Opinion · Court of Appeals for the Eleventh Circuit
Jekyll Island-State Park Authority v. Polygroup Macau Limited
Jekyll Island-State Park Auth. v. Polygroup Mac. Ltd., 140 F.4th 1304 (11th Cir. 2025)
- Type
- Opinion
- Court
- Court of Appeals for the Eleventh Circuit
- Jurisdiction
- Federal
- Date
- 2025-06-10
- Topic
- litigation
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- “[T]he Due Process Clause requires that the defendant’s conduct and connection with the forum State be such that he should reasonably anticipate being haled into court there.”’
- explaining the evidentiary requirements to contest personal jurisdiction
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[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 23-11415
____________________
JEKYLL ISLAND-STATE PARK AUTHORITY,
Plaintiff-Appellant,
versus
POLYGROUP MACAU LIMITED,
Defendant-Appellee.
____________________
Appeal from the United States District Court
for the Southern District of Georgia
D.C. Docket No. 2:21-cv-00008-LGW-BWC
____________________
Before ROSENBAUM, LAGOA, and WILSON, Circuit Judges.
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2 Opinion of the Court 23-11415
WILSON, Circuit Judge:
In this case, we must decide whether a federal district court
may exercise personal jurisdiction over Defendant-Appellee Poly-
group Macau Limited (Polygroup Macau), an intellectual property
holding company registered and headquartered in the British Vir-
gin Islands (BVI).
Plaintiff-Appellant Jekyll Island State Park Authority ( Jekyll
Island) is a Georgia entity that operates the Summer Waves Water
Park and owns a federally registered trademark for the words
SUMMER WAVES. In 2021, Jekyll Island discovered that Polygroup
Macau had registered nearly identical SUMMER WAVES marks, af-
ter Polygroup Macau’s general counsel asked to buy Jekyll Island’s
domain name—summerwaves.com. Jekyll Island sued for trade-
mark infringement and to cancel Polygroup Macau’s marks.
Polygroup Macau moved to dismiss for lack of personal ju-
risdiction. Although the district court noted it was “a fairly close
case,” it concluded that because Polygroup Macau did not sell prod-
ucts in the United States using its trademarks—it only permitted
other entities to do so—the “causal connection” between Poly-
group Macau’s activities in the United States and Jekyll Island’s
trademark claims was too “attenuated” to support personal juris-
diction. No. 21-CV-8, 2023 WL 2632813
, at *11 (S.D. Ga. Mar. 24,
2023).
We disagree. Personal jurisdiction does not require “a strict
causal relationship between the defendant’s in-state activity and
the litigation.” Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct., 592 U.S.
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23-11415 Opinion of the Court 3
351, 362 (2021). Because Polygroup Macau has purposefully availed
itself of the benefits of United States law to protect its substantial
portfolio of intellectual property, a federal court may hold it “to
account for related misconduct.” Id. at 360. And the connection be-
tween Jekyll Island’s trademark infringement claims and Poly-
group Macau’s activities in the United States is “close enough to
support specific jurisdiction.” Id. at 371.
After careful review, and with the benefit of oral argument,
we reverse the district court’s dismissal of Jekyll Island’s claims and
remand for consideration on the merits.
I. Background
A. Factual History1
Jekyll Island is an entity created by the state of Georgia to
oversee and manage Jekyll Island State Park. Since 1988, Jekyll Is-
land has operated Summer Waves Water Park on the island and
sold branded merchandise. In 1990, Jekyll obtained a federal trade-
mark registration for SUMMER WAVES, Registration No. 1,593,514
. Beginning in 2001, Jekyll Island advertised the park and
sold SUMMER WAVES-branded merchandise nationwide on its
website, www.summerwaves.com.
Polygroup Macau is an intellectual property holding com-
pany incorporated and registered in the BVI. In 2015, Polygroup
1 To the extent the parties’ statements conflict, we construe all reasonable in-
ferences in favor of Jekyll Island. See, e.g., Diamond Crystal Brands, Inc. v. Food
Movers Int’l, Inc., 593 F.3d 1249, 1257
(11th Cir. 2010).
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4 Opinion of the Court 23-11415
Macau registered trademarks for SUMMER WAVES, Registration No. 4,862,983
; SUMMER WAVES 3D,Registration No. 5,050,873
;
and SUMMER WAVES ELITE, Registration No. 4,862,985,
for use
on recreational pools and pool-related products. 2
Polygroup Macau is not a revenue-generating entity. It does
not engage in customer sales anywhere in the world. It does not
use the SUMMER WAVES marks or any other trademarks in
United States commerce or anywhere else in the world. Polygroup
Macau does not directly sell products into the United States, own
property in the United States, have bank accounts in the United
States, or pay taxes in the United States.
Polygroup Macau maintains that its “only role within the
group of related Polygroup companies is holding certain intellec-
tual property assets, including [Polygroup Macau’s] federally regis-
tered United States SUMMER WAVES marks, and making these
assets available for use by other related Polygroup Companies.”
i. The Polygroup Member Companies
Polygroup Macau is a wholly owned subsidiary of Poly-
group Asia Pacific Limited (another BVI company). Polygroup Asia
Pacific Limited oversees a group of related “Polygroup” entities
that manufacture and distribute consumer goods.
2 The trademarks for SUMMER WAVES 3D and SUMMER WAVES ELITE
were cancelled because Polygroup Macau did not file an acceptable declara-
tion of use or non-use between the fifth and sixth year after registration as
required by the Lanham Act. See 15 U.S.C. §§ 1058
, 1141k.
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23-11415 Opinion of the Court 5
Polygroup Asia Pacific Limited is wholly owned by the
Cheng Chung Wai (Paul Cheng) Family Trust. Paul Cheng and his
two sons, Lewis and Elmer Cheng, oversee the Polygroup family
of companies. Lewis and Paul Cheng are officially Polygroup Ma-
cau’s directors (though Elmer has signed several trademark agree-
ments and declarations as a director).
The Polygroup “family of companies” (collectively, Poly-
group) “includes factories and operations in China, Thailand, Eu-
rope and the United States.” 3 Polygroup employs more than 15,000
people, distributes products in more than fifty countries, and over-
sees manufacturing operations in Asia, Europe, and North Amer-
ica. Its “award-winning product portfolio” is “sold through mass
retailers across 50+ countries.”4
Polygroup represents itself as a unified brand on its websites,
social media pages, and products. 5 The Polygroup entities are rep-
resented by a shared general counsel, who is barred in Georgia. He
describes Polygroup as “a privately run small group” that is “very
collegial[ly] run.”
The Polygroup companies conduct business in the United
States through Polygroup Services N.A. Inc. (Polygroup Services),
3 About Us, Polygroup, https://perma.cc/EV88-XX5G.
4 Our Story, Polygroup, https://perma.cc/XJD8-6GPH.
5 See, e.g., Polygroup, https://perma.cc/J3QU-65C5 (“As used herein, ‘Poly-
group®’ refers to our brand and not to any single or particular company
within the Polygroup® family of companies.”).
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6 Opinion of the Court 23-11415
another wholly owned subsidiary of Polygroup Asia Pacific Lim-
ited. Polygroup Services is a Delaware corporation with an office
in Georgia and a distribution facility in Texas. Polygroup Services
“assists” the other entities in the group with their business needs in
the United States. In 2017, an employee of Polygroup Services
signed a trademark assignment contract as Polygroup Macau’s Sen-
ior Vice President and “Head of North American Operations.”
Polygroup Macau has one wholly owned subsidiary, Poly-
group Limited Macau Commercial Offshore (Polygroup MCO),
which is incorporated in Macau. Polygroup MCO pays Polygroup
Macau an annual “management service fee.” Polygroup MCO sells
products and transfers title to various global retailers. The global
retailers then bring the products to the markets of their choice, in-
cluding the United States.
ii. Polygroup Macau’s Trademarks
Polygroup Macau owns the intellectual property used by the
other Polygroup entities, including the POLYGROUP trademark.
See Registration No. 3,790,951
. Polygroup Macau has filed more
than seventy trademark applications and at least thirty-four patent
applications in the United States Patent and Trademark Office
(USPTO). It currently owns more than thirty active trademarks.
