Federal Jurisdiction Over Trademark Issues: Concurrent Jurisdiction, Lanham Act Standing, Extraterritorial Reach After Abitron, Remedies, and PTO Preclusion

Trademark is the one intellectual-property regime where a plaintiff has a genuine choice of court system, and that single structural fact drives more strategy than any doctrine in the field. Patent and copyright claims belong in federal court and nowhere else. Lanham Act claims may be filed in either system, which means a trademark defendant cannot count on removal, a trademark plaintiff cannot count on a federal forum, and the same dispute may be litigated under state unfair-competition law with a federal claim riding alongside it.

Everything else about federal trademark practice has been unsettled in the last decade. The Supreme Court has rewritten the standing inquiry, abolished the circuits' multifactor extraterritoriality tests, removed willfulness as a precondition to disgorgement, held that an adverse Trademark Trial and Appeal Board ruling can preclude a district court infringement case, struck two registration bars on First Amendment grounds and then upheld a third, and confined the Rogers threshold test that many circuits had used to dispose of expressive-use cases at the pleading stage. A brief written from a 2015 outline will be wrong on several of these points.

This guide covers the jurisdictional and venue grants, statutory standing, the post-Abitron geography of infringement, monetary remedies, preclusion across the PTO-court boundary, the registrability cases, the protectability doctrines that decide motions, and the personal-jurisdiction problems that dominate counterfeiting litigation against foreign sellers.

Contents

• The grants: § 1121, § 1338, and why trademark is different
• Supplemental jurisdiction over state unfair-competition claims
• Venue
• Statutory standing after Lexmark
• Regulatory displacement: POM Wonderful
• Extraterritorial reach: from Steele to Abitron
• Remedies under § 1117
• Preclusion across the PTO and the courts
• Registrability and the First Amendment
• Protectability doctrines with litigation consequences
• Personal jurisdiction and foreign defendants
• Practice checklist
• Frequently asked questions

The grants: § 1121, § 1338, and why trademark is different

Two statutes confer district court jurisdiction over trademark disputes, and they overlap.

The asymmetry inside § 1338(a) is the whole point. The statute's exclusivity clause — "no State court shall have jurisdiction" — is written to reach patent, plant variety protection, and copyright cases, and it deliberately omits trademark. Section 1121 grants federal jurisdiction over Lanham Act actions but says nothing about taking it away from anyone else. The result, uniformly accepted, is that state courts have concurrent jurisdiction over Lanham Act claims, including federal infringement claims under 15 U.S.C. § 1114 and false-designation and false-advertising claims under 15 U.S.C. § 1125(a).

That has four consequences a trademark litigator should have internalized.

Removal is not automatic in practice. A defendant sued on a Lanham Act claim in state court can remove under 28 U.S.C. § 1441, because the claim arises under federal law — but the clock in § 1446 is real, and a defendant who answers and litigates for two months has forfeited the federal forum on a claim that Congress never required to be heard federally. Removal is the defendant's tool, and the plaintiff who wants state court can often keep it simply by pleading only state-law unfair competition, dilution, and common-law trademark claims. The plaintiff is the master of the complaint, and a strong federal trademark defense — invalidity, fair use, functionality — creates no jurisdiction, under the ordinary rule of Louisville & Nashville Railroad Co. v. Mottley.

There is no Federal Circuit channel. Appeals in trademark infringement cases go to the regional circuit of the district court, which is why the substantive law of likelihood of confusion, functionality, and expressive use differs materially from circuit to circuit and why forum choice is more consequential in trademark than in patent. The Federal Circuit's trademark docket is the appeal from the PTO under 15 U.S.C. § 1071(a) — a different proceeding on a different record. A dissatisfied Board litigant may instead file a de novo civil action in district court under § 1071(b), which is often the better route when new evidence matters.

A trademark case can arise under federal law without any Lanham Act claim. Contract disputes over trademark licenses and settlement agreements, assignments, and coexistence agreements are ordinarily state-law matters, and the presence of a registered mark in the background does not federalize them. Conversely, a declaratory action seeking a declaration of non-infringement does arise under federal law, because the coercive suit it displaces — the trademark owner's infringement action — would. Run the 28 U.S.C. § 2201 analysis by recasting the declaratory posture, and check that the controversy is immediate and real rather than a response to vague license inquiries.

Cancellation is a remedy, not an independent claim. 15 U.S.C. § 1119 gives a district court power to order cancellation or rectification of a registration, but only "in any action involving a registered mark." A standalone federal complaint seeking cancellation, with no other claim, is routinely dismissed. Plead an infringement or declaratory claim and ask for cancellation as relief within it.

Supplemental jurisdiction over state unfair-competition claims

Trademark plaintiffs almost always plead federal and state claims together, and two statutes support the joinder.

28 U.S.C. § 1338(b) is the older and narrower grant: original jurisdiction over "any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws." It predates the codification of supplemental jurisdiction and remains available, though its independent work is now small.

28 U.S.C. § 1367 does most of the lifting. Section 1367(a) reaches every claim so related to the federal trademark claim as to form part of the same case or controversy under Article III, and expressly includes claims that join additional parties. In practice that means the state statutory unfair-competition claim, the common-law trademark claim, the state dilution claim, the deceptive-trade-practices claim, the tortious-interference claim, and the breach-of-license claim all travel with the § 1114 or § 1125(a) claim without independent jurisdictional support.

Two practical points. First, § 1367(b)'s carve-backs apply only where the sole anchor is diversity, so they are irrelevant in a federal-question trademark case — a frequent confusion in briefs. Second, § 1367(c) discretion cuts both ways at the end of the case. If the federal claims fail on summary judgment, dismissal of a state dilution or deceptive-practices claim is discretionary rather than automatic, and a court that has run two years of discovery may keep it. Because § 1367(d) suspends the state limitations clock for the duration of the federal action, a plaintiff whose state claims are dismissed late is usually not time-barred, but do not assume it — confirm the state's treatment of the tolling provision.

The parallel-litigation problem is worth flagging. Because jurisdiction is concurrent, the same trademark dispute can be pending in a state court and a federal court simultaneously. That is not a jurisdictional defect. It is a case for the first-to-file principle among federal courts, and for Colorado River abstention or a stay as between systems — a doctrine that, as the Supreme Court has repeatedly said, permits a stay only in exceptional circumstances against the federal courts' virtually unflagging obligation to exercise the jurisdiction given them.

Venue

Trademark has no special venue statute. 28 U.S.C. § 1391 governs, and its ordinary terms are unusually generous to trademark plaintiffs:

• § 1391(b)(1) — a district where any defendant resides, if all defendants reside in that State.
• § 1391(b)(2) — a district where a substantial part of the events giving rise to the claim occurred. In an infringement case this is typically read to include any district where the infringing goods were sold or advertised and confusion was likely, which for a national e-commerce defendant is most of the country.
• § 1391(b)(3) — the fallback where no district qualifies under (1) or (2).
• § 1391(c)(3) — a defendant not resident in the United States "may be sued in any judicial district," and its joinder is disregarded in determining venue as to other defendants. This is the provision that makes venue a non-issue in most suits against foreign counterfeiters.

