Extraterritorial Infringement

Applying Abitron's Domestic-Use Requirement to Cross-Border Online Sales

The Lanham Act's infringement provisions, Sections 1114(1)(a) and 1125(a)(1), are not extraterritorial: they "extend only to claims where the infringing use in commerce is domestic." Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023). "Use in commerce" supplies the dividing line between foreign and domestic applications, and confusion among U.S. consumers is not the test — plaintiffs must establish that the conduct relevant to the statute's focus, the infringing use in commerce, occurred in U.S. territory.

The operative framework for cross-border sales comes from the Tenth Circuit on remand. Domestic "use in commerce" reaches beyond direct sales to U.S. customers to domestic advertising, marketing, and distributing activities. Hetronic International v. Hetronic Germany GmbH, 99 F.4th 1150 (10th Cir. 2024). Yet "[p]roducts bound for the United States but sold abroad cannot premise a Lanham Act claim without some domestic conduct tying the sales to an infringing use of the mark in U.S. commerce." Incidental domestic steps that never themselves use the mark — obtaining FCC licenses, say, or hiring a U.S. distributor — do not count.

District courts have carried that line into foreign e-commerce operations shipping into the United States. Celine treats a Hong Kong purchasing platform's direct sales and offers to sell to U.S. customers as conduct that "blatantly use[]" the plaintiffs' trademarks in domestic commerce — the platform took title to the goods, held them in inventory, and packaged and delivered them in its own name — and enjoins exactly that domestic conduct. Celine S.A. v. HongKong CSSBuy E-Commerce Co., Limited, No. 1:24-cv-04627 (S.D.N.Y. Oct 30, 2024). The injunction stops at the border, though: foreign sales to foreign customers remained beyond reach because plaintiffs offered no evidence that goods sold abroad were later resold inside the United States.

No completed U.S. sale is required. Foreign sellers who "advertised, marketed, promoted, and offered counterfeit products to domestic consumers" on DHgate.com — listing products in U.S. dollars and offering shipping to the United States — engaged in domestic use in commerce even though no transaction was ever consummated in U.S. territory. Mattel, Inc. v. AnimeFun Store, No. 1:18-cv-08824 (S.D.N.Y. Oct 30, 2024). Moose Toys Ltd v. Baby&Mommy K-ingdom Toy Store, No. 1:21-cv-02370 (S.D.N.Y. Sep 19, 2025) follows the same rule, reading "use in commerce" to include "the mere offering for sale of counterfeit products to domestic consumers" — but treats personal jurisdiction as a separate inquiry, recommending vacatur of default judgments against 32 storefronts whose listings were merely accessible in New York without any completed transaction or other forum interaction.

Purely foreign conduct still carries evidentiary weight. Abitron does not bar a plaintiff from using a foreign reseller's overseas counterfeit sales as circumstantial evidence that the reseller also made counterfeit sales to U.S. customers, particularly where its foreign and domestic inventory pools were commingled. Rockwell Automation, Inc. v. Parcop S.R.L., No. 1:21-cv-01238 (D. Del. Jul 18, 2023).

The post-2023 pattern is consistent. A foreign seller's online storefront is actionable when its listings or fulfillment target U.S. consumers — U.S.-dollar pricing, offers to ship to the United States, or direct delivery to U.S. buyers — while purely foreign sales, even of goods that eventually arrive in the United States, require proof of some domestic infringing conduct by the defendant. Injunction scope and monetary remedies follow the same dividing line.