The marks’ registration pages, including the SUMMER WAVES
and POLYGROUP marks, all list the same Atlanta-based law firm
as the attorneys of record.
Polygroup Macau has been a party to at least thirty-four pa-
tent and trademark lawsuits in U.S. courts. Polygroup Macau has
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23-11415 Opinion of the Court 7
been the sole plaintiff in at least four suits to enforce its intellectual
property rights, though never to enforce its SUMMER WAVES
trademarks. As a plaintiff in those suits, Polygroup Macau pled that
it “marketed, distributed and sold” products in the United States.
But just six days after filing one complaint, when a defendant coun-
tersued, Polygroup Macau claimed that it never sold or distributed
products in the United States.6
Polygroup Macau does not have its own budget for trade-
mark registration fees or litigation fees. The “revenue-generating”
Polygroup companies, including Polygroup Services and Poly-
group MCO, provide the funds on a case-by-case basis, “depending
on location.” Polygroup Macau hired the same Atlanta-based law
firm to assist with its various trademark registrations and litigation.
As of August 2020, the firm was listed as the attorney of record for
thirty-one active Polygroup trademarks, including the Polygroup
name itself. Its SUMMER WAVES trademark applications lists at-
torneys barred in Georgia, Ohio, Virginia, New York, New Jersey,
and California.
6 The district court was “troubled by [Polygroup Macau’s] conflicting mes-
sages in other cases regarding whether it conducts business in the United
States; the messages are seemingly dependent on [Polygroup Macau’s]’s status
as plaintiff or defendant.” 2023 WL 2632813
, at *17. According to Polygroup
Macau, all of these statements were “mistakes,” and not binding in this case.
The district court noted these “mistakes” by Polygroup Macau “amount at
least to negligence, particularly because [Polygroup Macau] is represented by
experienced and sophisticated counsel.” Id.
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8 Opinion of the Court 23-11415
Apart from the SUMMER WAVES marks, Polygroup Macau
has entered various licensing and purchase agreements with United
States companies for its trademarks and patents. Many of these
agreements list different U.S. states in their choice-of-law clauses.
iii. Use of Trademarks in the United States
Polygroup Macau Limited does not formally license its
SUMMER WAVES trademarks. Instead, it holds the marks and “al-
lows” or “permits” other Polygroup companies and their custom-
ers to use them on products that are sold in the United States. Re-
tailers in the United States buy SUMMER WAVES-branded prod-
ucts directly through Polygroup Services in the United States or in-
directly from Polygroup factories located in other countries.
Polygroup Services has imported, marketed, and sold
SUMMER WAVES-branded products—including inflatable pools,
pool toys, and water slides—in the United States. It purchases these
products from other Polygroup member companies. Polygroup
Services operates the Polygroup websites in the United States and
uses them to sell SUMMER WAVES-branded products. Polygroup
Services employees are involved in directly marketing and accept-
ing orders for products in the United States. Polygroup Services
also provides customer service and support for SUMMER WAVES
products. Polygroup Services and Polygroup Macau do not have a
formal licensing agreement, and Polygroup Macau collects no roy-
alties from Polygroup Services for its use of the marks.
Since 2014, other Polygroup companies, including Poly-
group MCO, have sold SUMMER WAVES-branded products in
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23-11415 Opinion of the Court 9
foreign countries to retailers that import and sell those products in
the United States. Major U.S. retailers like Costco, Wal-Mart, Home
Depot, Amazon, Target, and Michaels have sold hundreds of dif-
ferent products under Polygroup Macau’s SUMMER WAVES
marks.
Polygroup Macau asserts it lacks “any significant control,
oversight, or involvement in its licensees’ use of the SUMMER
WAVES trademark in the United States.” Polygroup Macau has not
executed a written or oral agreement for the licensing or distribu-
tion of products using its marks and does not collect royalties for
their use.
iv. Marketing in the United States
Polygroup’s website tells consumers they can “find Poly-
group® products at most major retailers around the world.” 7 Its
dedicated “Retail Partners” webpage prominently features major
American retailers including Walmart, Sam’s Club, Meijer, Ace
Hardware, Lowe’s, The Home Depot, Michaels, Kroger, Hobby
Lobby, Costco, and J.C. Penny. Polygroup’s website offers its cus-
tomers a toll-free phone number to be answered by its “United
States Customer Service” desk.
In early 2021, Polygroup Macau contacted Jekyll Island and
asked to purchase the summerwaves.com domain name. Poly-
group Macau’s Georgia-barred general counsel testified that he
spoke to Polygroup Services’ California-based marketing employee
7 Our Retail Partners, Polygroup, https://perma.cc/46CM-5KU7.
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10 Opinion of the Court 23-11415
about buying the summerwaves.com domain name before this
conversation. Polygroup Macau’s counsel told Jekyll Island’s gen-
eral counsel the company was looking to develop its own website
and sell SUMMER WAVES-branded products.
B. Procedural History
Jekyll Island sued Polygroup Macau in the Southern District
of Georgia, asserting four claims: trademark infringement under
15 U.S.C. § 1114
(Count I); unfair competition under15 U.S.C. § 1125
(a) (Count II); common-law trademark infringement and un-
fair competition (Count III); and cancellation of trademark regis-
trations based on fraud, under 15 U.S.C. § 1119
(Count IV). Jekyll
Island sought an order enjoining Polygroup Macau and its subsidi-
aries, affiliates, and related companies from using or licensing the
infringing SUMMER WAVES marks.8
Polygroup Macau moved to dismiss for lack of personal ju-
risdiction, Fed. R. Civ. P. 12(b)(2), or for failure to state a claim for
trademark cancellation, Fed. R. Civ. P. 12(b)(6). Jekyll Island then
moved for jurisdictional discovery, which the district court granted
to resolve two disputes between the parties: (1) whether and to
8 In trademark infringement cases, any member of the distribution chain, who
knowingly participated in the infringing acts, can be sued as a joint tortfeasor.
See Luxottica Grp., S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303, 1312
(11th
Cir. 2019). Before the district court, Jekyll Island explained it sued Polygroup
Macau “to stop the infringement from the source.” Jekyll Island’s counsel elab-
orated: “I can’t enjoin The Home Depot from licensing the trademark regis-
tration that belongs to the defendant here. I need an injunction. I need the
licensing to stop. I need the distribution to stop.”
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what extent Polygroup “does business in the state of Georgia” by
selling infringing goods, and (2) whether and to what extent Poly-
group uses the SUMMER WAVES mark in United States com-
merce.
After jurisdictional discovery, but without holding an eviden-
tiary hearing, the district court granted Polygroup Macau’s re-
newed motion to dismiss for lack of personal jurisdiction.9 It con-
cluded Polygroup Macau lacked sufficient contacts with the State
of Georgia or the United States as a whole to satisfy due process
because Polygroup Macau did not directly sell infringing products
on the U.S. market. Jekyll Island appealed.
II. Standard of Review
We review a district court’s dismissal for lack of personal ju-
risdiction de novo. Don’t Look Media LLC v. Fly Victor Ltd., 999 F.3d 1284, 1292
(11th Cir. 2021). A plaintiff bears the burden of estab-
lishing a prima facie case of personal jurisdiction over the non-res-
ident defendant. Id.
If the defendant submits affidavit evidence con-
testing the basis for personal jurisdiction, “the burden shifts back to
the plaintiff to produce evidence to support personal jurisdiction.”
SkyHop Techs., Inc. v. Narra, 58 F.4th 1211, 1222
(11th Cir. 2023) (quo-
tation marks omitted).
9 Despite its concern with Polygroup Macau’s inconsistent statements in other
litigation, the district court denied Jekyll island’s motion for sanctions because
nothing suggested that Polygroup Macau purposefully misrepresented
whether it marketed, distributed, and sold products in the United States in this
case.
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12 Opinion of the Court 23-11415
To the extent that “the plaintiff’s complaint and supporting
evidence conflict with the defendant’s affidavits, the court must
construe all reasonable inferences in favor of the plaintiff.” Diamond
Crystal Brands, Inc. v. Food Movers Int’l, Inc., 593 F.3d 1249, 1257
(11th
Cir. 2010) (quotation marks omitted). Whether the plaintiff satis-
fied the prima facie requirement “is a purely legal question; the dis-
trict court does not weigh evidence or make credibility determina-
tions.” AcryliCon USA, LLC v. Silikal GmbH, 985 F.3d 1350
, 1364–65
(11th Cir. 2021).