Two points of contrast are worth keeping straight, because opposing counsel will conflate them. 28 U.S.C. § 1400 supplies the special venue rules for copyright and mask-work actions in subsection (a) and for patent actions in subsection (b), and the patent provision is the one the Supreme Court construed restrictively in TC Heartland LLC v. Kraft Foods Group Brands LLC, holding that a domestic corporation "resides" for patent-venue purposes only in its State of incorporation. Neither subsection applies to a trademark claim. A defendant who cites TC Heartland against a Lanham Act complaint has cited the wrong statute — although the argument gets complicated when trademark and patent claims are joined, since the patent claim must independently satisfy § 1400(b) and may have to be severed or dropped.

Transfer under 28 U.S.C. § 1404(a) is the realistic defense motion, and a valid forum-selection clause in a license or settlement agreement is enforced through § 1404(a) rather than dismissal. Where venue is genuinely improper, § 1406 permits dismissal or transfer, and transfer preserves the filing date — which matters where a priority dispute or a limitations problem is in play.

Statutory standing after Lexmark

Lexmark International, Inc. v. Static Control Components, Inc. is the most important methodological decision in modern Lanham Act practice, and its reasoning reaches far beyond trademark.

Before 2014 the circuits had built at least three competing tests for who may sue for false advertising under § 1125(a), all of them labeled "prudential standing": a categorical rule limiting suit to actual competitors; a multifactor antitrust-derived test borrowed from the antitrust standing cases; and a reasonable-interest test. The Court in Lexmark declined to choose among them and instead rejected the entire framing.

The holding has two parts, and both are now the operative test.

Zone of interests. The question is whether the plaintiff "falls within the class of plaintiffs whom Congress has authorized to sue" — a matter of statutory interpretation, resolved by reading the cause of action against the statute's stated purposes. For § 1125(a), the Court read 15 U.S.C. § 1127's statement of purposes and held the protected interests are commercial: "a plaintiff must allege an injury to a commercial interest in reputation or sales." A consumer who is deceived into buying an inferior product is therefore outside the zone, however real the deception, because the consumer's injury is not an injury to a commercial interest in reputation or sales.

Proximate cause. The plaintiff must also show "economic or reputational injury flowing directly from the deception wrought by the defendant's advertising," which occurs "when deception of consumers causes them to withhold trade from the plaintiff." Injuries that are merely derivative — the landlord who loses rent because a deceived business shrinks, the supplier one step removed — fail this requirement.

Applied to the facts, Static Control was not a direct competitor of Lexmark: it sold microchips to the remanufacturers who competed with Lexmark. It nonetheless had standing, because Lexmark's alleged misrepresentations disparaged Static Control's components directly and the lost sales were a direct consequence rather than a knock-on effect. Direct competition is neither necessary nor sufficient. That single sentence disposes of a large volume of pre-2014 circuit authority and of the motions still built on it.

The methodological move matters as much as the result. The Court described the "prudential standing" label as "misleading, since the question it asks is whether Congress has accorded this injured plaintiff the right to sue," and said that using it "is an odd label for the concept" because a court cannot limit a cause of action Congress has created "merely because 'prudence' dictates." The zone-of-interests inquiry is statutory interpretation, not judicial discretion; and because it is statutory rather than Article III, it is not jurisdictional — a Lexmark failure is a failure to state a claim under Rule 12(b)(6), not a defect in subject-matter jurisdiction under Rule 12(b)(1). Getting that right determines whether the objection can be forfeited, whether extrinsic evidence is admissible on the motion, and whether a dismissal is with prejudice.

Three practical follow-ons:

1. Plead the commercial injury with specificity. Identify lost sales, lost customers, or reputational harm tied to the challenged statements. A generic allegation that the defendant's advertising is false and that the plaintiff is in the same industry will not survive a careful motion.
2. The analysis differs for infringement claims. Lexmark construed § 1125(a). Section 1114 suits are limited by their own terms to registrants, and § 1125(a) false-association claims raise a somewhat different zone-of-interests question than false advertising — but courts routinely apply the Lexmark framework across § 1125(a).
3. Consumer plaintiffs are out. Consumer class actions repackaged as Lanham Act false-advertising claims fail at the zone-of-interests step. Those claims belong under state consumer-protection statutes.

Regulatory displacement: POM Wonderful

POM Wonderful LLC v. Coca-Cola Co. answers the next question a false-advertising defendant asks: if a federal agency already regulates this label, is the Lanham Act claim precluded?

Coca-Cola sold a juice blend labeled "Pomegranate Blueberry" that contained about 0.3% pomegranate juice and 0.2% blueberry juice. The label complied with FDA juice-naming regulations. The Ninth Circuit had held the Lanham Act claim barred on the theory that allowing it would permit a jury to second-guess the FDA. The Supreme Court reversed unanimously.

The analysis is worth understanding precisely, because it is a statutory-interpretation exercise rather than a preemption case. The Court emphasized that this was not preemption at all — both statutes are federal, so the question is how two federal statutes relate, and "the state-federal balance does not frame the inquiry." Neither the FDCA nor the Lanham Act contains a provision barring the other. The two statutes have coexisted for seventy years, and Congress's silence across repeated amendments to both is meaningful. Most importantly, the statutes are complementary rather than duplicative: the FDCA relies on government enforcement and protects public health and safety through uniform labeling rules; the Lanham Act relies on private suits by commercially injured competitors and targets unfair competition. Competitors, the Court observed, "have detailed knowledge regarding how consumers rely upon certain sales and marketing strategies" that the FDA lacks.

The limit on POM Wonderful is the case the Court distinguished: where the government itself is the plaintiff, or where a statute expressly forecloses private suits, or where compliance with an agency's specific requirement is precisely what the Lanham Act claim attacks in a way Congress cannot have intended, the outcome differs. The line courts draw after POM Wonderful is between a claim that the label is misleading — permitted — and a claim that the defendant violated the agency's own regulation — generally not a Lanham Act theory, because the Lanham Act is not a vehicle for private enforcement of another statute's rules. That distinction decides most post-POM motions in the food, beverage, supplement, and pharmaceutical space.

Extraterritorial reach: from Steele to Abitron

This is the area where a 2022 brief is simply wrong, and where the Supreme Court displaced sixty years of accumulated lower-court law in a single opinion.

The Steele era

Steele v. Bulova Watch Co. sustained Lanham Act liability in 1952 against a U.S. citizen who assembled watches in Mexico, stamped them "Bulova," and sold them there. Spurious watches crossed back into the United States, Bulova's Texas retailers received complaints, and the defendant had bought components in the United States. The Court held the Act reached that conduct, reasoning that Congress's Commerce Clause power extends to the activities of U.S. citizens abroad and that the defendant's operations had "a substantial effect" on U.S. commerce.

