The Principle of “Use in Commerce”: As per the Abitron Case


In the dynamic world of trademark law, the principle of “use in commerce” serves as a cornerstone for establishing and protecting trademark rights. The recent case of Abitron Austria GmbH v. Hetronic International Inc. has highlighted the pivotal role that this principle plays in U.S. trademark actions, shedding light on the inherent territorial nature of trademark rights and the requirements for asserting claims across borders.

The Principle of “Use in Commerce”

At the heart of this case lies the concept of “use in commerce,” which is a critical criterion for establishing and enforcing trademark rights in the United States. In order to maintain a valid trademark registration or to initiate a trademark action, a party must demonstrate a bona fide and continuous use of the mark in commerce that is regulated by Congress. This requirement serves a dual purpose. First, it prevents parties from hoarding or stockpiling trademarks without actively utilizing them in connection with the goods or services they represent. This safeguards against cluttering the marketplace with unused trademarks that could otherwise hinder fair competition and consumer clarity. Second, by demanding evidence of actual use in commerce, the law safeguards consumers from being misled by marks that are not genuinely associated with specific goods or services. This fosters transparency and maintains the integrity of the trademark system.

The Abitron case underscores the territorial nature of trademark rights. In this case, the American manufacturer Hetronic International, Inc., (“Hetronic”) produces radio remote controls for heavy-duty construction equipment. Abitron, a foreign corporation, had a distribution agreement with Hetronic, primarily in Europe. The dispute arose when Abitron claimed ownership of Hetronic’s trademarks. Abitron then began manufacturing and selling identical products under Hetronic’s brand in Europe. Hetronic filed a lawsuit against Abitron, resulting in a jury in the Western District of Oklahoma awarding Hetronic over $100 million in damages for trademark infringement. The district court issued a global injunction preventing Abitron from selling these infringing products. On appeal, the U.S. Court of Appeals for the Tenth Circuit upheld the court’s decision that the Lanham Act has extraterritorial application but adjusted the scope of the injunction. 

Trademarks are primarily granted within the jurisdiction of the country where they are registered. In a globalized marketplace, this has significant implications. The use of a trademark in one jurisdiction doesn’t automatically confer rights in another jurisdiction. The U.S. trademark law requires a showing of “use in commerce” within the United States to assert trademark rights in that jurisdiction. This principle reinforces the idea that trademark rights are limited to the geographical area where they are being actively used. The case gives us the following takeaways. First, businesses expanding globally should be strategic in their trademark registration efforts. Recognizing that trademark rights are not automatically universal, companies need to ensure “use in commerce” in each jurisdiction where they seek protection. Second, it prompts businesses to carefully consider the feasibility of enforcing trademark rights across borders. While trademark rights are territorially limited, collaborative solutions like licensing agreements can offer mutually beneficial resolutions. Lastly, the focus on “use in commerce” underscores the importance of consumer protection and clarity in the marketplace. Businesses must prioritize maintaining the integrity of their trademarks and avoiding any practices that could confuse or mislead consumers.


The Abitron case serves as a compelling reminder of the territorial nature of trademark rights and the essential role of “use in commerce” in U.S. trademark actions. As businesses navigate the complexities of a global economy, it’s imperative to align their trademark strategies with the legal requirements of each jurisdiction while fostering consumer trust and market integrity. Understanding the nuances of “use in commerce” empowers businesses to safeguard their trademarks effectively while respecting the boundaries of each jurisdiction’s legal framework.

About Shreya Kapoor 4 Articles
Shreya Kapoor is an Indian attorney and post-graduated from the University of California, Berkeley, and is specializing in Intellectual Property and Technology Law.

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