III. Personal Jurisdiction Analysis
On appeal, Jekyll Island’s primary basis for asserting per-
sonal jurisdiction over Polygroup Macau is Federal Rule of Civil
Procedure 4(k)(2), also known as “the national long-arm statute.”
E.g., Consol. Dev. Corp. v. Sherritt, Inc., 216 F.3d 1286, 1291
(11th Cir.
2000). Rule 4(k)(2) allows courts to exercise personal jurisdiction
over foreign defendants who have enough contacts with the United
States, but not with a single state, to support personal jurisdiction.
See 5 J. McCarthy, Trademarks and Unfair Competition § 32:45 (5th
ed. 2025). To wield Rule 4(k)(2) against a foreign defendant, a plain-
tiff must show: (1) its claim “arises under federal law,” (2) “the de-
fendant is not subject to jurisdiction in any state’s courts of general
jurisdiction,” and (3) “exercising jurisdiction is consistent with the
United States Constitution and laws.” Fed. R. Civ. P. 4(k)(2); see He-
rederos De Roberto Gomez Cabrera, LLC v. Teck Res. Ltd., 43 F.4th 1303, 1307
(11th Cir. 2022).
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23-11415 Opinion of the Court 13
Neither party disputes that Rule 4(k)(2)’s first two conditions
are satisfied here: (1) Jekyll Island’s claims arise under the Lanham
Act (federal trademark law), and (2) Polygroup Macau denies that
it is subject to jurisdiction in any state’s court of general jurisdiction
for these claims. 10 The only remaining question is whether the ex-
ercise of nationwide jurisdiction over Polygroup Macau is “con-
sistent with the United States Constitution and laws.” Fed. R. Civ.
P. 4(k)(2).
“Jurisdiction ‘consistent with the Constitution and laws of
the United States’ is that which comports with due process.” Con-
sol. Dev. Corp., 216 F.3d at 1291
(quoting Fed. R. Civ. P. 4(k)(2)). Due
process protects “an individual’s liberty interest in not being sub-
ject to the binding judgments of a forum with which he has estab-
lished no meaningful ‘contacts, ties, or relations.’” Burger King Corp.
10 The court “is not required to analyze the laws of all fifty states to ascertain
whether any state court of general jurisdiction has jurisdiction over the de-
fendant.” Oldfield v. Pueblo De Bahia Lora, S.A., 558 F.3d 1210
, 1218 n.22 (11th
Cir. 2009). If “the defendant contends that he cannot be sued in the forum state
and refuses to identify any other where suit is possible, then the federal court
is entitled to use Rule 4(k)(2).” Id.
(quotation mark omitted and alterations
adopted).
Both parties agree that Polygroup Macau did not identify any state’s court “of
general jurisdiction” where it would be subject to suit. Before the district
court, Polygroup Macau agreed that Jekyll Island could bring its cancellation
claim before the Trademark Trial and Appeal Board (TTAB) and appeal the
TTAB’s decision to the Eastern District of Virginia. See 28 U.S.C. § 1071
(b)(4).
But, despite the district court’s contrary conclusion, this does not equate to
“identif[ying] an alternate forum” for the cancellation claim because the TTAB
is an administrative board, not a state court of general jurisdiction.
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14 Opinion of the Court 23-11415
v. Rudzewicz, 471 U.S. 462
, 471–72 (1985) (quoting Int’l Shoe Co. v.
Washington, 326 U.S. 310, 319
(1945)). “The heart of this protection
is fair warning—the Due Process Clause requires ‘that the defend-
ant’s conduct and connection with the forum State be such that he
should reasonably anticipate being haled into court there.’” Dia-
mond Crystal, 593 F.3d at 1267
(alterations adopted) (quoting Burger
King, 471 U.S. at 474
).
Nationwide jurisdiction cases under Rule 4(k)(2) implicate
the Due Process Clause of the Fifth Amendment, rather than the
Fourteenth. See Herederos, 43 F.4th at 1310
. The analysis under the
two is mostly the same. 11 The only major difference is that where
the Fifth Amendment applies, the court weighs the defendant’s
contacts with the United States as a whole, rather than with a single
state. Id.
Because Polygroup Macau is not “at home” in the United
States, 12 due process limits the jurisdiction of United States courts
11 This is true for three main reasons: (1) the operative language of the two
clauses is “materially identical,” (2) our previous case law has used the two
interchangeably, and (3) adopting a different standard for Fifth Amendment
cases would create “unnecessary tension” with our precedents. Herederos De
Roberto Gomez Cabrera, LLC v. Teck Res. Ltd., 43 F.4th 1303, 1308
(11th Cir.
2022).
12 A court may assert general jurisdiction over a foreign corporation and “hear
any and all claims against it” only when the corporation is “essentially at home
in the forum.” Daimler AG v. Bauman, 571 U.S. 117, 122
(2014) (quotation marks
omitted and alterations adopted). General jurisdiction is not appropriate here
as the United States is neither Polygroup Macau’s place of incorporation nor
its principal place of business—“the paradigm forums” for the exercise of
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23-11415 Opinion of the Court 15
to suits that “arise out of or relate to [its] contacts with the forum.”
Bristol-Myers Squibb Co. v. Superior Ct. of Cal., 582 U.S. 255, 262
(2017)
(quotation marks omitted and alterations adopted). This is known
as specific (or case-linked) jurisdiction. Id.
To exercise specific juris-
diction, the “defendant must have ‘purposefully availed’ itself of
the privilege of conducting activities—that is, purposefully estab-
lishing contacts—in the forum state and there must be a sufficient
nexus between those contacts and the litigation.” Diamond Crystal,
593 F.3d at 1267
.
The specific jurisdiction inquiry proceeds as follows. First,
Jekyll Island must establish: (1) Polygroup Macau purposefully
availed itself of the laws of the United States, and (2) Jekyll Island’s
claims arise out of or relate to at least one of Polygroup Macau’s
contacts with the United States. See Del Valle v. Trivago GMBH, 56 F.4th 1265, 1275
(11th Cir. 2022). If successful, Polygroup Macau
must make a “‘compelling case’ that the exercise of jurisdiction
would violate traditional notions of fair play and substantial jus-
tice.” Id.
(quoting Diamond Crystal,593 F.3d at 1267
).
A. Polygroup Macau’s Purposeful Availment
A corporation that chooses to avail itself of the protection
of a forum state’s laws by engaging in business in that state must
assume certain risks—such as the risk of litigation. See, e.g., Int’l
general jurisdiction. See BNSF Ry. Co. v. Tyrrell, 581 U.S. 402, 413
(2017) (inter-
nal quotation marks omitted). Nor is this an “exceptional case,” where Poly-
group Macau’s operations in the United States are “so substantial and of such
a nature” as to render it “at home” here. Id.
(quotation marks omitted).
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16 Opinion of the Court 23-11415
Shoe, 326 U.S. at 319
. A court may exercise specific personal juris-
diction over nonresident defendants who “purposefully direct[]”
their “activities toward forum residents” or “purposefully derive
benefit” from their in-forum activities. Burger King, 471 U.S. at 473–
74 (quotation marks omitted).
Specific jurisdiction is “founded . . . on an idea of reciprocity
between a defendant and a State: When (but only when) a company
exercises the privilege of conducting activities within a state—thus
enjoying the benefits and protection of its laws—the State may
hold the company to account for related misconduct.” Ford Motor
Co., 592 U.S. at 360 (internal quotation marks omitted and altera-
tions adopted). So long as a defendant “enjoys the benefits and pro-
tection of [a forum’s] laws—the enforcement of contracts, the de-
fense of property, the resulting formation of effective markets”—it
must answer in that forum’s courts for related harms. Id. at 367–68.