Steele was a narrow decision on unusual facts — a U.S. citizen, U.S.-sourced parts, and goods flowing back into the United States. The circuits read it as a license to build general balancing tests. The Second Circuit's Vanity Fair framework asked whether the defendant was a U.S. citizen, whether the conduct had a substantial effect on U.S. commerce, and whether there was a conflict with foreign trademark rights. The Ninth Circuit adapted the Timberlane antitrust comity factors into a multi-element inquiry. Other circuits produced their own variants, some weighing factors, some requiring all three, some treating the question as jurisdictional and others as merits. The practical consequence was that the geographic reach of the Lanham Act depended on which circuit the plaintiff sued in, and that the analysis was rarely resolvable before expensive discovery.

The Court had meanwhile built a general extraterritoriality framework that owed nothing to Vanity Fair. EEOC v. Arabian American Oil Co. restated the presumption against extraterritoriality and held Title VII did not reach a U.S. citizen's employment abroad by a U.S. employer, insisting on a "clear expression" of congressional intent. Morrison v. National Australia Bank Ltd. supplied the second step: when the presumption is not rebutted, the court identifies the statutory provision's focus and asks whether the conduct relevant to that focus occurred domestically — for § 10(b), the focus was the purchase or sale of a security, not the place of the fraud. RJR Nabisco, Inc. v. European Community formalized the two-step structure and applied it separately to RICO's substantive provisions and its private right of action, holding that § 1964(c) requires a domestic injury even where the predicate acts reach abroad. Kiobel v. Royal Dutch Petroleum Co. applied the presumption to the Alien Tort Statute, and Nestlé USA, Inc. v. Doe and Jesner v. Arab Bank, PLC continued to narrow it. On the patent side, WesternGeco LLC v. ION Geophysical Corp. shows the framework applied to a remedy: because 35 U.S.C. § 271(f)(2) regulates the domestic act of supplying components from the United States, lost foreign profits were a permissible measure of damages for a domestic violation. Microsoft Corp. v. AT&T Corp. is the counterpoint — copies of software made abroad from a master sent from the United States were not "components supplied from the United States."

Nothing in that line had been applied to the Lanham Act. In 2023 the Court did it.

Abitron

Abitron Austria GmbH v. Hetronic International, Inc. arose from a soured distribution relationship. Hetronic, a U.S. manufacturer of radio remote controls for construction equipment, terminated its European distributors, who then made and sold copies bearing Hetronic's marks — overwhelmingly in Europe, with roughly 3% of the accused sales made directly into the United States. A jury awarded about $96 million, and the Tenth Circuit largely affirmed on a "substantial effects" rationale, reasoning that the foreign sales diverted business that would otherwise have flowed to Hetronic in the United States.

The Court vacated. The holding is compact and should be quoted rather than paraphrased in briefing:

1. Neither provision is extraterritorial. Section 1114(1)(a) and § 1125(a)(1) contain no clear indication of extraterritorial application. The "use in commerce" hook and the Act's definition of "commerce" in § 1127 as commerce "lawfully regulated by Congress" are not the "clear, affirmative indication" RJR Nabisco demands. Boilerplate references to Congress's commerce power never rebut the presumption.
2. The focus is the infringing "use in commerce." At step two, the Court identified the conduct relevant to the statutory focus as the defendant's own infringing use of the mark in commerce — "the conduct relevant to any focus the parties have proffered is infringing use in commerce."
3. Therefore the statutes reach only claims where the infringing use occurred in the United States. Downstream domestic confusion, domestic effects, diverted domestic sales, and reputational harm felt in the United States do not make a foreign use actionable.

The demolition of the circuit tests is total. Vanity Fair, the Ninth Circuit's Timberlane-derived test, and every variant of "substantial effects" balancing are gone as the governing standard. So is the older habit of treating extraterritorial reach as a question of subject-matter jurisdiction: after Abitron, this is a merits question about the scope of the cause of action, which means it can be tested on a motion to dismiss on the pleadings and cannot be raised for the first time after judgment.

The concurrence matters and should be read before relying on the broadest possible reading of the majority. Justice Sotomayor, joined by three others, concurred in the judgment but would have located the focus in consumer confusion in the United States, so that a foreign use causing likely confusion domestically would be actionable. On that view, the foreign sale of goods that predictably enter the United States and confuse American consumers remains within the Act. Four Justices took the confusion view and five took the use-in-commerce view; the majority controls, but the reasoning gap is where the next round of litigation is happening, particularly over what counts as a domestic "use in commerce" when the seller is abroad and the buyer, the payment processor, the marketplace, and the delivery are in the United States.

What a plaintiff must now plead and prove

• Locate every accused use. Identify, for each accused product line and each accused mark, where the use in commerce occurred — where goods were sold or offered for sale, where advertising was directed and received, where the mark was applied to goods or packaging destined for the United States.
• Separate domestic from foreign sales in the damages model. Abitron makes the damages calculation a geography exercise. A verdict built on worldwide sales will not survive. Expect the defendant to demand a per-transaction allocation, and build the expert report to supply it.
• Use the import channel. Goods shipped to U.S. customers, listings displayed to U.S. consumers on U.S.-facing marketplaces, and offers for sale accepted in the United States are the strongest domestic-use theories. Section 1124 and Customs recordation, along with 19 U.S.C. § 1526, remain independent tools against gray-market and counterfeit imports.
• Plead in the alternative on focus. Allege both domestic use in commerce and domestic confusion. If a circuit later gravitates toward the concurrence's formulation, you have preserved it; if not, the confusion allegations are needed on the merits anyway.
• Consider the alternatives. Section 337 proceedings before the International Trade Commission, foreign trademark enforcement, and contract claims under a terminated distribution agreement now do work that the Lanham Act will not. In Abitron itself the plaintiff had European rights; the case is a lesson in why foreign registrations matter.

Defense counsel should note the mirror image: a motion to dismiss aimed at the geography of the accused conduct is now a first-line response in any case with a foreign defendant or foreign sales, and it is far cheaper than the discovery the old multifactor tests required.

Remedies under § 1117

15 U.S.C. § 1117 is short and carries enormous settlement leverage. Subsection (a) authorizes, subject to the principles of equity, recovery of (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action, with discretionary adjustment of profits and up to treble damages where the amount is inadequate or excessive — expressly as compensation and not a penalty. Subsection (a) also allows attorney's fees "in exceptional cases." Subsection (b) makes treble damages and fees mandatory for intentional use of a counterfeit mark, absent extenuating circumstances. Subsection (c) offers statutory damages per counterfeit mark as an election, and subsection (d) provides statutory damages in cybersquatting cases under § 1125(d).

Romag: willfulness is not a precondition to profits

Romag Fasteners, Inc. v. Fossil, Inc. resolved a long-standing and lopsided circuit split in 2020. A jury found that Fossil had infringed Romag's magnetic-snap mark and acted "in callous disregard" of Romag's rights but had not acted willfully; the district court struck the profits award because Second Circuit law made willfulness a precondition. A unanimous Court reversed.

