Corp., 550 U. S., at 454.
IV
In sum, we hold that §1114(1)(a) and §1125(a)(1) are not
extraterritorial and that the infringing “use in commerce”
of a trademark provides the dividing line between foreign
and domestic applications of these provisions. Under the
Act, the “term ‘use in commerce’ means the bona fide use of
a mark in the ordinary course of trade,” where the mark
Cite as: 600 U. S. ____ (2023) 15
Opinion of the Court
serves to “identify and distinguish [the mark user’s] goods
. . . and to indicate the source of the goods.” §1127.6 Be-
cause the proceedings below were not in accord with this
understanding of extraterritoriality, we vacate the judg-
ment of the Court of Appeals and remand the case for fur-
ther proceedings consistent with this opinion.
It is so ordered.
——————
6 JUSTICE JACKSON has proposed a further elaboration of “use in com-
merce,” see post, at 1–4 (concurring opinion), but we have no occasion to
address the precise contours of that phrase here.
Cite as: 600 U. S. ____ (2023) 1
JACKSON, J., concurring
SUPREME COURT OF THE UNITED STATES
_________________
No. 21–1043
_________________
ABITRON AUSTRIA GMBH, ET AL., PETITIONERS v.
HETRONIC INTERNATIONAL, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE TENTH CIRCUIT
[June 29, 2023]
JUSTICE JACKSON, concurring.
I agree with the Court that 15 U. S. C. §1114(1)(a) and
§1125(a)(1) do not apply extraterritorially. Ante, at 7. I also
agree that the “ ‘use in commerce’ of a trademark” that both
statutory sections describe “provides the dividing line be-
tween foreign and domestic applications” of these provi-
sions. Ante, at 14. The Court has no need to elaborate today
upon what it means to “use [a trademark] in commerce,”
§1127, nor need it discuss how that meaning guides the per-
missible-domestic-application question in a particular case.
I write separately to address those points.
It is clear beyond cavil that what makes a trademark a
trademark under the Lanham Act is its source-identifying
function. See Jack Daniel’s Properties, Inc. v. VIP Products
LLC, 599 U. S. ___, ___ (2023) (slip op., at 3); Qualitex Co.
v. Jacobson Products Co., 514 U. S. 159, 162–163 (1995).
That is, under the Act, a trademark is “any word, name,
symbol, or device, or any combination thereof,” that “a per-
son” “use[s]” or “inten[ds] to use” “to identify and distin-
guish his or her goods . . . from those manufactured or sold
by others and to indicate the source of the goods.” §1127;
see also Qualitex Co., 514 U. S., at 162–163 (emphasizing
centrality of this source-identifying function). Sections
1114(1)(a) and 1125(a)(1) permit a mark owner to sue some-
one who is “us[ing that] mark in commerce” in a way “ ‘likely
2 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
JACKSON, J., concurring
to cause confusion, or to cause mistake, or to deceive.’ ”
B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U. S.
138, 144 (2015).
Critically, the Act defines “ ‘use in commerce’ ” as “the
bona fide use of a mark in the ordinary course of trade.”
§1127. And, in light of the core source-identifying function
of marks, Congress’s statutory scheme embodies a distinc-
tion between trademark uses (use of a symbol or equivalent
“ ‘to identify or brand [a defendant’s] goods or services’ ”)
and “ ‘non-trademark uses’ ” (use of a symbol—even the
same one—“ in a ‘non-source-identifying way’ ”). Jack Dan-
iel’s, 599 U. S., at ___ (slip op., at 13). This all points to
something key about what it means to use a trademark in
the sense Congress prohibited—i.e., in a way likely to com-
mit the “cardinal sin” of “confus[ing] consumers about
source.” Id., at ___ (slip op., at 14).
Simply put, a “use in commerce” does not cease at the
place the mark is first affixed, or where the item to which
it is affixed is first sold. Rather, it can occur wherever the
mark serves its source-identifying function. So, even after
a trademark begins to be “use[d] in commerce” (say, when
goods on which it is placed are sold), that trademark is also
“use[d] in commerce” wherever and whenever those goods
are in commerce, because as long as they are, the trade-
mark “identif[ies] and distinguish[es] . . . the source of the
goods.” §1127. Such a use is not free-floating; the trade-
mark is being used by the “person” who put that trademark
on the goods “to identify and distinguish” them in commerce
and “indicate the[ir] source.” Ibid. This is the “use in com-
merce” to which §1114(1)(a) and §1125(a)(1) refer.
Because it is “use in commerce”—as Congress has defined
it—that “provides the dividing line between foreign and do-
mestic applications of ” these provisions, ante, at 14, the
permissible-domestic-application inquiry ought to be
straightforward. If a marked good is in domestic commerce,
and the mark is serving a source-identifying function in the
Cite as: 600 U. S. ____ (2023) 3
JACKSON, J., concurring
way Congress described, §1114(1)(a) and §1125(a)(1) may
reach the “person,” §1127, who is “us[ing that m]ark as a
trademark,” Jack Daniel’s, 599 U. S., at ___ (slip op., at 14).