“At the outset, we underscore that the minimum contacts
analysis is immune to solution by checklist.” Diamond Crystal, 593
F.3d at 1267–68 (internal quotation marks omitted). A broad set of
a corporate defendant’s “‘efforts . . . to serve, directly or indirectly,
the market for its product’” in the forum contacts are “relevant in
assessing the link” between the forum and the suit. Ford Motor Co.,
592 U.S. at 363, 371 (quoting World-Wide Volkswagen Corp. v. Wood-
son, 444 U.S. 286, 297
(1980)). Such efforts include “designing the
product for the market in the forum State, advertising in the forum
State, establishing channels for providing regular advice to custom-
ers in the forum State, or marketing the product through a
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23-11415 Opinion of the Court 17
distributor who has agreed to serve as the sales agent in the forum.”
Asahi Metal Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 112
(1987)
(plurality opinion).13
Looking to Polygroup Macau’s efforts to serve the U.S. mar-
ket, we find that the company enjoyed the benefits and protections
of U.S. law by: (1) registering and maintaining dozens of trade-
marks with the USPTO, and enforcing its rights in U.S. courts;
(2) “allowing” its sister companies and their customers unrestricted
use of those trademarks to sell products in the United States; and
(3) using its trademarks in marketing specifically targeted at United
States consumers. We address each category of contacts in turn.
i. Trademark Registration
A foreign defendant “who has sought and obtained a prop-
erty interest from a U.S. agency has purposefully availed itself of
the laws of the United States.” Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1416
(Fed. Cir. 2009). As then-Judge Ginsburg explained:
By registering a patent in the United States Patent and
Trademark Office, a party residing abroad purpose-
fully avails itself of the benefits and protections pa-
tent registration in this country affords. It is therefore
fair and reasonable to require such a party to respond
here—i.e., in federal court in our nation’s capital,
13 The Asahi plurality adopted a “more stringent” analysis for “the placement
of a product into the stream of commerce” than the binding opinion. Ver-
meulen v. Renault, U.S.A., Inc., 985 F.2d 1534
, 1548 & n.17 (11th Cir. 1993) (quot-
ing Asahi, 480 U.S. at 112
).
USCA11 Case: 23-11415 Document: 40-1 Date Filed: 06/10/2025 Page: 18 of 41
18 Opinion of the Court 23-11415
where the party has registered its patents—in pro-
ceedings, whether arising under federal or state law,
concerning the U.S.-registered patent.
Nat’l Pat. Dev. Corp. v. T.J. Smith & Nephew Ltd., 877 F.2d 1003
, 1009–
10 (D.C. Cir. 1989) (en banc) (citations and footnote omitted); see
also Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found.,
297 F.3d 1343, 1353
(Fed. Cir. 2002) (“Obtaining such a patent is a
meaningful contact with the United States; it requires a patentee
purposefully to avail him or herself of a significant benefit of
United States law.” (citing T.J. Smith & Nephew Ltd., 877 F.2d at 1010
)).
While these cases addressed patents rather than trademarks,
“[p]ersonal jurisdiction is not an area in which Congress has en-
acted a patent-specific statute that placed patent infringement cases
in a class by themselves.” Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147, 1154
(Fed. Cir. 2021) (internal quotation marks omitted). If
anything, the differences between patents and trademarks bolster
our conclusion that a trademark registration is a purposeful effort
to avail oneself of the benefits of doing business in the United
States. A federal trademark registration does not “create” a trade-
mark in the way that a federal patent grant creates the exclusive
rights to make, use, and sell the patented technology. 4 McCarthy
§ 31:65. A trademark registrant must show that he is already using
the mark in U.S. commerce to identify and distinguish goods or in-
tends to soon. See 15 U.S.C. §§ 1051
, 1052.
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23-11415 Opinion of the Court 19
The Eleventh Circuit has not considered whether registra-
tion of a trademark, by itself, is enough to show purposeful avail-
ment in an infringement case. District courts across the country
are in “some disagreement” on this point. See Shenzhen Wanfan
Tech. Co. v. Orbital Structures Pty Ltd., No. 23-CV-02330, 2024 WL 325339
, at *6 (N.D. Ill. Jan. 29, 2024) (collecting cases). But we agree
with our sister circuit that trademark registration can be “consid-
ered compelling evidence that [the defendant] satisfied the pur-
poseful availment or direction test.” Ayla, LLC v. Alya Skin Pty. Ltd.,
11 F.4th 972
, 982 n.4 (9th Cir. 2021) (citing T.J. Smith & Nephew Ltd.,
877 F.2d at 1009–10). Like registering a patent, making the deliber-
ate decision to register a trademark shows an intent to capitalize
on the benefits and protections that trademark registration in this
country affords. Cf. T.J. Smith & Nephew Ltd., 877 F.2d at 1009–10.
Even if registration is not enough, our sister circuits have
looked to other registration-related contacts, such as hiring an at-
torney or agent in the forum to support a finding of purposeful
availment. See Trimble, 997 F.3d at 1155
. The D.C. Circuit noted that
the defendant did not just register its patents, but “at least four
times availed itself of its rights under United States patent registra-
tions by seeking to enforce the patents against infringers.” T.J.
Smith & Nephew, 877 F.2d at 1009
n.9.
Broadly speaking, efforts to certify or register products with
U.S. agencies demonstrate that a defendant “sought out the bene-
fits afforded by this country’s regulatory regime.” Ayla, 11 F.4th at
982. Asserting personal jurisdiction over a foreign company that
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20 Opinion of the Court 23-11415
advertised that its products were “FDA approved,” the Ninth Cir-
cuit reasoned that “[o]btaining and advertising approval by the
FDA, a United States regulatory agency, is an appeal specifically to
American consumers for whom the acronym ‘FDA’ has meaning.”
Id. at 982–83. The Ninth Circuit distinguished its case from Good-
year, where the Supreme Court found no personal jurisdiction over
a foreign tire company, even though its products had markings re-
quired for sale in the United States by the Department of Transpor-
tation (DOT). Id. (citing 564 U.S. at 922). In Goodyear, the parties
presented evidence that the DOT encouraged foreign companies
to use its markings as evidence of product safety, even if those
products weren’t “destined for sale in the United States.” 564 U.S.
at 923 n.2. But the company in Ayla “offer[ed] no other explanation”
besides appealing to American consumers for seeking and advertis-
ing FDA approval. 11 F.4th 982–83.
By registering more than sixty trademarks with the USPTO,
Polygroup Macau has purposefully availed itself of the benefits and
protections of United States law. As the owner of registered trade-
marks in the United States, Polygroup Macau enjoys many “valua-
ble benefits,” Iancu v. Brunetti, 588 U.S. 388, 391
(2019), that are “use-
ful in infringement litigation” in the United States, Jack Daniel’s
Props., Inc. v. VIP Prods. LLC, 599 U.S. 140
, 146 (2023). Registration is
“prima facie evidence of the validity of the registered mark,” 15 U.S.C. § 1057
(b), and a precondition for a mark to become
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23-11415 Opinion of the Court 21
“incontestable,” id.
§§ 1065, 1115(b). 14 A trademark owner may pre-
vent foreign manufacturers from importing articles bearing an in-
fringing mark into the United States. See 15 U.S.C. § 1124
.
The process of trademark registration required Polygroup
Macau to “deliberately engage[] in significant activities” within the
United States and “create[] continuing obligations” here. See Dia-
mond Crystal, 593 F.3d at 1268
. To register each mark, Polygroup
Macau paid a fee and filed an application with the USPTO, where
it attested to and demonstrated how the mark was used in com-
merce� in the United States. See 15 U.S.C. § 1051
(a). To maintain its
registration, Polygroup Macau must periodically file affidavits or
declarations of use or excusable nonuse of its marks in United
States commerce. 15 U.S.C. § 1058
(b)(1). And, as a foreign domicil-
iary, Polygroup Macau must appoint and be represented by an at-
torney who is licensed in the United States. See 37 C.F.R. §§ 2.11
(a),
2.32 (a)(4); see also 15 U.S.C. § 1051
(e) (authorizing service of pro-
cess on foreign domiciliaries for “proceedings affecting the mark”
with an appointed representative in the United States or the direc-
tor of the USPTO). 15
14 “Incontestability is a powerful protection” and completely forecloses certain
challenges to the mark’s validity. B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138
, 159–60 (2015); see also, e.g., Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 194
(1985);37 C.F.R. § 2.167
(d), (e) (noting requirements for in-
contestability). On April 4, 2023, Polygroup Macau filed a Declaration of In-
contestability for the SUMMER WAVES mark—which it later withdrew.