The reasoning is textual and short. Section 1117(a) makes a profits award "subject to the principles of equity" but imposes no willfulness requirement, while the Lanham Act elsewhere conditions liability or remedy on mental state in express terms — § 1117(b) requires intentional conduct for mandatory trebling in counterfeiting cases, § 1117(c)(2) keys enhanced statutory damages to willfulness, § 1125(c)(5) expressly conditions certain dilution remedies on willful intent, and § 1114(2) limits remedies against innocent infringers. "The absence of any such standard in the provision before us, thus, seems all the more telling." The Court refused to read "principles of equity" as a smuggled scienter rule, noting that the phrase most naturally refers to a body of transsubstantive equitable doctrines rather than to a single mens rea element.

What Romag did not hold is equally important, and defense counsel should press it. The Court was explicit that "mens rea figured as an important consideration in awarding profits in pre-Lanham Act cases," and that a defendant's mental state remains "a highly important consideration in determining whether an award of profits is appropriate." Willfulness is a factor, not a gate. Justice Sotomayor's separate concurrence made the point sharply: awarding profits against a wholly innocent infringer would not accord with historical equitable principles.

The practical consequences:

• Damages exposure rises at the pleading stage. A plaintiff who cannot prove willfulness can still reach the defendant's profits, which in a high-volume consumer-goods case may dwarf the plaintiff's own lost profits. That shifts settlement value substantially, particularly in cases where the defendant's sales are large and the plaintiff's are small.
• The burden structure becomes the fight. Section 1117(a) puts the burden of proving deductible costs and elements of cost on the defendant once the plaintiff proves sales. Defendants who do not maintain product-line-level cost accounting lose that allocation battle.
• Apportionment and unjust enrichment do the limiting work that willfulness used to do. Expect argument over how much of the defendant's profit is attributable to the mark rather than to price, quality, distribution, or the defendant's own goodwill.
• Advice-of-counsel and clearance-search evidence still matters, now as an equitable factor on the propriety and size of the award rather than as a complete answer.

Fees and the Octane Fitness import

Section 1117(a) allows fees "in exceptional cases," language identical to the patent fee statute, 35 U.S.C. § 285. Before 2014 most circuits required bad faith or conduct approaching fraud for Lanham Act fees. The Supreme Court's patent decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. rejected that gloss for § 285, defining an exceptional case as "simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated," to be determined case-by-case by the totality of the circumstances and proved by a preponderance rather than clear and convincing evidence.

Every circuit to consider the question has since imported Octane Fitness into § 1117(a), reasoning from the identical statutory language and the two statutes' shared history. The result is a materially lower threshold for fees than the old bad-faith standard, available to prevailing defendants as well as plaintiffs. Two consequences follow. First, a weak trademark claim now carries real fee exposure — which is the most effective deterrent against overreaching cease-and-desist practice. Second, litigation conduct is independently sanctionable through the fee provision, so discovery misconduct and shifting infringement theories feed the fee analysis even where the underlying claim was colorable.

Note also that for the mandatory trebling and fees in counterfeiting cases under § 1117(b), the predicate is intentional use of a mark the defendant knew was counterfeit. That is the provision that makes counterfeiting cases so dangerous for defendants, and the reason plaintiffs plead counterfeiting wherever the facts support it.

Preclusion across the PTO and the courts

Trademark is the only IP regime in which a party routinely litigates the central merits question — likelihood of confusion — twice, once before an administrative board and once in court. That structure generates a preclusion trap that a great deal of otherwise sophisticated practice ignores.

B&B Hardware: a TTAB ruling can foreclose the court case

B&B Hardware, Inc. v. Hargis Industries, Inc. held in 2015 that a TTAB decision on likelihood of confusion can have issue-preclusive effect in a later district court infringement action. The parties had fought for two decades over SEALTIGHT and SEALTITE. The Board sustained B&B's opposition, finding the marks confusingly similar. In the parallel infringement case the district court refused to give the Board's finding preclusive effect, and a jury found no likelihood of confusion.

The Court reversed, and the holding has three moving parts.

Agency decisions can preclude. There is no categorical bar on giving an administrative adjudication issue-preclusive effect, and nothing in the Lanham Act forbids it. The Court applied the ordinary presumption that "when an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate, the courts have not hesitated to apply res judicata."

The legal standard is the same. The Board and the district court both decide whether the marks are likely to cause confusion, under the same statutory language. The Court rejected the argument that the Board's DuPont factors and the courts' circuit-specific factor tests are different legal standards: "the factors are not fundamentally different," and minor variations in factor lists do not defeat preclusion.

But the usages must match. This is the operative limitation and the place to litigate. Preclusion applies only if "the usages adjudicated by the TTAB are materially the same as those before the district court." The Board typically compares the mark as it appears in the application or registration against the opposer's mark, on the goods as identified in the filings. A district court compares marks as actually used in the marketplace, with actual trade dress, channels, pricing, and consumer sophistication. Where the Board never considered the defendant's real-world usage, its finding does not preclude. The Court also noted that the ordinary elements of issue preclusion must be satisfied, including that the issue was actually litigated and necessary to the Board's judgment, and that the stakes must have been sufficient to have given the party a full and fair opportunity.

The practical significance is hard to overstate:

• An opposition or cancellation proceeding is not a low-stakes skirmish. A client who lets a TTAB opposition go by default, or litigates it on a thin record to save money, may have decided the infringement case. Advise accordingly before the answer is filed.
• Plead the usage mismatch early. A defendant facing an adverse Board ruling should develop the record on how its actual marketplace usage differs from the usage the Board adjudicated — different packaging, different goods, different channels, different customers — and should do it before the district court rules on preclusion.
• Consider § 1071(b) instead of a Federal Circuit appeal. A de novo district court action under § 1071(b) permits new evidence and can displace the Board's findings, whereas a Federal Circuit appeal is confined to the Board's record.
• Preclusion runs both ways. A Board finding of no likelihood of confusion can help a defendant, subject to the same usage-identity requirement.

Lucky Brand: no freestanding defense preclusion

Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc. addressed the opposite side of preclusion in 2020, unanimously.

Lucky Brand and Marcel had litigated three times over twenty years. In the second suit Lucky Brand had raised, but never pressed to judgment, a defense that a 2003 settlement agreement released Marcel's claims. In the third suit — brought over different conduct and a different set of marks — Lucky Brand raised the release defense again. The Second Circuit held it barred by "defense preclusion," reasoning that a defense that could have been litigated earlier is forfeited.

The Court rejected that as a freestanding doctrine. A defense may be precluded only where ordinary claim preclusion or issue preclusion applies on its own terms. Issue preclusion did not apply because the release defense was never actually decided. Claim preclusion did not apply because the two suits did not share a common nucleus of operative facts: the third suit challenged different conduct occurring after the earlier judgment, and involved different marks. The Court observed that this is "particularly true in trademark cases, where liability is based on 'use' of the mark," so that later use is a distinct wrong giving rise to a distinct claim.

Two takeaways. First, in trademark the passage of time and continued use generate new claims, so a settlement or judgment rarely resolves future conduct unless the agreement says so expressly. Second, a defense not raised in an earlier suit is generally still available in a later one — but do not rely on that, because issue preclusion attaches the moment the defense is actually litigated and decided.