But if the mark is not serving that function in domestic com-
merce, then the conduct Congress cared about is not occur-
ring domestically, and these provisions’ purely domestic
sweep cannot touch that person.
Consider an example. Imagine that a German company
begins making and selling handbags in Germany marked
“Coache” (the owner’s family name). Next, imagine that
American students buy the bags while on spring break over-
seas, and upon their return home employ those bags to
carry personal items. Imagine finally that a representative
of Coach (the United States company) sees the students
with the bags and persuades Coach to sue the German com-
pany for Lanham Act infringement, fearing that the
“Coache” mark will cause consumer confusion. Absent ad-
ditional facts, such a claim seeks an impermissibly extra-
territorial application of the Act. The mark affixed to the
students’ bags is not being “use[d] in commerce” domesti-
cally as the Act understands that phrase: to serve a source-
identifying function “in the ordinary course of trade,”
§1127.
Now change the facts in just one respect: The American
students tire of the bags six weeks after returning home,
and resell them in this country, confusing consumers and
damaging Coach’s brand. Now, the marked bags are in do-
mestic commerce; the marks that the German company af-
fixed to them overseas continue “to identify and distin-
guish” the goods from others in the (now domestic)
marketplace and to “indicate the source of the goods.” Ibid.
So the German company continues to “use [the mark] in
commerce” within the meaning of the Act, thus triggering
potential liability under §1114(1)(a) and §1125(a)(1). This
result makes eminent sense given the source-identifying
4 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
JACKSON, J., concurring
function of a trademark.1
In brief, once the marks on its bags are serving their core
source-identifying function in commerce in the United
States, this German company is doing—domestically—ex-
actly what Congress sought to proscribe. Accordingly, the
German company may be subject to liability for this domes-
tic conduct—i.e., it cannot successfully obtain dismissal of
the lawsuit on extraterritoriality grounds—even though it
never sold the bags in, or directly into, the United States.2
Guided by this understanding of “use in commerce,” I join
the Court’s opinion in full.
——————
1 Trademarks facilitate the accumulation of business goodwill when-
ever and wherever marked goods are in commerce. The manufacturer of
source-marked goods reaps a goodwill benefit to the extent that consum-
ers like its product, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S.
763, 774 (1992), and that benefit runs to the manufacturer whenever a
trademark is serving a source-identifying function with respect to items
in commerce—however that commercial status came to be.
2 I will not attempt to discuss every way in which a marked item might
be “in commerce” such that the trademark is being used “in the ordinary
course of trade” domestically. §1127. But, in the internet age, one could
imagine a mark serving its critical source-identifying function in domes-
tic commerce even absent the domestic physical presence of the items
whose source it identifies. See, e.g., 5 J. McCarthy, Trademarks and Un-
fair Competition §29:56 (5th ed. Supp. 2023) (“The use of an infringing
mark as part of an Internet site available for use in the United States
may constitute an infringement of the mark in the United States”); 4 id.,
§25:54.50 (“When an alleged infringing mark is used on the internet, the
use is clearly a ‘use in commerce’ ”); 1 id., §3:7 (discussing “evidence of
use as a trademark” where “a designation is prominently displayed in a
way easily recognized by web users as an indicator of origin”; accord,
In re Sones, 590 F. 3d 1282, 1288 (CA Fed. 2009) (observing, with respect
to the use-in-commerce requirement, that a “ ‘website [can be] an elec-
tronic retail store, and the web page [can be] a shelf-talker or banner
which encourages the consumer to buy the product’ ”).
Cite as: 600 U. S. ____ (2023) 1
SOTOMAYOR, J., concurring in judgment
SUPREME COURT OF THE UNITED STATES
_________________
No. 21–1043
_________________
ABITRON AUSTRIA GMBH, ET AL., PETITIONERS v.
HETRONIC INTERNATIONAL, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE TENTH CIRCUIT
[June 29, 2023]
JUSTICE SOTOMAYOR, with whom THE CHIEF JUSTICE,
JUSTICE KAGAN, and JUSTICE BARRETT join, concurring in
the judgment.
Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act pro-
hibit trademark infringement and unfair competition activ-
ities that are “likely to cause confusion, or to cause mistake,
or to deceive.” 60 Stat. 437, 441, as amended, 15 U. S. C.
§§1114(1)(a), 1125(a)(1)(A).1 The issue in this case is
whether, and to what extent, these provisions apply to ac-
tivities that occur in a foreign country. I agree with the
majority’s conclusion that the decision below must be va-
cated. I disagree, however, with the extraterritoriality
framework that the Court adopts today. In my view,
§§32(1)(a) and 43(a)(1)(A) of the Lanham Act extends to ac-
tivities carried out abroad when there is a likelihood of con-
sumer confusion in the United States.