15 The Federal Circuit found a similar requirement for foreign domiciled pa-
tentees “represent[ed] an important Congressional judgment that in exchange
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22 Opinion of the Court 23-11415
And there is no explanation for Polygroup Macau’s decision
to register trademarks with the USPTO other than to seek out the
“benefits afforded by this country’s regulatory regime.” Cf. Ayla,
LLC, 11 F.4th at 982. A registered trademark in one country is “re-
garded as independent of marks registered in other countries.”
Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412
, 426–27
(2023) (collecting treaty provisions). Though international treaties
“provide[] mechanisms for trademark holders to secure trademark
protection in other countries under the domestic law of those
countries,” a trademark has a separate existence in each country
where it is registered or legally recognized as a mark. Id. at 426–27.
Polygroup Macau’s U.S. trademarks not only receive no legal pro-
tections outside of the United States—they do not legally exist out-
side of the United States. 16
At minimum, Polygroup Macau’s efforts to secure and de-
fend its property interests, exclusively recognized and protected un-
der U.S. law, serve as compelling evidence that it sought out the
benefits afforded to it by U.S. law. And Polygroup Macau has done
for obtaining the benefits of a United States patent, it is appropriate to require
foreign patentees to submit to broader jurisdiction in United States Federal
Court.” Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343, 1353
(Fed. Cir. 2002) (citing35 U.S.C. § 293
).
16 The Lanham Act, which implements international “treaties and conventions
respecting trademarks,” 15 U.S.C. § 1127
, mandates that registration of a trade-
mark in the United States “‘be independent of the registration in the country
of origin,’ and that the rights of that mark in the United States are governed
by domestic law.” Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412
, 427
(2023) (quoting 15 U.S.C. § 1126
(f)).
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23-11415 Opinion of the Court 23
more than just passively register trademarks and patents in the
United States. It has deliberately and repeatedly sought out protec-
tions by licensing and enforcing its intellectual property rights. And
it has allowed related companies and their customers to use those
marks to sell the infringing products at issue.
ii. Sale of Products in the United States
Due process does not prohibit us from exercising personal
jurisdiction over a nonresident defendant “because of its own
choices” to contract with American companies or market its prod-
ucts to U.S. residents. See SkyHop Techs., Inc., 58 F.4th at 1230
. By
registering, selling, and advertising a trademarked product in the
United States, a mark owner avails itself of the protections afforded
by the United States’ trademark protection laws and exposes itself
to potential litigation should it be accused of infringement. See, e.g.,
Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339
, 1357–58 (11th
Cir. 2013); Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158
, 165–
66 (2d. Cir. 2010); see also Beverly Hills Fan Co. v. Royal Sovereign Corp.,
21 F.3d 1558
, 1566–67 (Fed. Cir. 1994) (collecting circuit cases).
Polygroup Macau “allowed” or “permitted” its SUMMER
WAVES trademarks to be used to sell products (1) directly in the
United States through Polygroup Services; and (2) indirectly
through other Polygroup companies, like its subsidiary Polygroup
MCO, selling SUMMER WAVES products overseas to global retail-
ers that later imported them into the country. Polygroup Macau
has also entered into several written licensing agreements and as-
signments for its other trademarks and patents with U.S. companies
USCA11 Case: 23-11415 Document: 40-1 Date Filed: 06/10/2025 Page: 24 of 41
24 Opinion of the Court 23-11415
and retailers. Through both sales channels, Polygroup sold hun-
dreds of different SUMMER WAVES-branded products through
dozens of major U.S. retailers.
As an initial matter, both categories of sales are relevant. It
does not matter whether a foreign manufacturer sells its products
directly to consumers in the forum, or indirectly through a subsid-
iary, licensee, or independent distributor. See, e.g., Ford Motor Co.,
592 U.S. at 363–65; Daimler AG, 571 U.S. at 135
n.13; Cable/Home
Commc’n Corp. v. Network Prods., 902 F.2d 829
, 858 (11th Cir. 1990).
“If International Shoe stands for anything it is that a truly interstate
or international business may not shield itself from suit by a careful
but formalistic structuring of its business dealings.” Vermeulen v. Re-
nault, U.S.A., Inc., 985 F.2d 1534, 1548
(11th Cir. 1993) (quotation
marks omitted and alterations adopted). Jurisdiction is proper so
long as the foreign defendant, through its business partners, “made
deliberate decisions to market their products in [a] forum state,”
and either “indirectly derived substantial benefit from the forum
state or had a reasonable expectation of doing so.” Max Daetwyler
Corp. v. R. Meyer, 762 F.2d 290
, 299–300 (3d Cir. 1985).
Using Polygroup Macau’s registered trademarks, the “Poly-
group® family of companies” heavily markets its products to
United States consumers. Polygroup’s website shows that its prod-
ucts were “clearly calculated” to reach the U.S. market. Though
Polygroup’s website tells consumers they can “find Polygroup®
products at most major retailers around the world,” American re-
tailers are some of the first listed on its dedicated Retail Partners
USCA11 Case: 23-11415 Document: 40-1 Date Filed: 06/10/2025 Page: 25 of 41
23-11415 Opinion of the Court 25
page. It has sold hundreds of SUMMER WAVES-branded products
to U.S. residents through these major retailers.
But Polygroup Macau maintains that it exercised no control
over the marketing, selling, importing, and distributing of the in-
fringing products in the United States by the other Polygroup enti-
ties. Although the district court characterized Polygroup Macau’s
use of the SUMMER WAVES marks as “licensing,” the parties exe-
cuted no formal agreements, and Polygroup Macau received no
royalties for the marks’ use. Jekyll Island argues that this shows an
even closer relationship between the two Polygroup companies;
Polygroup Macau argues that it shows the opposite.
A business relationship has the “necessary ingredients for an
exercise of jurisdiction” so long as the entities “acting in consort,
placed the [injury-causing product] in the stream of commerce,
they knew the likely destination of the products, and their conduct
and connections with the forum state were such that they should
reasonably have anticipated being brought into court there.” Bev-
erly Hills Fan, 21 F.3d at 1566
. We must take a “‘highly realistic ap-
proach’ that focuses on the substance of the transaction: prior ne-
gotiations, contemplated future consequences, the terms of the
contract, and the actual course of dealing.” Diamond Crystal, 593 F.3d at 1268
(citing Burger King,471 U.S. at 479
).
For example, when a “resident corporation acts on behalf of
[its] foreign affiliates,” the court may extend jurisdiction to the for-
eign affiliate if the affiliated domestic corporation “manifests no
separate corporate interests of its own and functions solely to
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26 Opinion of the Court 23-11415
achieve the purpose of the dominant corporation.” Meier ex rel.
Meier v. Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1273
(11th Cir. 2002).
Federal courts “consistently acknowledge[]” that courts may exer-
cise personal jurisdiction over foreign corporation, based on the
contacts of its resident corporation “alter ego.” United States ex rel.
v. Mortg. Invs. Corp., 987 F.3d 1340, 1355
(11th Cir. 2021) (quoting
Patin v. Thoroughbred Power Boats Inc., 294 F.3d 640, 653
(5th Cir.
2002)); see also Newport News Holdings Corp. v. Virtual City Vision, Inc.,
650 F.3d 423
, 433–34 (4th Cir. 2011) (collecting cases). “The theory
underlying these cases is that, because the two corporations (or the
corporation and its individual alter ego) are the same entity, the ju-
risdictional contacts of one are the jurisdictional contacts of the
other for the purposes of the . . . due process analysis.” Mortg. Invs.
Corp., 987 F.3d at 1355
(quotation marks omitted).
We have upheld this approach to assessing business relation-
ships “under the stricter standard of general jurisdiction.” Consol.
Dev. Corp., 216 F.3d at 1292
. In Meier, we found personal jurisdiction
over foreign corporations whose “financial ties” with their local
subsidiaries “suggest[ed] a relationship far beyond service con-
tracts.” 288 F.3d at 1273
. The companies shared bank accounts, paid
for advertising and other expenses, and the subsidiaries “did not un-
dertake any business activity for anyone” other than the parent
company. Id.