Registrability and the First Amendment

The registration bars in 15 U.S.C. § 1052 have produced the most active constitutional docket in trademark law, and the trajectory is not a straight line.

Tam and Brunetti: two bars struck

Matal v. Tam invalidated the disparagement clause of § 1052(a) in 2017. The applicant was the Asian-American rock band The Slants, whose name the PTO refused as disparaging to persons of Asian ancestry. Eight Justices agreed the clause was unconstitutional, and the parts of Justice Alito's opinion commanding a majority established three propositions that now govern:

1. Trademarks are private speech, not government speech. The government-speech doctrine, the Court warned, is "susceptible to dangerous misuse," and if federal registration converted a mark into government speech, "the Federal Government is babbling prodigiously and incoherently."
2. Registration is not a subsidy. The Court declined to treat § 1052(a) as a permissible condition on a government benefit, distinguishing the cash-subsidy cases.
3. The clause was viewpoint discriminatory. It permitted marks that spoke well of a group and forbade those that spoke ill: "Giving offense is a viewpoint." Viewpoint discrimination fails even the more permissive commercial-speech standard, so the Court did not have to settle whether registration bars are assessed under Central Hudson or strict scrutiny — a deliberate reservation.

Iancu v. Brunetti struck the immoral-or-scandalous clause two years later on the same rationale. The applicant sought to register FUCT for clothing. The Court held the clause facially viewpoint-based because it distinguished between marks according to the ideas they conveyed — approving marks aligned with conventional moral sensibilities and refusing those that offended them. Justice Sotomayor's partial dissent would have construed "scandalous" narrowly to reach only vulgar modes of expression, a viewpoint-neutral reading; the majority found the statutory text unsusceptible to that construction. Several Justices signaled that a narrowly drawn, viewpoint-neutral bar on obscenity, vulgarity, or profanity might survive — an invitation Congress has not taken up.

Elster: the retrenchment

Vidal v. Elster upheld the names clause of § 1052(c) in 2024, and it is the case that marks the limit of the Tam/Brunetti trajectory. The applicant sought to register TRUMP TOO SMALL for shirts. The clause bars registration of a mark identifying a particular living individual without written consent.

Everyone agreed the clause is content-based but viewpoint-neutral — it applies regardless of whether the mark flatters or criticizes the named person. That framing mattered, because Tam and Brunetti had each rested on viewpoint discrimination and had expressly reserved the standard for viewpoint-neutral bars.

The reasoning is fractured, and precision is required.

• The majority opinion (Justice Thomas) held that a content-based but viewpoint-neutral trademark registration restriction does not require heightened scrutiny when it is grounded in a long historical tradition. The opinion traced the common law of trademarks, showing that restrictions on using another person's name as a mark are coextensive with the trademark system's history, and concluded that the names clause "fits comfortably within" that tradition. On this view history alone resolves the case, without any need for tailoring analysis.
• Justice Kavanaugh, joined by the Chief Justice, concurred in part, agreeing the clause is constitutional but writing that a viewpoint-neutral, content-based registration condition "can be constitutional even absent such a historical pedigree." They declined to make history the sole test.
• Justice Barrett, joined in relevant part by Justices Kagan, Sotomayor, and Jackson, concurred in the judgment but rejected the historical methodology outright, calling the majority's approach "wrong twice over" as applied and arguing the Court should adopt a standard: whether the registration condition is reasonable in light of the trademark system's purpose of facilitating source identification. On that standard the names clause is reasonable, because allowing one party to appropriate a living person's name as a source identifier would create confusion and grant a monopoly over that name in commerce.
• Justice Sotomayor's separate concurrence in the judgment, joined by Justices Kagan and Jackson, likewise urged a reasonableness inquiry drawn from the limited-public-forum and government-program cases.

So there is no majority rationale beyond the narrow holding. A practitioner challenging another § 1052 bar has to argue in the alternative: no heightened scrutiny if there is a historical pedigree (majority), or reasonableness in light of source-identification purposes (five Justices across the concurrences). What is settled is that Tam and Brunetti do not generalize into a rule that all content-based registration bars fail. The descriptiveness bar, the deceptiveness bar, the geographic-indication bars, and the confusion bar of § 1052(d) are all safe.

For completeness, the commercial-speech framework in the background is Zauderer v. Office of Disciplinary Counsel of the Supreme Court of Ohio, which permits compelled disclosure of purely factual and uncontroversial information in commercial advertising where the requirement is reasonably related to preventing deception. It is the source of the lenient standard applied to disclosure requirements, as opposed to prohibitions, and it appears in Lanham Act practice when a court considers a corrective-advertising or disclaimer remedy rather than an injunction against use.

Jack Daniel's: the narrowing of Rogers

Jack Daniel's Properties, Inc. v. VIP Products LLC is the most consequential 2023 trademark decision after Abitron, and it is the one that most changes motion practice.

VIP sold a squeaky dog toy shaped like a Jack Daniel's bottle, labeled "Bad Spaniels," substituting "The Old No. 2 on your Tennessee Carpet" for the whiskey's text. The Ninth Circuit applied the Rogers v. Grimaldi threshold test — under which use of a mark in an expressive work is actionable only if it has no artistic relevance or explicitly misleads — and held that because the toy was an expressive work, Rogers applied and the infringement claim failed at the threshold.

The Court reversed unanimously, and the holding has two parts.

Rogers does not apply to source-identifying use. "When an alleged infringer uses a trademark as a designation of source for the infringer's own goods — that is, used a trademark as a trademark — the Rogers test does not apply." The Court declined to decide whether Rogers is ever valid, but confined it to cases where the mark is used only for expressive purposes and not as a source identifier. VIP had used the Jack Daniel's trade dress to brand its own product, and had even claimed trademark rights in the Bad Spaniels marks in its own pleadings — a fact the Court pointed to directly. Parody, humor, and commentary are not irrelevant; they enter the ordinary likelihood-of-confusion analysis, where a successfully communicated parody makes confusion less likely. They simply do not bypass it.

The noncommercial-use exclusion does not shelter parody used as a source identifier. The dilution statute, 15 U.S.C. § 1125(c), excludes "any noncommercial use of a mark" from dilution liability, and separately provides a fair-use exclusion for parody and criticism that does not apply to use "as a designation of source for the person's own goods or services." The Ninth Circuit had read the noncommercial-use exclusion to cover any parody, which the Court held would render the fair-use exclusion's source-designation proviso meaningless. A parody used as a source identifier is commercial use and remains subject to dilution liability.

Justice Sotomayor, joined by Justice Alito, concurred to caution against mechanical reliance on survey evidence in parody cases. Justice Gorsuch, joined by the Chief Justice and Justice Barrett, concurred to emphasize how little the Court had said about Rogers itself and that lower courts should handle it "with care."