I
This Court previously considered the extraterritoriality
of the Lanham Act in Steele v. Bulova Watch Co., 344 U. S.
280 (1952). There, the Court applied the Lanham Act to
trademark infringement and unfair competition activities
that occurred abroad but confused consumers in the United
——————
1 For simplicity, this opinion refers to this likelihood of “confusion,”
“mistake,” or “decei[t]” as likelihood of consumer confusion.
2 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
States. See id., at 281, 286–287. Because the Court decided
Steele 70 years ago, it had no occasion to apply the two-step
framework that the Court has since developed for evaluat-
ing the extraterritorial reach of a statute. A proper appli-
cation of that framework, however, leads to a result con-
sistent with Steele: Although there is no clear indication
that the Lanham Act provisions at issue rebut the presump-
tion against extraterritoriality at step one, a domestic ap-
plication of the statute can implicate foreign conduct at step
two, so long as the plaintiff proves a likelihood of consumer
confusion domestically.
A
In Steele, the Bulova Watch Company, Inc., a New York
corporation that marketed watches under the registered
U. S. mark “Bulova,” sued Sidney Steele, a U. S. citizen and
resident of Texas with a watch business in Mexico City. Id.,
at 281, 284. Upon discovering that the mark “Bulova” was
not registered in Mexico, Steele obtained the Mexican reg-
istration of the mark, assembled watches in Mexico using
component parts he had procured from the United States
and Switzerland, and “stamped his watches with ‘Bulova’
and sold them as such.” Id., at 281, 284–285. As a result,
“spurious ‘Bulovas’ filtered through the Mexican border
into this country,” causing a Bulova Watch Company’s sales
representative in the United States to “receiv[e] numerous
complaints from retail jewelers in the Mexican border area
[of Texas] whose customers brought in for repair defective
‘Bulovas’ which upon inspection often turned out not to be
products of that company.” Id., at 285–286. Steele “com-
mitted no illegal acts within the United States.” Id., at 282.
The Court held that, because Steele’s “operations and
their effects were not confined within the territorial limits
of a foreign nation,” the Lanham Act applied to Steele’s ac-
tivities. Id., at 286. The Court emphasized that Steele’s
conduct had the potential to “reflect adversely on Bulova
Cite as: 600 U. S. ____ (2023) 3
SOTOMAYOR, J., concurring in judgment
Watch Company’s trade reputation” in the United States.
Ibid. By contrast, the fact that Steele “affixed the mark
‘Bulova’ in Mexico City rather than here” was not “mate-
rial.” Id., at 287.
B
Following Steele, the Courts of Appeals developed various
tests, modeled after Steele’s facts, to address the Lanham
Act’s extraterritorial reach.2 This Court also subsequently
adopted a two-step framework for determining when a stat-
ute can apply extraterritorially to foreign conduct. That
framework implements “a canon of statutory construction
known as the presumption against extraterritoriality.”
RJR Nabisco, Inc. v. European Community, 579 U. S. 325,
335 (2016). The presumption reflects the “longstanding
principle of American law that legislation of Congress, un-
less a contrary intent appears, is meant to apply only within
the territorial jurisdiction of the United States.” Morrison
v. National Australia Bank Ltd., 561 U. S. 247, 255 (2010)
(internal quotation marks omitted). That is, courts pre-
sume that, “in general, ‘United States law governs domes-
tically but does not rule the world.’ ” RJR Nabisco, 579
U. S., at 335 (quoting Microsoft Corp. v. AT&T Corp., 550
U. S. 437, 454 (2007)).
Under this framework, the Court first asks “whether the
presumption against extraterritoriality has been rebutted”
by “a clear, affirmative indication that [the statute] applies
extraterritorially.” RJR Nabisco, 579 U. S., at 337. If the
presumption is not rebutted at that first step, the Court
——————
2 See, e.g., Trader Joe’s Co. v. Hallatt, 835 F. 3d 960, 969 (CA9 2016);
McBee v. Delica Co., 417 F. 3d 107, 111 (CA1 2005); International Cafe,
S. A. L. v. Hard Rock Cafe Int’l (U. S. A.), Inc., 252 F. 3d 1274, 1278
(CA11 2001); Aerogroup Int’l, Inc. v. Marlboro Footworks, Ltd., 152 F. 3d
948 (CA Fed. 1998); Nintendo of Am., Inc. v. Aeropower Co., 34 F. 3d 246,
250 (CA4 1994); American Rice, Inc. v. Arkansas Rice Growers Coopera-
tive Assn., 701 F. 2d 408, 414, n. 8 (CA5 1983); Vanity Fair Mills, Inc. v.
