by Lyndsey Garbee*

 The presumption against extraterritoriality is a canon of construction meant to limit U.S. laws to matters of domestic concern. However, the Supreme Court has held that this presumption can be overcome when domestic conduct occurs that is relevant to the statute’s focus. In Abitron v. Hetronics, the Supreme Court found that the relevant conduct for purposes of the Lanham Act, which regulates trademark rights and liabilities, is domestic use of the infringing mark in commerce. However, the Lanham Act only prohibits uses in commerce that are likely to cause consumer confusion. Based on the text of the Lanham Act, the Court’s extraterritoriality precedent, and the purpose of the Lanham Act, this Contribution argues that the proper analysis of the extraterritorial application of the Lanham Act turns not on domestic use in commerce, but on whether such use is likely to cause domestic consumer confusion.

The Supreme Court has long recognized the common law principle that when Congress passes any law, “[it] is meant to apply only within the territorial jurisdiction of the United States.’”1 This principle came to be known as the presumption against extraterritoriality, and it is meant to serve as a bulwark against unfettered application of U.S. laws around the world.2 The Court has applied the presumption in a variety of statutory schemes, developing the canon along the way.3 Although the Court had addressed the extraterritoriality of the Lanham Act once before,4 it did not revisit the issue under its evolved case law until 2023. When called upon in Abitron v. Hetronics to apply its modern formulation of the presumption against extraterritoriality to the Lanham Act, the Court faltered.5 The Court erred in creating a new, smaller scope of liability that will leave trademark holders with limited remedies against extraterritorial infringement.

Abitron formalized the presumption against extraterritoriality by distilling it into a two-step test.6 The first step asks whether the statute “affirmatively and unmistakably” allows for regulation of foreign conduct.7 If a court finds such language, then the presumption against extraterritoriality is overcome, and a statute may apply beyond the borders of the United States.8 Where a statute fails to explicitly allow for extraterritorial application, courts proceed to the second step and evaluate whether “the conduct relevant to the statute’s focus occurred in the United States.”9 Although the court uses the language of a two-step test, it is better understood as two opportunities to overcome the presumption.

In Abitron, the Court determined that §1114(1)(a) and §1125(a)(1) of the Lanham Act do not contain the explicit language necessary to rebut the presumption against extraterritoriality at the first step.10 The Court went on to state that the second step turns on the location where the relevant conduct occurred. The Lanham Act prohibits the use in commerce of another’s trademark in a way that is likely to cause confusion.11 However, the Court found the relevant conduct to be an infringing use of someone else’s trademark in commerce.12 As a result of the Court’s finding, the location of an infringer’s use in commerce serves as the dividing line between a permissible domestic application of the Lanham Act and an impermissible extraterritorial application.13 However, this conclusion fundamentally misunderstands the Lanham Act, since there can only be an infringing use where there is a likelihood of consumer confusion.14 The Lanham Act’s focus is not mere use in commerce, but rather the likelihood of consumer confusion.15 In holding the opposite, the Court misinterpreted the focus of the Lanham Act and misapplied the presumption against extraterritoriality’s second step as to the Lanham Act.

In Abitron, the Court criticized the parties for centering their arguments on the “focus” of the Lanham Act as opposed to the “conduct relevant to that focus.”16 However, it was the Court itself that misunderstood the relationship of these two concepts under the text of the Lanham Act. Contrary to the Court’s finding, a use in commerce is a necessary but not sufficient condition of a Lanham Act violation; a use in commerce is only wrongful if it “is likely to cause confusion.”17 The statute’s stated intent emphasizes this point, seeking to regulate only such uses that are “deceptive and misleading.”18 As Justice Scalia aptly put it, “[i]dentifying the interests protected by the Lanham Act [] requires no guesswork.”19

Despite recognizing this critical language in the statute, the Court seemed to openly disregard it.20 The Court wrote off the likelihood of confusion component of the statute as a mere “necessary characteristic of an offending use” in finding that liability is premised only on the use in commerce.21 This is incorrect per a plain reading of the statute. A use in commerce of another’s trademark is not itself illegal. In fact, the market—and subsequently the Lanham Act—tolerates a certain amount of mimicry.22 This is most clear in the parody context, where there may be a use in commerce of another’s trademark yet no infringement because “consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.”23 Lanham Act liability only activates when that use in commerce passes a likelihood of confusion threshold.24 As a result, the statute’s focus is not the use of any trademark in commerce, but those which are “likely to cause confusion, or to cause mistake, or to deceive as to [] affiliation . . . .”25 In ignoring one part of the statute, the Court forces its way to a conclusion on the relevant conduct against a barrage of ordinary canons of construction in interpreting the statute’s focus.26 Use in commerce is ultimately insufficient in representing the statute’s focus, thereby unduly limiting the scope of protection demanded by the statute’s text and purpose.

