# Advertised Here, Served Abroad: International Bancorp v. SBM and Foreign-Mark Use in Commerce

> A divided Fourth Circuit held that a Monaco casino's U.S. advertising, paired with services rendered to American visitors abroad, was use in commerce supporting Lanham Act protection for the Casino de Monte Carlo mark.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/international-bancorp-v-sbm-monaco-foreign-mark-use-in-commerce/


Can a foreign business that serves customers only abroad still own a U.S. trademark because it advertises to Americans at home? A divided Fourth Circuit answered yes in *International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco*, 329 F.3d 359 (4th Cir. 2003) — decided May 19, 2003, in a 2-1 opinion by Judge J. Michael Luttig, joined by Judge Niemeyer, over a dissent by Judge Diana Gribbon Motz. The court held that the operator of the famed Casino de Monte Carlo had used its mark "in commerce" for Lanham Act purposes despite rendering its gambling services only in Monaco. The ruling is influential on foreign-mark protection, but the sharp dissent means it is best read as one persuasive view rather than settled, universal law.

## At a glance

- **Case:** *International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco*, 329 F.3d 359 (4th Cir. 2003).
- **Court:** U.S. Court of Appeals for the Fourth Circuit; majority opinion by Judge J. Michael Luttig, joined by Judge Paul V. Niemeyer; dissent by Judge Diana Gribbon Motz.
- **Posture:** Appeal from the Eastern District of Virginia's summary judgment for SBM on Lanham Act infringement and Anticybersquatting Act claims over 43 domain names; affirmed.
- **Holding:** SBM's "Casino de Monte Carlo" mark was used in commerce — through U.S. advertising and promotion combined with services rendered to U.S. citizens who traveled to Monaco — and was therefore protectable under the Lanham Act against the domain-name registrant.
- **Significance:** A leading, though contested (2-1), authority that U.S. advertising of a foreign service can supply the "use in commerce" needed for U.S. trademark protection.

## The Casino, the domains, and the dispute

The Societe des Bains de Mer (SBM) is the Monaco enterprise that has operated the storied Casino de Monte Carlo for generations. It does not run a casino in the United States, but it has long advertised and promoted the Casino de Monte Carlo to American customers, and a meaningful number of U.S. citizens travel to Monaco to gamble there. International Bancorp and affiliated parties registered 43 domain names incorporating "Casino de Monte Carlo" and related terms. SBM sued, asserting trademark infringement under the Lanham Act and a claim under the Anticybersquatting Consumer Protection Act. The district court granted summary judgment to SBM, and the registrants appealed.

The decisive question was threshold and statutory: had SBM made the kind of "use in commerce" that U.S. trademark law requires before it will protect a mark? If the casino's services counted as rendered in U.S.-regulable commerce, SBM could claim protectable rights; if not, the foreign provider had no U.S. mark to enforce.

## The majority: foreign trade is "commerce" Congress can regulate

Judge Luttig's majority opinion built its answer on the Lanham Act's broad definition of "commerce" as all commerce that may lawfully be regulated by Congress, 15 U.S.C. § 1127. Congress's Commerce Clause power, the court reasoned, reaches foreign trade — including trade between U.S. citizens and a foreign business. When Americans pay to gamble at the Casino de Monte Carlo, that transaction is part of U.S. foreign commerce that Congress may regulate.

On that footing, the majority concluded that SBM's services were rendered in commerce and that SBM's extensive U.S. advertising and promotion of the casino, together with its actual provision of services to American patrons abroad, constituted "use in commerce" of the mark. The court also found the mark had acquired the requisite distinctiveness and secondary meaning among the relevant U.S. public, given the casino's fame and SBM's promotional efforts. With protectable rights established, the court upheld relief against the registrants' bad-faith use of the domain names.