T. Eaton Co., 234 F. 2d 633, 642–643 (CA2 1956).
4 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
then proceeds to determine at step two “whether the case
involves a domestic application of the statute.” Ibid. To
determine whether a domestic application exists, the Court
must ascertain the statute’s “focus,” i.e., “the objec[t] of the
statute’s solicitude.” Morrison, 561 U. S., at 266–267.
As I explain below, although I agree with the result the
Court reaches with respect to the first step, I disagree with
its analysis at step two.
1
Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act im-
pose civil liability on a defendant who “use[s] in commerce”
a trademark in a manner that is “likely to cause confusion,
or to cause mistake, or to deceive.” 15 U. S. C. §§1114(1)(a),
1125(a)(1)(A). The Act in turn defines “commerce” as “all
commerce which may lawfully be regulated by Congress.”
§1127.
Under this Court’s precedents, this language is insuffi-
cient to rebut the presumption against extraterritoriality at
step one. The Court has “repeatedly held that even statutes
that contain broad language in their definitions of ‘com-
merce’ that expressly refer to ‘foreign commerce’ do not ap-
ply abroad” to all foreign conduct. Morrison, 561 U. S., at262–263 (internal quotation marks omitted); see also RJR
Nabisco, 579 U. S., at 344 (a statute’s reference to “foreign
commerce” does not “mean literally all commerce occurring
abroad”). The Court has also explained “that generic terms
like ‘any’ or ‘every’ do not rebut the presumption.” Kiobel v.
Royal Dutch Petroleum Co., 569 U. S. 108, 118 (2013). The
term “all” is not meaningfully different. While “the word
conveys breadth,” Peter v. NantKwest, Inc., 589 U. S. ___,
___ (2019) (slip op., at 7), it does not rebut the presumption
either.
2
The Court’s inquiry at step two centers on the “focus” of
Cite as: 600 U. S. ____ (2023) 5
SOTOMAYOR, J., concurring in judgment
the statutory provisions. Like the Court’s analysis at step
one, this inquiry is contextual; the Court “do[es] not analyze
the provision at issue in a vacuum.” WesternGeco LLC v.
ION Geophysical Corp., 585 U. S. ___, ___ (2018) (slip op.,
at 6). Rather, the Court looks at the provision “in concert”
with other relevant provisions and considers “how the stat-
ute has actually been applied.” Ibid. The aim of determin-
ing the statutory focus is to assess what constitutes a do-
mestic application of the statute. An application is
domestic when the object of the statute’s focus is found in,
or occurs in, the United States. See, e.g., Morrison, 561
U. S., at 266–267, 273 (where the “focus of the Exchange
Act” is “purchases and sales of securities,” there is no do-
mestic application of the statute when those purchases and
securities “occurred outside the United States,” regardless
of “the place where the deception originated”).
The parties offer different interpretations of the focus of
§§32(1)(a) and 43(a)(1)(A). Petitioners argue that the focus
of the statute is the “use” of the mark “in commerce.” Brief
for Petitioners 39. Under petitioners’ theory, the Lanham
Act does not reach any infringing products sold abroad; in-
stead, the defendant must sell the products directly into the
United States. Id., at 44–45. Respondent, by contrast, ar-
gues that the Act has two distinct focuses: protecting mark
owners from reputational harm and protecting consumers
from confusion. Brief for Respondent 45–48. Under re-
spondent’s view, reputational harm to the mark owner “is
not necessarily tied to the locus of [consumer] confusion or
the locus of the [defendant’s] conduct.” Id., at 47. Instead,
respondent asserts, harm to a mark owner’s reputation “is
felt where [the mark owner] resides.” Ibid. The Govern-
ment, as amicus curiae supporting neither party, offers a
middle ground. In its view, the focus of the statute is con-
sumer confusion. See Brief for United States as Amicus Cu-
riae 14 (United States Brief ). Accordingly, “[w]here such
effects are likely to occur in the United States, application
6 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
of Sections 32(1)(a) and 43(a)(1)(A) is a permissible domes-
tic application of the Act, even if the defendant’s own con-
duct occurred elsewhere.” Ibid.
I agree with the Government’s position. Sections 32(1)(a)
and 43(a)(1)(A) of the Act prohibit specific types of “use[s]
in commerce”: uses that are “likely to cause confusion, or to
cause mistake, or to deceive.” 15 U. S. C. §§1114(1)(a),
1125(a)(1)(A). The statute thus makes clear that prohibit-
ing the use in commerce is “merely the means by which the
statute achieves its end” of protecting consumers from con-
fusion. WesternGeco LLC, 585 U. S., at ___ (slip op., at 8).
Stated differently, “a competitor’s use does not infringe a
mark unless it is likely to confuse consumers.” Patent and
Trademark Office v. Booking.com B.V., 591 U. S. ___, ___
(2020) (slip op., at 12); see 4 J. McCarthy, Trademarks and
Unfair Competition §23:1, p. 23–9 (5th ed. 2023) (McCar-
thy) (“[L]ikelihood of confusion is the keystone of trademark
infringement”). Because the statute’s focus is protection
against consumer confusion, the statute covers foreign in-
fringement activities if there is a likelihood of consumer
confusion in the United States and all other conditions for
liability are established. See infra, at 12.