Ignoring this text in the statute also undermines the Court’s own precedent. Prior to Abitron, the Court had applied the Lanham Act extraterritorially in Steele v. Bulova. 27 The Court did so based on risks to the trademark holder’s reputation in the United States for watches manufactured by an unaffiliated party with the trademark holder’s mark in a foreign country.28 The Abitron Court distinguished Steele by arguing that it was decided prior to the development of the modern two-step framework, such that its analysis no longer reflected current law.29 The Court further diminished the import of Steele by describing it as a “narrow and fact bound” decision.30 Even assuming that the Abitron Court was correct in holding that Steele does not control modern Lanham Act claims, the constellation of the Court’s other extraterritoriality cases still supports analyzing the likelihood of confusion, rather than the use in commerce, as the operative Lanham Act focus worth analyzing.

The Court’s emphasis on use in commerce is inconsistent with its interpretations of the extraterritorial reach of other statutes. When the focus of a statute’s provision is not conduct, such as with the Lanham Act, the Court has not required domestic conduct for extraterritorial application.31 Oftentimes, a statute’s focus is related to, but not defined by, the conduct described therein.32 In other words, extraterritoriality should not turn on just any conduct expressed in a statute; it should turn on whether the conduct expressed implicates the statute’s focus. For example, in analyzing the Racketeer Influenced and Corrupt Organizations Act (“RICO”), the Court found the statute’s focus demanded a “domestic injury to business or property” for extraterritorial application.33 The Court’s holding turned on that focus, despite language referencing conduct of an “‘enterprise’ . . . controlled, operated, or funded by a ‘pattern of racketeering activity.’”34 This is similar to the Lanham Act, where use in commerce is a form of conduct expressed in the statute, but the likelihood of confusion injury is the statute’s true focus.35 Due to the fact that not all conduct implicates a statute’s focus, the Court has previously explicitly rejected the notion that domestic conduct is a dispositive component of its two-step analysis for extraterritoriality questions.36 Conduct, when relevant, is the inevitable byproduct of a statute’s focus.37 By failing to consider consumer confusion in its analysis of the Lanham Act, the Court truncated a meaningful part of the statute itself. In the same move, the Court also distorted the statute’s focus.

Likelihood of confusion is not only more faithful to the statute’s text and the Court’s precedent, but also to the Lanham Act’s purpose. Trademark is a distinct fragment of the intellectual property law mosaic in that infringement is established not through an individual’s action, but through a consumer’s reaction.38 While the Abitron majority’s “use in commerce” conduct test aligns with certain areas of law determined by specific conduct—such as copyright—it does not comport with trademark, where the contours of liability are defined by the “harm.”39 This is why, prior to the Abitron decision, circuit courts either considered or centered their extraterritoriality analysis on the effects on commerce, not sheer conduct.40 As the Ninth Circuit previously held, “the extraterritorial coverage of the Lanham Act should be gauged not so much by the locus of the activity . . . as by the nature of its effect on that commerce . . . .”41 These courts understood the premise that trademark infringement cannot be understood solely in terms of conduct.

Beyond the text, precedent, and purpose, the Court’s “use in commerce” approach will also inevitably be under-inclusive of the harm suffered from a trademark infringement. The Court’s approach unmoors liability from harm by solely focusing on conduct. Under the use in commerce test, to use Justice Ketanji Brown Jackson’s analogy, a manufacturer would have license to manufacture millions of infringing “Coache” handbags in Europe without triggering the Lanham Act, even if those bags’ ultimate destination was the United States, or if only U.S. consumers bought them abroad.42 This leaves plaintiffs adrift when they experience the very type of infringement the Lanham Act is meant to protect against, simply because the infringement took place abroad. The Court’s use in commerce approach also encourages a form of liability engineering wherein an infringer can confuse consumers in U.S. markets with impunity so long as it keeps its sales offshore.43 In an increasingly globalized market, it is important for courts to preserve the tether between the domestic impact of trademark infringement and international actions. Justice Sonia Sotomayor pointedly addressed this potential for bad actors in her Abitron concurrence, although she then undermined her argument’s importance by trying to fit the reasoning into a neater, stare decisis-friendly box.44 Ultimately, the Court had more than enough justification from the text, history, and purpose of the Lanham Act to find that the crux of extraterritorial application should be likelihood of confusion, not domestic use.