Looking to Meier in Stubbs v. Wyndham Nassau Resort
& Crystal Palace Casino, we asserted general jurisdiction over a for-
eign corporation that “engaged in substantial and not isolated ac-
tivity” within the forum state through both “direct contacts” with
the forum and “indirect contacts” through an affiliated in-state
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23-11415 Opinion of the Court 27
entity. 447 F.3d 1357, 1363
(11th Cir. 2006). The local entity not only
“operate[d] solely” as the foreign company’s advertising and book-
ing company, but the foreign defendant maintained “numerous
separate commercial relationships” of its own in the forum with
lawyers, insurance brokers, and vendors. Id. at 1362
.
Even an arm’s length intellectual property licensing agree-
ment with a party that “resides or regularly does business in the
forum” may support a finding of minimum contacts. New World
Int’l, Inc. v. Ford Glob. Techs., LLC, 859 F.3d 1032, 1038
(Fed. Cir.
2017). Like other contracts, this requires close examination of the
terms of the license agreement. Breckenridge Pharm., Inc. v. Metabo-
lite Lab’ys, Inc., 444 F.3d 1356, 1366
(Fed. Cir. 2006). Specific juris-
diction may not arise solely from a licensor signing a non-exclusive
contract with third parties to sell allegedly infringing products in
the forum state. Diece-Lisa Indus., Inc. v. Disney Enters., Inc., 943 F.3d 239
, 253 (5th Cir. 2019).
Jurisdiction requires something more in the terms of the
agreement or course of dealing that connects the defendant to the
jurisdiction. Diamond Crystal, 593 F.3d at 1268–69. Such acts include
where the licensor and licensee coordinate in litigating infringe-
ment claims in the forum and are often represented jointly by coun-
sel and whether the licensing agreement creates continuing obliga-
tions for the licensor in the forum state. Breckenridge Pharm., Inc.,
444 F.3d at 1363–67. 17 In short, the license agreement must have
17 Before the Supreme Court’s 2021 decision in Ford, the Federal Circuit took
a narrower view of when a defendant’s licensing activities could subject it to
USCA11 Case: 23-11415 Document: 40-1 Date Filed: 06/10/2025 Page: 28 of 41
28 Opinion of the Court 23-11415
“not only contemplated an ongoing relationship” beyond royalty
payments but “actually resulted in such a relationship.” Id. at 1367.
Taking the “highly realistic approach” required by Burger
King, we find that Polygroup Macau purposefully availed itself of
the U.S. market through both its “direct contacts” with the forum
and “indirect contacts” through its relationship with the other Pol-
ygroup entities. Stubbs, 447 F.3d at 1362–63. Polygroup Macau
“made deliberate decisions” to register trademarks in the United
States for its sister companies to use, and in turn its sister compa-
nies’ use allowed Polygroup Macau to obtain “substantial bene-
fit[s]” afforded to it by United States trademark laws. See Max
Daetwyler, 762 F.2d at 299–300.
Whether based on implied contract or corporate alter ego,
Polygroup Macau’s “ties” with Polygroup Services and Polygroup
MCO suggest “a relationship far beyond service contracts.” Meier,
288 F.3d at 1273
. By granting its sister companies unfettered access
to its marks to sell products in the United States, Polygroup Macau
knew or should have known the consequences could include po-
tential trademark infringement liability and cancellation.
personal jurisdiction, often limiting it to relationships with exclusive licensees.
See Trimble, 997 F.3d at 1156
. Many other circuits applied this approach. See,
e.g., Diece-Lisa Indus., Inc. v. Disney Enters., Inc., 943 F.3d 239
, 253 (5th Cir.
2019). But the Federal Circuit recognized that, after Ford, “a broad set of a de-
fendant’s contacts with a forum are relevant to the minimum contacts analy-
sis,” and nonexclusive licenses may serve as evidence of broader efforts to ex-
ploit a market. Trimble, 997 F.3d at 1156
.
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23-11415 Opinion of the Court 29
Though the corporate form in this case is opposite from that
in Meier and Stubbs, where a local entity “operate[s] solely” on the
foreign company’s behalf, the substance of the relationship is the
same. Polygroup Macau’s characterization of its business activities
suggest its “separate corporate status is formal only and without
any semblance of individual identity.” Mortg. Invs. Corp., 987 F.3d at 1355
(quoting Stubbs,447 F.3d at 1272
). In its own words, its “only
role within the group of related Polygroup companies is holding
certain intellectual property assets . . . and making these assets
available for use by other related Polygroup Companies.” [Inter-
rog. No. 23]
The Polygroup companies “conduct business in the United
States” through Polygroup Services. Polygroup Services employees
have signed agreements in the United States on Polygroup Macau’s
behalf, and were involved in trademark registration, licensing, mar-
keting, and litigation decisions. Polygroup Services in turn sold
products in the United States using Polygroup Macau’s marks and
“establish[ed] channels for providing regular advice to customers in
the [United States]” for products bearing Polygroup Macau’s
marks. See Asahi, 480 U.S. at 112
.
At the very least, Polygroup Macau’s “licensing” arrange-
ments with its sister companies go well “beyond the receipt of roy-
alty income.” Breckenridge Pharm., Inc., 444 F.3d at 1366
. In fact,
there is no royalty income to speak of. The other Polygroup entities
not only sell products under the SUMMER WAVES marks in the
United States without paying for them, but they pay for Polygroup
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30 Opinion of the Court 23-11415
Macau’s U.S. trademark registrations and litigation and are often
represented jointly by in-house and external counsel.
Still, Polygroup Macau maintains that it lacks any significant
control, oversight, or involvement in the use of the SUMMER
WAVES trademarks in U.S. commerce. But the mechanics of trade-
mark registration and licensing show that Polygroup Macau should
“reasonably have anticipated” being brought into court for how the
related Polygroup entities use its marks. Beverly Hills Fan Co., 21 F.3d at 1566
.
Polygroup Macau registered the three SUMMER WAVES
marks under Lanham Act § 1(a), the filing basis for marks that are
already used in commerce. See 15 U.S.C. § 1051
(a); Trademark Man-
ual of Examining Procedure (TMEP) §§ 806.01(a), 901 (Nov. 2024). To
register, USPTO regulations required Polygroup Macau to verify
in an affidavit or declaration that the marks were used in commerce
on or in connection with the goods or services in the application,
provide the dates the mark was first used in commerce, and submit
a “specimen” showing how the mark is used in commerce. See 37 C.F.R. §§ 2.2
(k)(1), 2.34(a); TMEP §§ 904–904.07(b), 1301.04. Poly-
group Macau completed this process for the three SUMMER
WAVES marks and dozens of others, despite having never sold
products in the United States.
On the SUMMER WAVES trademark applications, as the
CEO of Polygroup Macau, Lewis Cheng attested that Polygroup
Macau, its “related company,” or a “controlled licensee” was using
the mark “in commerce on or in connection with the goods or
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23-11415 Opinion of the Court 31
services in the application.” 18 Because Polygroup Macau was not
using those marks itself, it is safe to assume that it not only knew
the other Polygroup companies were using them but relied on this
use to obtain and maintain its trademark rights. As a trademark
owner, Polygroup Macau has a duty to supervise third-party use of
its trademark, or risk having its mark cancelled. See 15 U.S.C. § 1064
(5)(A); Mini Maid Servs. Co. v. Maid Brigade Sys., Inc.,967 F.2d 1516, 1519
(11th Cir. 1992). The “related company” provision rec-
ognizes the “inherent” nature of certain entity relationships may
presume that the mark owner is adequately controlling the nature
and quality of goods sold by the related company, “without the
need for a license or other agreement.” Furnishings v. Enterprises,
118 U.S.P.Q.2d 1413
(T.T.A.B. 2016).