Treating consumer confusion as the focus of the Act is
consistent with Steele, which focused on the domestic “ef-
fects” of the defendant’s foreign conduct. 344 U. S., at 286.
Steele emphasized that, although the defendant did not af-
fix the mark or sell the products in the United States, “spu-
rious ‘Bulovas’ filtered through the Mexican border into this
country,” causing consumer confusion here. Id., at 285–
287. These domestic effects, the Court reasoned, could “re-
flect adversely on Bulova Watch Company’s trade reputa-
tion” in the United States. Id., at 286. In other words, con-
sistent with the statutory text, Steele focused on the impact
of the defendant’s foreign conduct on the consumer market
in the United States (in accord with the Government’s view
here), not the location of the original sale of the infringing
Cite as: 600 U. S. ____ (2023) 7
SOTOMAYOR, J., concurring in judgment
product or the location of the trademark owner’s business
(contrary to petitioners’ and respondent’s views here).
The Court’s precedent also supports the view that an ap-
plication of a statute can be considered domestic even when
foreign conduct is implicated. In Morrison, for example, the
Court concluded that §10(b) of the Securities Exchange Act
of 1934, 48 Stat. 891, “does not punish deceptive conduct,
but only deceptive conduct ‘in connection with the purchase
or sale of ’ ” securities in the United States. 561 U. S., at
266 (quoting 15 U. S. C. §78j(b)). Thus, “the focus of the
Exchange Act is not upon the place where the deception
originated, but upon purchases and sales of securities in the
United States.” 561 U. S., at 266. “Those purchase-and-
sale transactions are the objects of the statute’s solicitude.”
Id., at 267. Under Morrison, a domestic application of
§10(b) covers misrepresentations made abroad, so long as
the deceptive conduct bears the requisite connection to the
statute’s focus: the domestic purchase or sale of a security.
Similarly, under §§32(1)(a) and 43(a)(1)(A) of the Lanham
Act, uses of a mark in commerce are actionable when they
cause a likelihood of consumer confusion in the United
States, even when the conduct originates abroad.
II
The Court agrees with petitioners’ bottom line that the
Lanham Act requires a domestic “use in commerce.” See
ante, at 7–10. According to the majority, the “ ‘use in com-
merce’ provides the dividing line between foreign and do-
mestic applications of these Lanham Act provisions.” Ante,
at 10. Yet the majority does not actually take a stance on
the focus of the Act or apply this Court’s settled law. In-
stead, to reach its conclusion, the majority transforms the
Court’s extraterritoriality framework into a myopic
conduct-only test.
Specifically, instead of discerning the statute’s focus and
assessing whether that focus is found domestically, as the
8 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
Court’s precedents command, the majority now requires a
third step: an assessment of whether the “conduct relevant
to the focus” occurred domestically, even when the focus of
the statute is not conduct. Ante, at 9. Making matters even
more confusing, the majority skips over the middle step of
this new framework, concluding that it is unnecessary to
discern the focus of the Lanham Act because “the conduct
relevant to any potential focus” that “the parties have prof-
fered” must be “use in commerce,” since that is conduct
mentioned in the statute. Ibid.3 In other words, under the
Court’s unprecedented three-step framework, no statute
can reach relevant conduct abroad, no matter the true ob-
ject of the statute’s solicitude.
The Court’s novel approach transforms the traditional in-
quiry at step two into a conduct-only test, in direct conflict
with this Court’s jurisprudence. The Court has expressly
recognized that a statute’s “focus” can be “conduct,” “par-
ties,” or “interests” that Congress sought to protect or regu-
late. WesternGeco LLC, 585 U. S., at ___ (slip op., at 8) (in-
ternal quotation marks omitted); see also Morrison, 561
U. S., at 266 (“the focus of the Exchange Act is not upon the
place where the deception originated”). After all, not every
federal statute subject to an extraterritoriality analysis “di-
rectly regulate[s] conduct.” Kiobel, 569 U. S., at 116.
Because precedent does not support the Court’s recitation
of the extraterritoriality framework, the majority retreats
to a distorted reading of the Court’s past decisions. The
majority relies on RJR Nabisco, see ante, at 9, but that case
does not support the majority’s course. The Court in RJR
Nabisco noted that the Racketeer Influenced and Corrupt
Organizations Act’s civil suit provision requires an “injury
——————
3 Even more confusing still, “use in commerce” is all that matters under
the majority’s conduct-only analysis even though other conduct is also
listed as actionable in at least one of the provisions at issue. 15 U. S. C.