## The dissent: advertising is not rendering services

Judge Motz dissented sharply, and her reasoning is why the holding should be presented as influential rather than universal. In her view, the majority drained the statutory "use in commerce" requirement of meaning. For service marks, she argued, the statute contemplates that the services themselves be rendered in commerce Congress can regulate — and SBM rendered its casino services in Monaco, not the United States. Advertising and promotion directed at Americans, however extensive, are not the same as providing the service here. Allowing U.S. advertising alone to manufacture a domestic mark, she warned, would let any foreign provider claim U.S. trademark rights simply by marketing to American consumers, in tension with trademark law's territoriality principle. The split means other courts and commentators continue to debate whether the majority's approach is correct.

## Open questions

- **How much U.S. activity is enough?** The majority leaned on substantial advertising plus actual American patronage abroad; it is unclear how thin those facts can become before protection fails.
- **Does the territoriality principle survive intact?** Judge Motz's concern — that the ruling lets foreign-only services claim U.S. marks through marketing — remains a live tension other circuits have not uniformly resolved.
- **What about the famous-marks doctrine?** The decision sits near, but does not squarely adopt, the contested idea that a foreign mark famous in the U.S. can be protected without domestic use, leaving that doctrine unsettled.

## Implications

- **U.S. advertising can support a foreign mark — sometimes.** Under *International Bancorp*, marketing a foreign service to Americans, combined with serving them abroad, may establish protectable U.S. rights, but the rule is not universally accepted.
- **The split limits its weight.** Because the holding was 2-1 with a forceful dissent, practitioners should treat it as persuasive authority, not a safe assumption outside the Fourth Circuit.
- **"Commerce" is defined expansively.** The Lanham Act's reach tracks Congress's full Commerce Clause power, including foreign trade involving U.S. citizens.
- **Cybersquatters face foreign plaintiffs too.** A foreign owner that can clear the use-in-commerce hurdle may wield the Anticybersquatting Act against U.S. domain registrants.
- **Territoriality still cautions foreign brands.** The prudent course remains to use and register marks domestically rather than relying on advertising alone to create U.S. rights.

## Frequently asked questions

**What did *International Bancorp v. SBM* decide?**
A divided Fourth Circuit panel held that SBM's mark Casino de Monte Carlo was used in commerce for Lanham Act purposes, even though the casino services were rendered only in Monaco, because SBM advertised and promoted the casino in the United States and provided services to U.S. citizens who traveled there. The court found protectable rights and ruled against the domain-name registrant. The decision was 2-1, with Judge Motz dissenting.

**Why was the use-in-commerce question so contested?**
The Lanham Act generally requires that a service mark be used in commerce, which for services typically means the services are rendered in commerce that Congress can regulate. SBM rendered its casino services in Monaco, not the United States. The majority reasoned that foreign trade involving U.S. citizens is commerce Congress may regulate and that U.S. advertising plus service to American patrons abroad satisfied the requirement. The dissent disagreed.

**What did Judge Motz argue in dissent?**
Judge Diana Gribbon Motz argued the majority effectively read the use-in-commerce requirement out of the statute. In her view, advertising in the United States is not the same as rendering services here, and a mark used only to provide services abroad should not gain U.S. trademark protection merely because the provider promotes itself to Americans. Because of that split, the holding is influential but not universally followed.

## Authorities and sources

- *International Bancorp, LLC v. Societe des Bains de Mer*, 329 F.3d 359 (4th Cir. 2003) (full opinion, OpenJurist): https://openjurist.org/329/f3d/359/international-bancorp-llc-v-societe-des-bains-de-mer-et-du-cercle-des-etrangers-a-monaco
- Full opinion (FindLaw): https://caselaw.findlaw.com/court/us-4th-circuit/1136655.html
- Lanham Act definition of "commerce," 15 U.S.C. § 1127 (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1127
- Case brief and summary (Quimbee): https://www.quimbee.com/cases/international-bancorp-llc-v-societe-des-bains-de-mer-et-du-cercle-des-estrangers-a-monaco