The practical effect is a substantial narrowing. Many circuits — the Ninth in particular — had applied Rogers expansively to dispose of cases involving video games, films, songs, apparel with expressive content, and merchandise at the pleading or summary-judgment stage. That door is now closed whenever the defendant is using the mark to brand its own goods, which covers most merchandise cases. The consequence is that these disputes go to the full multifactor confusion analysis, with survey evidence and a jury — dramatically raising the cost and uncertainty of defending expressive-use cases.

Protectability doctrines with litigation consequences

The threshold merits questions — what is protectable, and how much proof does protection require — decide more trademark motions than jurisdiction does. The statutory spine is 15 U.S.C. § 1051 (application and use requirements), § 1125 (unregistered marks and trade dress), and § 1127 (definitions, including "trademark," "use in commerce," and the abandonment and genericness standards).

Color. Qualitex Co. v. Jacobson Products Co. held in 1995 that color alone can be a trademark, given secondary meaning and no functionality problem. The green-gold color of dry-cleaning press pads qualified because it served no function and had come to identify source. The Court rejected the shade-confusion and color-depletion objections as manageable through ordinary doctrine, and its discussion of functionality — a feature is functional if it is essential to the use or purpose of the article or affects its cost or quality — is the definition still quoted.

Trade dress and secondary meaning. Two Pesos, Inc. v. Taco Cabana, Inc. held in 1992 that inherently distinctive trade dress is protectable under § 1125(a) without proof of secondary meaning, reasoning that requiring secondary meaning for inherently distinctive dress would disadvantage new entrants and conflict with the treatment of word marks.

Then Wal-Mart Stores, Inc. v. Samara Brothers, Inc. qualified it significantly in 2000: product-design trade dress is never inherently distinctive and always requires secondary meaning. The Court reasoned that consumers do not ordinarily perceive product design as a source identifier — they perceive it as making the product more useful or appealing — and that the cost of erroneous protection is high because design monopolies chill competition. Where a design is ambiguously product design or packaging, courts should "err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning." Two Pesos survives, but confined: it involved restaurant décor, which the Court characterized as closer to packaging or as tertium quid. The practical upshot is that the packaging/design line is the first battleground in any trade dress case, and the defendant's brief should always argue design.

Functionality. TrafFix Devices, Inc. v. Marketing Displays, Inc. held in 2001 that an expired utility patent is "strong evidence that the features therein claimed are functional," and that a party seeking trade dress protection for a previously patented feature bears a heavy burden of showing the feature is merely ornamental, incidental, or arbitrary. The dual-spring design of a road sign stand was functional and unprotectable. The Court also held that where a design is functional under the traditional Inwood test — essential to the use or purpose, or affecting cost or quality — there is no need to inquire into competitive necessity or the availability of alternative designs. That second holding is the one most often misstated: alternative-design evidence is relevant to aesthetic functionality, not to utilitarian functionality once the Inwood test is met. A prior utility patent covering the claimed feature is therefore close to dispositive, which is why patent prosecution history is a standard early discovery target in trade dress cases.

Genericness and generic.com. United States Patent and Trademark Office v. Booking.com B.V. held in 2020 that a "generic.com" term is not automatically generic. The question, as always, is whether the term as a whole signifies to consumers a class of goods or services or a particular source; and because only one entity can occupy a given domain name, consumers may well understand BOOKING.COM to identify a specific provider. The Court rejected the PTO's proposed per se rule, and rejected the government's reliance on the 1888 Goodyear's Rubber decision as establishing that a generic term plus a corporate designation is always generic. Justice Breyer dissented, warning about the anticompetitive consequences of protecting generic-plus-TLD terms. The majority's answer to that concern was doctrinal rather than categorical: such marks are weak, the scope of protection is correspondingly narrow, and classic fair use remains available. Practitioners should read the case as an evidentiary directive — genericness now turns on consumer-perception evidence, which means survey work in the descriptive and near-generic zone.

Tacking. Hana Financial, Inc. v. Hana Bank held unanimously in 2015 that whether two marks are sufficiently similar to permit tacking — carrying forward priority from an earlier form of a mark to a modified form — is a question for the jury when a jury trial has been requested, because the test asks how an ordinary consumer perceives the marks and that is the kind of question juries routinely answer. The Court left room for judicial resolution on summary judgment or judgment as a matter of law where no reasonable jury could disagree. Practically, this makes priority disputes over evolving logos harder to win on the papers, and makes the rebranding history of both parties a discovery priority.

Dilution and a legislative override. Moseley v. V Secret Catalogue, Inc. held in 2003 that the Federal Trademark Dilution Act as then written required proof of actual dilution, not merely a likelihood of it. Victoria's Secret had sued a small store called "Victor's Little Secret"; the Court found the evidence — a single offended consumer, no survey, no showing of any change in the famous mark's capacity to identify source — insufficient. Justice Stevens's opinion acknowledged that direct evidence such as consumer surveys would not always be necessary but insisted on some proof of actual harm.

Congress overrode it. The Trademark Dilution Revision Act of 2006 rewrote § 1125(c) to provide a remedy where a mark "is likely to cause dilution by blurring or dilution by tarnishment," expressly "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." The Act also codified the fame requirement — widely recognized by the general consuming public of the United States — supplied statutory blurring and tarnishment factors, and enumerated the exclusions that Jack Daniel's later construed. Moseley is therefore no longer good law on the standard, but it remains the citation for the pre-2006 period, for the structure of the dilution inquiry, and as the textbook example of a legislative correction of a Supreme Court trademark holding. Its treatment of the fame requirement's stringency continues to inform how courts police dilution claims by regional or niche brands.

The boundary with copyright. Dastar Corp. v. Twentieth Century Fox Film Corp. held in 2003 that § 1125(a)'s prohibition on false designation of "origin" refers to the producer of the tangible goods offered for sale, not to the author of any idea, concept, or communication embodied in them. Dastar had copied a television series whose copyright had expired, repackaged it, and sold it as its own without crediting Fox. The Court rejected the reverse-passing-off claim, warning against creating "a species of mutant copyright law" that would give perpetual protection to works Congress placed in the public domain. Dastar is the standard answer to a Lanham Act claim that is really an attribution or copyright claim in disguise, and it should be the first case cited when a plaintiff pleads false designation of origin over authorship, ideas, or content rather than over the physical or digital good's source. The related structural point appears in Goldstein v. California, which addressed the limits of federal copyright preemption of state protection, and in Allen v. Cooper, which held Congress lacked power to abrogate state sovereign immunity for copyright infringement — a constraint that applies with equal force to Lanham Act damages claims against state entities.

Personal jurisdiction and foreign defendants

Subject-matter jurisdiction over a Lanham Act claim is easy. Reaching the defendant is the hard part, and in the modern counterfeiting docket it is the whole case.

General jurisdiction is rarely available

Goodyear Dunlop Tires Operations, S.A. v. Brown and Daimler AG v. Bauman confined general jurisdiction over a corporation to the forums where it is "essentially at home" — paradigmatically the place of incorporation and the principal place of business. Daimler rejected the theory that substantial, continuous in-state sales suffice, and rejected an agency theory that would have attributed a U.S. subsidiary's contacts to a foreign parent. BNSF Railway Co. v. Tyrrell confirmed that the rule holds even for a defendant with 2,000 miles of track and 2,000 employees in the forum State, because those contacts were a small fraction of its nationwide operations. For a foreign manufacturer or a foreign online seller, general jurisdiction is off the table.

