This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.

The U.S. Supreme Court is considering whether the federal Lanham Act should be interpreted so broadly that domestic companies can leverage it to bar trademark infringement by — and seek significant damage awards against — foreign entities operating almost entirely overseas.

The question has come to a head as companies seeking to protect their trademarks in an increasingly global economy confront an international patchwork of intellectual property laws that vary from country to country. Although it is well-established that the Lanham Act, 15 U.S.C. §§1051 et seq., has extraterritorial reach, the Court has never articulated a definitive test for its application abroad. Its decision in Hetronic Int'l, Inc. v. Hetronic Germany GmbH, 10 F.4th 1016 (10th Cir. 2021), cert. granted sub nom. Abitron Austria GmbH v. Hetronic Int'l, Inc., No. 21-1043 (U.S. Nov. 4, 2022), concerns a recent Tenth Circuit decision upholding a nearly $90 million damage award against a European entity and to settle the debate among various other circuits regarding the Act's scope. In Hetronic, nearly 97% of the sales found to be infringing occurred abroad, but the Tenth Circuit upheld the award on the basis that they had a "substantial effect" on U.S. commerce.