A likelihood of confusion-based approach would not generate a deluge of ambiguity for the courts and a windfall for plaintiffs, as the Court seemed to worry in Abitron.45 Centering likelihood of confusion, as the statute itself does and courts have, is more consistent with Lanham Act claims generally and would produce a clearer, more understandable framework.46 International facts do not suddenly transmogrify a familiar test into an inconceivable stranger. The Court’s distress at the idea of basing a test on the “mere[] likelihood of an effect” can be properly characterized for what it is: not a legal argument as to the presumption against extraterritoriality, but disagreement with the text of the Lanham Act itself.47 Nor would a likelihood of confusion test, to the majority’s chagrin, “negate the presumption against extraterritoriality” entirely.48 It would maintain the clear line the majority seeks between impermissible extraterritorial conduct and permissible domestic liability. It simply does so on a different dividing line.

The Court attempted to bolster its reading of the Lanham Act by pointing to the international comity concerns that are inherent in any extraterritorial analysis.49 For example, the Court worried about the “unseemly” act of “meddling in extraterritorial affairs,” particularly given the international treaties governing trademarks.50 However, as Justice Sotomayor aptly pointed out, the past seventy years of cases analyzed under Steele show that an approach based on likelihood of consumer confusion does not threaten international discord.51 Furthermore, purely foreign sales that do not reach U.S. consumers would be unlikely to confuse those consumers, protecting such instances against extraterritorial application.52

The presumption against extraterritoriality is a valid and important canon of construction. The presumption should apply to the Lanham Act, and it should center on the likelihood of consumer confusion rather than mere domestic use of another’s mark. However, by applying the presumption’s test to the conduct of the Lanham Act untethered from the statute’s true focus, the Court has created a watered-down regime that will fail to live up to the protections of preventing deceptive trademark usage as promised by the statute.

* Lyndsey Garbee is a J.D. Candidate (2026) at New York University School of Law. This Contribution is a commentary on the problem at the 2025 Saul Lefkowitz Moot Court Competition hosted by the International Trademark Association. One of the questions presented was whether the Lanham Act may overcome the presumption of extraterritoriality to disgorge a trademark infringer’s foreign profits. This Contribution distills one side of the argument, and the views expressed herein do not necessarily represent the author’s views.

1. Morisson v. National Australia Bank Ltd., 561 U.S. 247, 255 (2010).

2. Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412, 417 (2023).

3. See Morrison, 561 U.S. at 250–51 (applying the presumption against extraterritoriality to the Securities Exchange Act); see also RJR Nabisco, Inc. v. European Cmty., 579 U.S. 325, 329 (2016) (Racketeer Influenced and Corrupt Organizations Act); WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407, 409 (2018) (Patent Act).

4. See Steele v. Bulova Watch Co., 344 U.S. 280 (1952) (holding that federal courts have jurisdiction over Lanham Act challenges by United States citizens in foreign jurisdictions).

5. See Abitron, 600 U.S. at 423.

6. Id. at 417–18.

7. Id.

8. Id.

9. Id. at 418 (quoting WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407, 413 (2018)).

10. Id. at 420–21 (finding that the Lanham Act would need to explicitly regulate “foreign commerce” to satisfy this prong).

11. 15 U.S.C. § 1114(1); 15 U.S.C. § 1125(a)(1).

12. Abitron, 600 U.S. at 420–21.

13. Id. at 423.

14. Id. at 437 (Sotomayor, J., concurring).

15. Id. at 433 (Sotomayor, J., concurring).

16. Abitron, 600 U.S. at 421.

17. 15 U.S.C. § 1125(a)(1); see also KP Permanent Make-Up, Inc. v. Lasting Impression I Inc., 543 U.S. 111, 117 (2004) (stating that a trademark civil action is predicated on the use being likely to confuse).

18. 15 U.S.C. § 1127.

19. Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 131 (emphasizing the clarity of the statute’s intent in 15 U.S.C. § 1127).

20. Abitron, 600 U.S. at 422–23.

21. Id.; c.f. Lexmark, 572 U.S. at 133 (holding that a Lanham Act plaintiff must show economic or reputational injury, an injury that only occurs with the “deception of consumers”).

22. See e.g., Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (finding that parodic “Chewy Vuiton” dog toys were not likely to cause confusion with luxury brand Louis Vuitton Malletier’s trademark).

23. Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 153 (2023).