So if we take Polygroup Macau at its word that it does not
sell products using the SUMMER WAVES marks, we are left with
three possible conclusions: (1) Polygroup Macau lied to the USPTO
and did not make the required use of its marks in commerce;
(2) Polygroup Macau has some control over the other Polygroup en-
tities’ use of the marks, even without a formal agreement; or
(3) Polygroup Macau is exercising no control over the marks’ use
whatsoever and risks having them cancelled. See 15 U.S.C. § 1064
(5)(A). The first is the basis of Jekyll Island’s cancellation
claim. The third seems unlikely, given that Polygroup Macau exists
18 The USPTO does not require an application to specify whether the applied-
for mark is being used by the applicant or by one or more related companies.
See, e.g., Furnishings v. Enterprises, 118 U.S.P.Q.2d 1413
(T.T.A.B. 2016).
USCA11 Case: 23-11415 Document: 40-1 Date Filed: 06/10/2025 Page: 32 of 41
32 Opinion of the Court 23-11415
solely to hold intellectual property. That leaves us with the most
likely scenario—Polygroup Macau exercises a certain level of con-
trol over the use of the marks by its sister companies, even without
a formal agreement. At minimum, because Polygroup Macau’s
U.S. trademark registrations and continued protections depend on
the marks’ use in U.S. commerce, and Polygroup Macau does not
use the marks itself, it should have known that they would be used
in United States commerce by related Polygroup companies. See
World-Wide Volkswagen, 444 U.S. at 297
.
In sum, we find that Polygroup Macau’s contacts “taken col-
lectively,” Del Valle, 56 F.4th at 1277
, establish that it has “continu-
ously and deliberately exploited” the United States market, Keeton
v. Hustler Mag., Inc., 465 U.S. 770, 781
(1984). As Polygroup Macau
enjoyed the “benefits and protection” of the United States’ laws to
secure and defend its intellectual property, enforce its licensing
agreements, and secure effective markets for its products, it must
answer in U.S. courts for related harms. Ford Motor Co., 592 U.S. at
367–68.
B. Relationship Between Polygroup Macau’s Contacts &
Jekyll Island’s Claims
We turn now to whether Jekyll Island’s claims “arise out of
or relate to” Polygroup Macau’s contacts with the United States.
Ford Motor Co., 592 U.S. at 361–62 (emphasis omitted). The “first
half of that standard asks about causation; but the back half, after
the ‘or,’ contemplates that some relationships will support jurisdic-
tion without a causal showing.” Id. at 362.
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23-11415 Opinion of the Court 33
The district court focused on the “first half,” concluding it
lacked personal jurisdiction over Polygroup Macau because of “the
attenuated causal connection” or lack of “substantial causal rela-
tionship” between Polygroup Macau’s registration and licensing of
the SUMMER WAVES marks in the United States and Jekyll Island’s
infringement claims. The court asserted that “[a]t minimum, for a
suit to arise out of or be related to a contact, ‘the contact must be
a ‘but-for’ cause of the tort.’” 2023 WL 2632813
, at *7 (quoting Fra-
ser v. Smith, 594 F.3d 842, 850
(11th Cir. 2010)). And, it reasoned,
that because trademark infringement and unfair competition
claims require use in commerce, the other companies’ use of Poly-
group Macau’s SUMMER WAVES marks was the “direct logical
precedent” to Jekyll Island’s claims—not Polygroup Macau’s regis-
tration or licensing of an infringing mark. Id.
at *9–11.
On appeal, both parties recognize that the district court’s
strict “but-for causation” standard was erroneous. 19 Shortly after
19 Polygroup Macau argues instead that Jekyll Island invited the district court’s
error. We are not convinced. “The invited error doctrine stands for the com-
mon sense proposition that someone who invites a court down the primrose
path to error should not be heard to complain that the court accepted its invi-
tation and went down that path.” Doe v. Princess Cruise Lines, Ltd., 657 F.3d 1204, 1213
(11th Cir. 2011). We have “traditionally construed invited errors
narrowly, so as to preserve the opportunity for appellate review in close
cases.” United States v. Burnette, 65 F.4th 591
, 600–01 (11th Cir. 2023).
Polygroup Macau does not point to “unambiguous statements or representa-
tions” by Jekyll Island inviting the district court to apply a strictly but-for stand-
ard. See Cherry v. Dometic Corp., 986 F.3d 1296, 1301
(11th Cir. 2021). And the
misapplication of newly abrogated precedent is not the sort of “textbook” case
in which we have applied the invited error doctrine. See, e.g., United States v.
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34 Opinion of the Court 23-11415
the parties began litigating, the Supreme Court expressly de-
nounced this approach, clarifying that it has “never framed the spe-
cific jurisdiction inquiry as always requiring proof of causation—
i.e., proof that the plaintiff’s claim came about because of the de-
fendant’s in-state conduct.” Ford Motor Co., 592 U.S. at 362. “None
of [the Court’s] precedents has suggested that only a strict causal
relationship between the defendant’s in-state activity and the litiga-
tion will do.” Id.
In Ford, Montana and Minnesota residents sued Ford in their
respective states, alleging that defective Ford vehicles injured them.
Id. at 356. Ford argued that the plaintiffs’ claims did not arise out of
or relate to Ford’s contacts in those states because Ford did not de-
sign, manufacture, or sell the injury-causing vehicles in either state.
Id. Instead, the “company sold the specific cars involved in these
crashes outside the forum States, with consumers later selling them
to the States’ residents.” Id. at 366.
The Supreme Court disagreed, finding “the case is not over
even if, as Ford argues, a causal test would put jurisdiction in only
the States of first sale, manufacture, and design.” Id. at 362. Rather
Maradiaga, 987 F.3d 1315, 1322
(11th Cir. 2021) (jury instruction language); In
re Bayshore Ford Trucks Sales, Inc., 471 F.3d 1233, 1249
(11th Cir. 2006) (waiving
personal jurisdiction). Federal courts must apply the correct legal standard,
regardless of the interpretations advanced by parties. See, e.g., Kamen v. Kemper
Fin. Servs., Inc., 500 U.S. 90, 99
(1991); cf. United States v. Duldulao,87 F.4th 1239, 1255
(11th Cir. 2023) (recognizing exception to invited error doctrine
where a party “relied on settled law that changed while the case was on ap-
peal”).
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23-11415 Opinion of the Court 35
than focus on the contacts related to the specific vehicles, the Court
focused on the broader efforts by Ford to sell similar vehicles in
each state. Id.
Ford’s “veritable truckload of contacts” with the two
states—while not directly related to the underlying suit—were still
“relevant in assessing the link between the defendant’s forum con-
tacts and the plaintiff’s suit.” Id. at 371. The Court emphasized
Ford’s extensive marketing of those models in the forum states
through “billboards, TV and radio spots, print ads, and direct mail”
and its efforts to maintain, service, and repair those models in those
states. Id. at 365.
Dispensing with the need to show a strictly “causal relation-
ship,” we find that Polygroup Macau’s relevant contacts with the
United States establish a “strong ‘relationship among the defend-
ant, the forum, and the litigation’” to support the court’s exercise
of personal jurisdiction in this case. Id. (quoting Helicopteros Nacion-
ales de Colombia, S.A. v. Hall, 466 U.S. 408, 414
(1984)). The relevant
contacts here are Polygroup Macau’s “own choices” to register
trademarks with the USPTO, rely on its affiliated companies’ use
of those marks in U.S. commerce to obtain trademark protection,
and to license and enforce its trademark rights in U.S. courts.
SkyHop Techs, 58 F.4th at 1230
. And these contacts of obtaining and
defending dozens of U.S. trademarks share a common link with the
litigation before us: Jekyll Island’s claims for trademark infringe-
ment, unfair competition, and cancellation under the Lanham Act.
Begin with Jekyll Island’s cancellation for fraud claim under
15 U.S.C § 1119. To help remedy trademark violations, a district
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36 Opinion of the Court 23-11415
court may cancel a federally registered trademark if a plaintiff
shows (1) it is likely to be damaged by the infringer’s continued use
of the infringing mark, and (2) that there were valid grounds for
discontinuing registration. See PlayNation Play Sys., Inc. v. Velex
Corp., 924 F.3d 1159, 1171
(11th Cir. 2019). A party may petition to
cancel a registered mark by alleging the registration was obtained
fraudulently. See 15 U.S.C. § 1064
(3). “Fraud occurs when an appli-
cant knowingly makes false, material representations of fact in con-
nection with an application for a registered mark.” Angel Flight of
Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1209
(11th Cir. 2008).