The one live exception is consent by registration. Mallory v. Norfolk Southern Railway Co. upheld a Pennsylvania statute conditioning registration to do business on consent to suit on any claim, reviving Pennsylvania Fire Insurance Co. v. Gold Issue Mining & Milling Co.. Whether a given State's registration statute carries that consequence is a question of that State's law, and most do not. Check it anyway — it is free.

Specific jurisdiction in trademark cases

Trademark infringement is an intentional tort, so the effects cases govern.

Calder v. Jones sustained California jurisdiction over Florida-based writers and editors of a defamatory article about a California entertainer, where the story was drawn from California sources, concerned California activities, and circulated most heavily in California. Keeton v. Hustler Magazine, Inc. upheld New Hampshire jurisdiction based on regular monthly circulation of 10,000 to 15,000 copies there, even though the plaintiff had almost no connection to the State — the defendant's own continuous forum activity was enough.

Walden v. Fiore is the limiting case, and it is the one that defeats lazy trademark complaints. A Georgia DEA agent seized cash from Nevada residents and drafted an allegedly false affidavit in Georgia. The Court held Nevada lacked jurisdiction: "the plaintiff cannot be the only link between the defendant and the forum," and the "minimum contacts analysis looks to the defendant's contacts with the forum State itself, not the defendant's contacts with persons who reside there." Knowledge that the plaintiff will feel harm in the forum is not express aiming at the forum. In trademark terms: the fact that the trademark owner is headquartered in the district, and will feel the injury there, does not establish jurisdiction over a seller who never directed anything at that district.

Ford Motor Co. v. Montana Eighth Judicial District Court supplies the relatedness rule that helps plaintiffs. The claim must "arise out of or relate to" the defendant's forum contacts, and the Court held the second clause "contemplates that some relationships will support jurisdiction without a causal showing." Ford's extensive advertising, dealership network, and parts and service business in the forum States related sufficiently to claims involving vehicles first sold elsewhere. Applied to trademark, a defendant that markets and sells the accused goods in the district is subject to suit there even where the particular transaction the plaintiff identifies happened elsewhere.

The remaining pieces are familiar: World-Wide Volkswagen Corp. v. Woodson on stream of commerce and the insufficiency of mere foreseeability of a product's arrival; Asahi Metal Industry Co. v. Superior Court and J. McIntyre Machinery, Ltd. v. Nicastro leaving the stream-of-commerce-plus question unresolved, which is why circuit law controls it; Burger King Corp. v. Rudzewicz for the purposeful-availment and reasonableness factors, and for the point that physical presence is unnecessary — directly relevant to license and franchise disputes, which Burger King itself was; and Bristol-Myers Squibb Co. v. Superior Court for the rule that each plaintiff's claim must independently satisfy specific jurisdiction, which matters when multiple brand owners join in one counterfeiting suit.

Rule 4(k)(2): the federal long-arm

Rule 4 is the service authority, and Rule 4(k)(1)(A) generally limits a district court to the reach of the forum State's long-arm. Rule 4(k)(2) is the provision that makes foreign counterfeiting suits possible. For a claim arising under federal law — a Lanham Act claim qualifies — service establishes personal jurisdiction if the defendant is not subject to jurisdiction in any state's courts of general jurisdiction and the exercise is consistent with the Constitution and laws of the United States.

The practical mechanics:

• The federal-claim requirement is real. State-law unfair-competition claims cannot ride on Rule 4(k)(2) jurisdiction unless they satisfy it independently; plead the § 1125(a) or § 1114 claim as the jurisdictional anchor.
• The negation element is handled by burden-shifting in most circuits: the plaintiff makes a prima facie showing that the defendant is not subject to jurisdiction in any single State, and the defendant can defeat Rule 4(k)(2) by naming a State where it is amenable — which subjects it to suit there instead. Defendants rarely take that trade.
• The due process analysis is against the United States as a whole, so nationwide contacts count. A foreign seller shipping to customers in thirty States may be reachable under Rule 4(k)(2) even though no single State's contacts would suffice.
• Omni Capital International, Ltd. v. Rudolf Wolff & Co. is why the rule exists: the Court held in 1987 that without a statute or rule authorizing service, a district court could not reach foreign defendants even on a federal claim. Rule 4(k)(2) was adopted in response.

The Schedule A docket

Online-marketplace counterfeiting litigation has developed its own procedural pattern, and it is worth describing plainly because it dominates the volume of trademark filings in some districts.

A brand owner files a single complaint against dozens or hundreds of anonymous marketplace sellers, identified only by storefront name in an exhibit captioned "Schedule A," and seeks ex parte relief before any defendant is served: a temporary restraining order, an asset freeze reaching the sellers' marketplace and payment-processor accounts, expedited discovery to identify the sellers, and an order authorizing alternative service. The relief is typically granted on a declaration describing test purchases and screenshots.

The pressure points:

• Joinder. Rule 20 requires that claims against multiple defendants arise out of the same transaction, occurrence, or series of occurrences. Unrelated sellers offering similar counterfeits are not obviously a "series," and a growing number of judges sever Schedule A cases and require separate filing fees. This is the most effective defense-side motion in the category.
• Personal jurisdiction per defendant. Under Bristol-Myers Squibb and Walden, jurisdiction must exist as to each defendant. A screenshot showing that a storefront ships to the forum State is the plaintiff's usual proof; whether an offer to ship, without a completed sale, constitutes purposeful direction is unsettled and circuit-dependent.
• Service by electronic means. Rule 4(f)(3) permits service on an individual in a foreign country "by other means not prohibited by international agreement, as the court orders." Courts routinely authorize email and marketplace-messaging service under it. Note the interaction with the Hague Service Convention: Volkswagenwerk Aktiengesellschaft v. Schlunk held the Convention applies only where the forum's internal law requires transmittal abroad, and Water Splash, Inc. v. Menon held the Convention does not prohibit service by mail. Where the destination country has objected to Article 10, argue the objection reaches postal channels rather than every electronic alternative — and expect resistance in districts that read the objection broadly. Rule 4(f)(3) requires a court order, so move for it; do not simply email the complaint.
• Asset freezes. The authority for a prejudgment freeze of a seller's payment accounts is contested. Section 1116(d) provides for ex parte seizure of counterfeit goods and records on a specific showing, and § 1117(a) supports an equitable accounting; but a general asset freeze securing a money judgment sits uneasily with the traditional rule against prejudgment attachment in aid of a legal damages claim. Defendants who appear should attack the freeze on that ground, and should also test whether the plaintiff met § 1116(d)'s requirements — the affidavit, the adequate-remedy showing, the bond, and the narrow scope — rather than relying on a generic injunction standard.
• Extraterritoriality after Abitron. A foreign seller's non-U.S. sales are no longer actionable, so a damages claim built on total storefront revenue is vulnerable. Demand a domestic-sales allocation.