§1114(1)(a) (“the sale, offering for sale, distribution, or advertising of any
goods or services”).
Cite as: 600 U. S. ____ (2023) 9
SOTOMAYOR, J., concurring in judgment
to business or property.” 579 U. S., at 354. The Court then
concluded that there is a domestic application of that provi-
sion so long as there is a “domestic injury.” Ibid. In other
words, the Court held that the focus of the statute had to
occur domestically. It did not require a third step.
The Court also repeatedly quotes from cases where the
Court has said that a domestic application requires that
“the conduct relevant to the statute’s focus occurred in the
United States.” Ante, 4–5, 10. In those cases, however, the
Court first concluded (or assumed without deciding) that
the focus of the provision at issue was conduct, and only
then proceeded to consider whether the relevant conduct oc-
curred domestically. In WesternGeco, for example, the
Court considered the extraterritorial application of
§271(f )(2) of the Patent Act, which formed “the basis for
[the plaintiff ’s] infringement claim.” 585 U. S., at ___ (slip
op., at 7). The “focus” of that provision, the Court con-
cluded, is the “act of ‘suppl[ying] in or from the United
States,’ ” so the conduct “relevant to that focus” was the de-
fendant’s “domestic act of supplying the components that
infringed [the plaintiff ’s] patents.” Id., at ___–___ (slip op.,
at 7–8); see also Nestlé USA, Inc. v. Doe, 593 U. S. ___, ___–
___ (2021) (slip op., at 4–5) (assuming without deciding that
“the ‘focus’ of the [statute] is conduct that violates interna-
tional law” and then concluding that conduct relevant to
that focus “occurred in Ivory Coast”). In other words, the
Court looked to whether the focus of the statute at issue
occurred domestically.
In sum, none of the cases upon which the majority relies
establish categorically that there must be domestic conduct
in order for there to be a domestic application of a statute.
Calling this requirement “straightforward,” “established
precedent” does not make it so. Ante, at 10–11.4
——————
4 Relying on RJR Nabisco, Inc. v. European Community, 579 U. S. 32510 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
The Court’s transformative approach thwarts Congress’
ability to regulate important “interests” or “parties” that
Congress has the power to regulate. WesternGeco LLC, 585
U. S., at ___ (slip op., at 6). Some statutes may have a stat-
utory focus that is not strictly conduct and that implicates
some conduct abroad. Cf., e.g., F. Hoffmann-La Roche Ltd
v. Empagran S. A., 542 U. S. 155, 165 (2004) (recognizing
the long-established view that U. S. antitrust laws “reflect
a legislative effort to redress domestic antitrust injury that
foreign anticompetitive conduct has caused” (emphasis de-
leted)). Under the Court’s new categorical rule, those stat-
utes may not cover relevant conduct occurring abroad, even
if that conduct impacts domestic interests that Congress
sought to protect. At bottom, by reframing the inquiry at
step two as a conduct-only test, the Court’s new rule frus-
trates a key function of the presumption against extraterri-
toriality: to discern congressional meaning and “preserv[e]
a stable background against which Congress can legislate
with predictable effects” to protect domestic interests, Mor-
rison, 561 U. S., at 261, including those of U. S. trademark
owners and consumers.
The Court’s analysis is also inconsistent with Steele. Ac-
——————
(2016), the majority argues that the Court has already “acknowledged
that courts do not need to determine [a] statute’s ‘focus’ when all conduct
regarding the violations took place outside the United States. ” Ante, at
11 (some internal quotation marks omitted). The portion of RJR Nabisco
that the majority relies upon merely described the Court’s holding in Ki-
obel v. Royal Dutch Petroleum Co., 569 U. S. 108 (2013), a case that did
not involve step two. In Kiobel, the Court held that the statute did not
rebut the presumption against extraterritoriality at step one and de-
clined to address step two of the analysis (including determining the stat-
ute’s focus) because the claims at issue did not “touch and concern the
territory of the United States” other than through “mere corporate pres-
ence.” Id., at 124–125. Kiobel does not offer any guidance on what con-
stitutes a domestic application of a statute at step two.
Cite as: 600 U. S. ____ (2023) 11
SOTOMAYOR, J., concurring in judgment
cording to the Court, “Steele implicated both domestic con-
duct and a likelihood of domestic confusion,” so it offers no
guidance in resolving this case. Ante, at 8. No court of ap-
peals has read Steele that way, and for good reason: Steele
clearly recognized that infringing acts consummated
abroad fall under the purview of the Lanham Act when they
generate consumer confusion in the United States. See su-
pra, at 2–3, 6–7.5 Finding Steele “of little assistance” to its
blinkered approach, the majority reduces Steele to a “nar-
row” case with no application beyond its facts. Ante, at 8.