Jekyll Island’s trademark cancellation claim arises directly
from an “activity or an occurrence that takes place in the forum
State and is therefore subject to the State’s regulation.” SkyHop
Techs., Inc., 58 F.4th at 1229
(quotation marks omitted). Polygroup
Macau chose to register its SUMMER WAVES trademarks in the
United States, and in the process, it made the required declarations
and demonstrations of the marks’ use in commerce. As Jekyll Is-
land alleges the same declarations were false and material to the
USPTO’s decision to approve the registrations, the claim arises di-
rectly out of Polygroup Macau’s purposeful efforts to secure a U.S.
property interest.
The relationship to Jekyll Island’s infringement and unfair
competition claims is less direct, but still “close enough to support
specific jurisdiction.” Ford Motor Co., 592 U.S. at 371. Both the in-
fringement and unfair competition provisions of the Lanham Act
prohibit the unauthorized use “in commerce” of a protected
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23-11415 Opinion of the Court 37
trademark when that use “is likely to cause confusion” as to the
source, origin, or sponsorship of goods. 15 U.S.C. §§ 1114
(1)(a),
1125(a)(1). Polygroup Macau argues that there is “good reason” to
hesitate before “equating trademark registration with the availabil-
ity of nationwide personal jurisdiction over a foreign registrant”
because trademark-infringement and unfair-competition claims
turn on the use of a trademark in commerce, not registration or
licensing. This argument is unavailing for two related reasons.
First, use in commerce is a prerequisite to registration. Pol-
ygroup Macau could not have registered its trademarks without
demonstrating how it, a related company, or a controlled licensee
uses the mark in commerce. See 15 U.S.C. §§ 1051
(a)(1), 1055; B &
B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138
, 143 (2015) (“The
usages listed in the application—i.e., those goods on which the
mark appears along with, if applicable, their channels of distribu-
tion—are critical.”). As Polygroup Macau maintains that it did not
use the SUMMER WAVES marks in commerce, it could not have
acquired and maintained its trademarks rights without attesting to
and proving use in commerce by other “related” Polygroup com-
panies or controlled licensees. See 15 U.S.C. §§ 1055
, 1127. Poly-
group Macau may not have used the marks, but it relied on that
use to obtain its trademark rights.
Second, “the kind of ‘use’” Polygroup Macau needed to
show to acquire registerable trademark rights is narrower than the
use required to infringe them. See N. Am. Med. Corp. v. Axiom World-
wide, Inc., 522 F.3d 1211
, 1220 n.7 (11th Cir. 2008). For a trademark
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38 Opinion of the Court 23-11415
to qualify as “used in commerce” for registration purposes, the
mark must be “placed in any manner on the goods or their contain-
ers or the displays associated therewith or on the tags or labels af-
fixed thereto.” See 15 U.S.C. § 1127
(noting its definitions apply “un-
less the contrary is plainly apparent from the context”). By con-
trast, infringement under § 1114(1) merely requires a use “in con-
nection with the sale, offering for sale, distributing, or advertising
of any goods.” See N. Am. Med. Corp., 522 F.3d at 1220 n.7.
Under the infringement and unfair competition provisions,
“use in commerce” includes not just sale of infringing goods but
“any marketing, advertising, and distributing activities.” See
Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 99 F.4th 1150, 1167
(10th Cir. 2024) (citing15 U.S.C. §§ 1114
(1)(a), 1125(a)(1)). And the
Supreme Court “has long recognized” that liability for trademark
infringement “‘can extend beyond those who actually mislabel
goods’” to those who knowingly assist or participate in infringing
activities. Duty Free Americas, Inc. v. Estee Lauder Cos., Inc., 797 F.3d 1248, 1274
(11th Cir. 2015) (quoting Inwood Lab’ys, Inc. v. Ives Lab’ys,
Inc., 456 U.S. 844, 853
(1982)). By obtaining a property right in the
United States that required it to demonstrate how the mark was
used in commerce, allowing its sister companies unfettered access
to use its marks, and relying on their use to maintain its trademark
rights, Polygroup Macau should “reasonably anticipate” having to
answer in U.S. courts for infringing uses of those marks by its sister
companies. See Ford Motor Co., 592 U.S. at 364.
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23-11415 Opinion of the Court 39
C. Fairness
Our third and final inquiry asks whether the exercise of ju-
risdiction in the United States accords with “traditional notions of
fair play and substantial justice.” SkyHop Techs., 58 F.4th at 1231
(quotation marks omitted). We consider the burden on the defend-
ant, the forum’s interest in adjudicating the dispute, the plaintiff’s
interest in obtaining relief, and the judicial system’s shared interest
in resolving the dispute. Del Valle, 56 F. 4th at 1277
.
Because modern transportation and communications have
made it much less burdensome for a party sued to defend himself
in a forum where he engages in economic activity, it usually will
not be unfair to subject him to the burdens of litigating in another
forum for disputes relating to such activity. See World-Wide
Volkswagen, 444 U.S. at 293
. It is fair and reasonable to require Poly-
group Macau to respond in federal court in the United States,
where Polygroup Macau registered its trademarks and attested to
their use in commerce. Polygroup Macau’s asserted burden is
slight, especially when weighed against the fact that a U.S. court is
the only forum that could resolve a U.S. trademark dispute.
Polygroup Macau “has shown its familiarity with the United
States administrative and legal process” by maintaining its substan-
tial portfolio of patents and trademarks with the USPTO and en-
gaging in litigation throughout the United States as a plaintiff and
a defendant. Cf. Tobin v. Astra Pharm. Prods., Inc., 993 F.2d 528, 545
(6th Cir. 1993). Though this prior activity does not “lessen the bur-
den” on Polygroup Macau, it does indicate that Polygroup Macau
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40 Opinion of the Court 23-11415
“will not be lost in our complex legal system” and “shows a will-
ingness . . . to expend substantial resources to exploit the United
States market.” Id.
We see no unfairness in requiring Polygroup Macau to liti-
gate in Georgia. Polygroup Macau’s general counsel is barred in
Georgia and the firm it has used as outside counsel for several dec-
ades is headquartered in Atlanta. And it has a sister entity headquar-
tered in the United States that has done business on its behalf and
funds any infringement litigation arising out of the use of its trade-
marks in the United States.
On the other hand, the United States has a “significant inter-
est” in providing its residents with a convenient forum for redress-
ing injuries inflicted by out-of-state actors. Hustler Magazine, Inc.,
465 U.S. at 776
. As owners of U.S. trademarks, both parties have a
legally protected interest in the subject matter under U.S. law. And
the United States has an interest in being the final arbiter on trade-
mark rights, ownership, and infringement within its borders. Nei-
ther trademark legally exists outside of the United States nor re-
ceives protections outside of the United States.
Finally, allowing the court to resolve the claim against Poly-
group Macau and potentially “stop the infringement from the
source” protects Jekyll Island’s interest in avoiding multiple suits
concerning the same basic facts against Polygroup Macau’s various
“licensees” and the public interest in efficiently using judicial re-
sources.
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23-11415 Opinion of the Court 41
Considering the strong interest of the United States in re-
solving disputes about property interests that exist exclusively
within its borders, Polygroup Macau has not made the “compelling
case” that the exercise of jurisdiction is improper. See Louis Vuitton,
736 F.3d at 1355
(quotation marks omitted). And it is in the best
interest of Jekyll Island, the United States, and U.S. courts to resolve
this dispute efficiently in the only forum that can hear it.
IV. Conclusion
While Polygroup Macau seeks all the benefits of United
States law to protect its intellectual property, it attempts to use its
corporate structure to avoid accountability when it violates the
rights of others. But Polygroup Macau’s acknowledgment of
United States law cannot depend on its status as a plaintiff or de-
fendant. And it certainly may not wield the Due Process Clause “to
avoid interstate obligations” it has “voluntarily assumed.” Burger
King Corp., 471 U.S. at 474
.
We REVERSE the district court’s dismissal for lack of per-
sonal jurisdiction over Polygroup Macau and REMAND for consid-
eration of Jekyll Island’s claims on the merits.