Practice checklist

1. Choose the forum deliberately, knowing it is a choice. Lanham Act jurisdiction is concurrent, so state court is genuinely available. Weigh circuit law on likelihood of confusion, functionality, and expressive use — it differs materially — against the speed and discovery tools of the state forum, and remember there is no Federal Circuit uniformity to fall back on.
2. Plead § 1121 and § 1338(a) expressly, add § 1338(b) or § 1367 for the state unfair-competition claims, and plead venue under the specific subsection of § 1391 you are relying on. Do not cite § 1400 or TC Heartland — they do not apply to trademark.
3. *Run the Lexmark test before filing.* Allege injury to a commercial interest in reputation or sales, and allege proximate causation directly — customers withheld trade from you because of the defendant's conduct. Do not assume direct competition is required, and do not assume it is sufficient.
4. Map the geography of every accused use. After Abitron, identify where each infringing use in commerce occurred, and build the damages model on domestic sales only. Plead domestic confusion in the alternative to preserve the concurrence's theory.
5. Audit the PTO record before the answer. A pending or concluded TTAB proceeding between the same parties on the same marks may control under B&B Hardware. If the Board has ruled against you, develop the usage-mismatch record immediately; if a proceeding is pending, decide whether to litigate it seriously or to seek suspension in favor of the court case.
6. Classify the trade dress. Under Wal-Mart, product design always requires secondary meaning and ambiguous dress is treated as design. Plaintiffs should characterize the dress as packaging and plead secondary meaning anyway; defendants should always argue design.
7. Pull the patent file. Under TrafFix, an expired or existing utility patent claiming the asserted feature is strong evidence of functionality and shifts a heavy burden to the plaintiff.
8. Plead counterfeiting where the facts support it. Section 1117(b)'s trebling and fees are mandatory for intentional use of a counterfeit mark, and § 1117(c) statutory damages avoid the proof problems of an accounting.
9. Do not concede profits require willfulness. Romag settled that. But develop the defendant's state of mind anyway, because it remains a highly important equitable consideration on whether and how much to award.
10. Preserve the fee claim from the outset. Section 1117(a)'s "exceptional cases" standard now tracks Octane Fitness in every circuit to address it, so document both the substantive weakness of the opponent's position and any unreasonable litigation conduct as it happens.
11. For foreign defendants, plead Rule 4(k)(2) affirmatively — the federal claim, the absence of jurisdiction in any single State, and nationwide contacts satisfying due process — and move for a Rule 4(f)(3) service order rather than improvising electronic service.
12. *Do not rely on Rogers. After Jack Daniel's*, if the defendant used the mark to brand its own goods, the threshold test is unavailable and the case goes to the full confusion analysis. Budget for survey evidence on both sides.

Frequently asked questions

Can a Lanham Act claim be filed in state court? Yes. Section 1338(a)'s exclusivity clause covers patent, plant variety protection, and copyright, and pointedly omits trademark; § 1121 grants federal jurisdiction without withdrawing it from the States. State courts therefore have concurrent jurisdiction over federal infringement, false-designation, false-advertising, and dilution claims. The defendant may remove under § 1441, but must do so within the § 1446 window.

*Does TC Heartland limit venue in trademark cases? No. TC Heartland* construed the patent venue statute, § 1400(b). Trademark venue is governed by the general statute, § 1391, whose "substantial part of the events" prong is read broadly enough to cover any district where infringing goods were sold or advertised. A non-U.S. defendant may be sued in any district under § 1391(c)(3). If patent and trademark claims are joined, the patent claim must independently satisfy § 1400(b).

Who can sue for false advertising under § 1125(a)? Under Lexmark, a plaintiff within the statute's zone of interests — meaning one alleging injury to a commercial interest in reputation or sales — whose injury was proximately caused by the deception. Direct competition is neither required nor sufficient: Static Control sold components to Lexmark's competitors and had standing, while a deceived consumer would not. Because the inquiry is statutory rather than constitutional, a failure is a Rule 12(b)(6) problem, not a jurisdictional one.

Does the Lanham Act reach infringement that happens abroad? Only where the infringing use in commerce occurred in the United States. Abitron held §§ 1114(1)(a) and 1125(a)(1) are not extraterritorial and that the statutory focus is the infringing use itself, so downstream confusion, lost domestic sales, and reputational harm felt here do not make a foreign use actionable. The circuits' Vanity Fair and Timberlane-derived multifactor tests no longer govern. Four Justices would have located the focus in domestic confusion, which is where the remaining litigation is.

Is willfulness required to recover the infringer's profits? No. Romag Fasteners held unanimously that § 1117(a) imposes no willfulness precondition, because the Act expressly requires a mental state elsewhere and not there. But the Court also said mens rea remains a highly important consideration in deciding whether a profits award is appropriate, so willfulness is a factor in the equitable calculus rather than a gate.

Can a TTAB decision decide my district court case? Yes, under B&B Hardware, if the ordinary elements of issue preclusion are met and the usages the Board adjudicated are materially the same as those before the court. Because the Board usually compares the marks as filed rather than as used in the marketplace, the usage-identity requirement is the place to fight. Treat an opposition or cancellation proceeding as substantive litigation, and consider a de novo § 1071(b) district court action rather than a Federal Circuit appeal when new evidence matters.

Does a parody defense end an infringement case at the threshold? No, not when the parody is used as a source identifier. Jack Daniel's held the Rogers threshold test inapplicable where the alleged infringer uses the mark as a designation of source for its own goods, and held the dilution statute's noncommercial-use exclusion does not shelter such a use. Parody still matters — a successfully communicated parody reduces the likelihood of confusion — but it now does that work inside the multifactor analysis rather than as a bypass.

Are the § 1052 registration bars unconstitutional? Two are. Matal v. Tam struck the disparagement clause and Iancu v. Brunetti struck the immoral-or-scandalous clause, both as viewpoint discriminatory. Vidal v. Elster then upheld the names clause, holding that a content-based but viewpoint-neutral registration condition with a long historical pedigree needs no heightened scrutiny. The reasoning was fractured — the majority relied on history, Justice Kavanaugh's concurrence declined to require it, and Justice Barrett and Justice Sotomayor would apply a reasonableness standard tied to source identification — so an argument against another bar should be pleaded in the alternative. The descriptiveness, deceptiveness, and § 1052(d) confusion bars are not in doubt.

How do I reach an anonymous foreign online seller? Rule 4(k)(2) supplies jurisdiction over a defendant not amenable in any single State, measured by nationwide contacts, on a federal claim. Serve under Rule 4(f)(3) by court-ordered electronic means, keeping Schlunk and Water Splash in view on Hague Convention interaction. Expect scrutiny of Rule 20 joinder in multi-defendant Schedule A cases, of per-defendant personal jurisdiction under Bristol-Myers Squibb and Walden, and of the basis for any prejudgment asset freeze. And after Abitron, be prepared to show which of the seller's sales were domestic.

This guide covers the law as of September 2026. Every case, statute, and rule above links to its full text on LawDiver.