Steele is no such thing. It addressed the weighty question
whether the Lanham Act “extend[s] beyond the boundaries
of the United States,” 344 U. S., at 285, and has guided the
lower courts’ extraterritoriality analysis for more than 70
years. The Court should not “put aside” the Court’s prece-
dent merely because it is convenient to do so. Ante, at 8.
Because the Court cannot ground its holding in prece-
dent, it turns to abstract policy considerations. According
to the majority, the focus of the Lanham Act cannot center
on consumer confusion, despite Steele and the statute’s
clear textual clues, because any focus other than conduct is
too uncertain and “would create headaches for lower
courts.” Ante, at 11. The Court’s conclusion, however, is
based on the incorrect assumption that “merely a likelihood
of an effect in this country” would be sufficient to hold a
defendant liable under the Act. Ante, at 12 (emphasis de-
——————
5 It is true that Steele involved domestic conduct insofar as the defend-
ant exported watch parts from the United States into Mexico in prepar-
ing to affix the infringing mark abroad. See 344 U. S., at 286. Yet the
act of exporting those watch parts with no affixed mark did not, without
more, constitute an “illegal ac[t] within the United States.” Id., at 282,
287. In contrast, the defendant committed infringing acts abroad: “[I]n
Mexico City [he] stamped his watches with ‘Bulova’ and sold them as
such.” Id., at 285. The Court also did not hold that domestic exportation
of unmarked product parts is necessary for the Lanham Act to cover for-
eign sales.
12 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
leted). What the Lanham Act requires is a likelihood of con-
fusion in the United States, not some abstract and unde-
fined “effect.” The likelihood-of-confusion test comes
straight from the statute’s text. As petitioners and the
Court acknowledge, it is at the very core of the inquiry un-
der §§32(1)(a) and 43(a)(1)(A). See Brief for Petitioners 47–
48; ante, at 9. Assessing likelihood of confusion may require
a nuanced test, but it is the test that Congress chose and
that courts already apply.
In addition, any plaintiff would need to do more than
point to mere likelihood of confusion; as with any cause of
action, the plaintiff must establish all necessary elements
for recovery. For example, although “use in commerce” is
not the statute’s focus, the statute still requires that the
plaintiff establish a “use in commerce.” §§1114(1)(a),
1125(a)(1)(A). As Steele shows, because “commerce” in-
cludes all commerce that Congress has the power to regu-
late, §1127, some foreign sales can fall under the statute’s
reach. See also RJR Nabisco, 579 U. S., at 344 (the term
“ ‘foreign commerce’ ” does not “mean literally all commerce
occurring abroad,” but it includes “commerce directly in-
volving the United States,” including “commerce between
the United States and a foreign country”).6 Plaintiffs must
also generally show, for example, that their “injuries are
proximately caused by violations of the statute.” Lexmark
Int’l, Inc. v. Static Control Components, Inc., 572 U. S. 118,
132 (2014). The Court is thus mistaken that “abstract con-
sumer confusion is sufficient” to recover under the Lanham
Act. Ante, at 14.
——————
6 Here, there is no dispute that the Lanham Act covers the products
that petitioners sold directly into the United States. See Brief for Peti-
tioners 11, 41, 44–45. The dispute centers on products that petitioners
sold abroad to foreign buyers. For a portion of those products, the foreign
buyer designated the United States as the location where the products
were intended to be used. Like the watches in Steele, those products thus
“ended up in the United States.” Pet. for Cert. 6.
Cite as: 600 U. S. ____ (2023) 13
SOTOMAYOR, J., concurring in judgment
The Court also incorrectly concludes that a test that fo-
cuses on domestic consumer confusion conflicts with the
territoriality principle of trademark law. See ante, at 12–
14. That principle recognizes that a trademark has sepa-
rate legal existence in each country where the mark “is reg-
istered or legally recognized.” 5 McCarthy §29:1, at 29–5;
see Ingenohl v. Olsen & Co., 273 U. S. 541, 544 (1927) (not-
ing that a trademark secured in one country “depend[s] for
its protection” there and “confer[s] no rights” elsewhere).
Thus, to obtain the benefits that flow from trademark
rights, such as the “right to a non-confused public,” the
plaintiff must secure those rights in the country where it
wants protection. 1 McCarthy §2:10, at 2–24.
A focus on consumer confusion in the United States is
consistent with that international system. That focus
properly cabins the Act’s reach to foreign conduct that re-
sults in infringing products causing consumer confusion do-
mestically while “leaving to foreign jurisdictions the au-
thority to remedy confusion within their territories.”
United States Brief 25–26; see Brief for European Commis-
sion on Behalf of the European Union as Amicus Curiae 6
(“The test for infringement in the European Union, includ-
ing in Germany, like the United States, assesses whether
there is a likelihood of consumer confusion”). In other
words, applying the Lanham Act to domestic consumer con-
fusion promotes the benefits of U. S. trademark rights in
the territory of the United States.