24. See 15 U.S.C. § 1114(1) (establishing liability for uses in commerce only when “such use is likely to cause confusion”); 15 U.S.C. § 1125(a)(1)(A) (establishing liability for uses in commerce only when “is likely to cause confusion”).

25. 15 U.S.C. § 1125(a)(1)(A).

26. Antonin Scalia & Bryan A. Gamer, Reading Law: The Interpretation of Legal Texts 56, 167, 174 (2012) (the whole-text canon demands the text be read as a whole; surplusage canon gives meaning to every word throughout a text; the supremacy-of-text canon states that the words of the text are paramount).

27. See Steele, 344 U.S. at 286–87.

28. Id. at 281–82.

29. Abitron, 600 U.S. at 421–22.

30. Id.

31. Compare RJR Nabisco, Inc., 579 U.S. at 349–50 (finding RICO’s focus to be domestic conduct and declining to grant a private right of action for injuries suffered outside of the United States) with WesternGeco, 585 U.S. at 415 (permitting recovery of lost foreign profits under the Patent Act upon finding the statute’s focus to be injuries resulting from infringement).

32. See RJR Nabisco, Inc., 579 U.S. at 337 (“If the conduct relevant to the statute’s focus occurred in the United States, then the case involves a permissible domestic application . . . .” (emphasis added)).

33. Id. at 354 (emphasis added).

34. Id. at 355–56 (Ginsburg, J., concurring in part) (arguing that domestic racketeering activity should allow those with extraterritorial injury to file suit under RICO) (quoting 18 U.S.C. § 1961).

35. 15 U.S.C. §1127.

36. See Morrison, 561 U.S. at 270 (“If, moreover, one is to be attracted by the desirable consequences of the ‘significant and material conduct’ test, one should also be repulsed by its adverse consequences.”).

37. See Timothy R. Holbrook & Anshru Garg, Confusion Over Trademark Extraterritoriality … And Beyond, 73 Am. U.L. Rev. 989, 1054 (“[I]t is difficult to understand what conduct is regulated without understanding the focus of the statute.”).

38. See 15 U.S.C.§ 1114(1)(a) (defining trademark infringement as a mark usage “likely to cause consumer confusion”).

39. See Mattel, Inc. v. AnimeFun Store, 2024 U.S. Dist. LEXIS 197495 (S.D.N.Y. 2024) (understanding infringement as the harm of likely consumer confusion).

40. See Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 642 (2d Cir. 1956) (establishing a three-factor test with “effect on U.S. commerce” as one factor); see also McBee v. Delica Co., 417 F.3d 107, 119 (1st Cir. 2005) (holding that plaintiff did not have a right to Japanese sales without a substantial effect on United States consumer confusion).

41. Wells Fargo & Co. v. Wells Fargo Express Co., 556 F.2d 406, 428 (9th Cir. 1977).

42. See Abitron, 600 U.S. at 430 (Jackson, J., concurring); see also Celine S.A. v. Hongkong CSSBUY E-Commerce Co., 2024 U.S. Dist. LEXIS 197474, at *15 (S.D.N.Y. 2024) (failing to find an extraterritorial application of the Lanham Act without explicit U.S. sales despite potential U.S. consumer confusion).

43. See Brief for The United States as Amicus Curiae Supporting Neither Party, Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023) (No. 21-1043) 2022 U.S. S. CT. BRIEFS LEXIS 4206.

44. Abitron, 600 U.S. at 437–38 (Sotomayor, J., concurring) (reconciling the holding in Bulova, 344 U.S. 280).

45. Id. at 425.

46. See, e.g., Int’l Ass’n of Machinists & Aero. Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 203–06 (1st Cir. 1996) (analyzing likelihood of confusion factors); Fisons Horticulture, Inc. v. Vigoro Indus., 30 F.3d 466, 475–81 (3d Cir. 1994) (same); Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186–89 (6th Cir. 1988) (same).

47. Abitron, 600 U.S. at 425 (emphasis in original).

48. Id. at 426.

49. See id. at 427 (“Because of the territorial nature of trademarks, the probability of incompatibility with the applicable laws of other countries is so obvious that if Congress intended such foreign application it would have addressed the subject . . . .”) (quoting Morrison, 561 U.S. at 269).

50. Id. at 428 (quoting Brief for The European Commission on Behalf of the European Union Supporting Neither Party, Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023) (No. 21-1043) 2022 U.S. S. CT. BRIEFS LEXIS 4213).

51. Id. at 445 (Sotomayor, J., concurring).

52. Id.