International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco
United States Court of Appeals for the Fourth Circuit
329 F.3d 359 (2003)
Societe des Bains de Mer et du Cercle des Estrangers a Monaco (SBM) (defendant), a Monaco company operating the Casino de Monte Carlo since 1863, registered the casino's name as a trademark only in Monaco, not the United States, while maintaining a New York staff to advertise its Monaco-based services to U.S. consumers. International Bancorp, LLC (Bancorp) (plaintiff) operated over 150 online gambling sites, more than 50 using 'Casino de Monte Carlo' in their domain names and displaying images of the real casino implying affiliation. Bancorp sought a declaratory judgment that it could use these domain names; SBM counterclaimed for trademark infringement, and the district court ruled for SBM. Bancorp appealed, arguing SBM's mark wasn't 'used in commerce' since SBM never rendered its services within the United States.
Whether a foreign mark is deemed used in commerce and thus eligible for U.S. trademark protection where the underlying services are rendered in foreign trade but the mark owner advertises or sells those services to U.S. consumers.