The Court’s approach, by contrast, would absolve from li-
ability those defendants who sell infringing products
abroad that reach the United States and confuse consumers
here. That resulting consumer confusion in the United
States, however, falls squarely within the scope of the in-
terests that the Lanham Act seeks to protect.7
——————
7 In today’s increasingly global marketplace, where goods travel
14 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
The Court’s arguments about the impending “ interna-
tional discord” that will result from the Government’s ap-
proach are simply overblown. Ante, at 12 (internal quota-
tion marks omitted). There is no evidence that Steele,
which is consistent with a focus on domestic consumer con-
fusion, has created any international tension since it was
decided more than 70 years ago. Moreover, as even peti-
tioners acknowledge, purely foreign sales with no connec-
tion to the United States are unlikely to confuse consumers
domestically. See Brief for Petitioners 44. Foreign compa-
nies with purely foreign operations also have at their dis-
posal important defenses grounded in due process and in-
ternational comity principles, including the ability to
dismiss a case in the United States for lack of personal ju-
risdiction or on the ground of forum non conveniens. See,
e.g., Piper Aircraft Co. v. Reyno, 454 U. S. 235, 257–261
(1981).8
——————
through different countries, multinational brands have an online pres-
ence, and trademarks are not protected uniformly around the world, lim-
iting the Lanham Act to purely domestic activities leaves U. S. trade-
mark owners without adequate protection. Cf. McBee, 417 F. 3d, at 119(noting that “global piracy of American goods is a major problem for
American companies,” and absent some enforcement over foreign activi-
ties, “there is a risk” that “violators will either take advantage of inter-
national coordination problems or hide in countries without efficacious
. . . trademark laws, thereby avoiding legal authority”). To be sure, the
Court today does not address whether a defendant operating abroad who
sells goods that reach the United States can be held liable under the Lan-
ham Act pursuant to contributory liability principles. See Tr. of Oral
Arg. 7–8, 20–21. Still, today’s decision significantly waters down protec-
tions for U. S. trademark owners. It is now up to Congress to correct the
Court’s limited reading of the Act.
8 The Court incorrectly suggests that the Government’s position will
sweep in foreign defendants with only a minimal connection to the
United States. Ante, at 12. In this case, for example, the District Court
concluded that personal jurisdiction was proper based on a forum selec-
tion clause in the parties’ distribution agreement, which named Okla-
Cite as: 600 U. S. ____ (2023) 15
SOTOMAYOR, J., concurring in judgment
Finally, the Court relies upon the amicus brief filed by
the European Commission in support of its concern about
the risk of international “tension” that the Government’s
position supposedly creates. Ante, at 14. The European
Commission filed its brief in support of neither party, how-
ever, in line with the Solicitor General’s view that a focus
on consumer confusion provides a more balanced approach
that respects international relations while protecting
against trademark infringement domestically. No “sover-
eign nation” filed its brief in support of petitioners’ (and the
Court’s) restricted view of step two of the extraterritoriality
analysis. Ibid. And there is no “tension” in any event.
What the European Commission “warns this Court
against,” ibid., is adopting respondent’s sweeping view that
all foreign uses that confuse consumers abroad fall under
the scope of the Act. See Brief for European Commission on
Behalf of the European Union as Amicus Curiae 6 (explain-
ing that “infringement” occurs in the European Union when
there is “a likelihood of consumer confusion” there).
* * *
The Lanham Act covers petitioners’ activities abroad so
long as respondent can show that those activities are “likely
to cause confusion, or to cause mistake, or to deceive” in the
United States and can prove all elements necessary to es-
tablish liability under the Act. 15 U. S. C. §§1114(1)(a),
1125(a)(1)(A). Because the courts below did not apply that
test, I agree vacatur and remand is required. The Court’s
opinion, however, instructs the Court on remand to apply a
test that is not supported by either the Lanham Act or this
——————
homa as the forum of choice, and because petitioners purposefully di-
rected their activities at the United States. Hetronic Int’l, Inc. v.
Hetronic Germany GmbH, 2015 WL 5569035, *1–*3 (WD Okla., Sept. 22,
2015); Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 2015 WL 6835428,
*2 (WD Okla., Nov. 6, 2015). The Tenth Circuit affirmed that determi-
nation, Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F. 4th 1016,
1027–1032 (2021), which petitioners do not challenge before this Court.
16 ABITRON AUSTRIA GMBH v. HETRONIC INT’L, INC.
SOTOMAYOR, J., concurring in judgment
Court’s traditional two-step extraterritoriality framework.
I therefore concur only in the judgment.9
——————
9 The jury returned a verdict for respondent on all counts in the com-
plaint, including the breach of contract and tort claims under state law,
and awarded respondent more than $115 million in damages. See App.
to Pet. for Cert. 8a, 134a–137a. The Court’s decision today on the claims
under the Lanham Act does not affect the relief granted on other claims,
which petitioners do not challenge before this Court.