## Facts

- American Rice, Inc. (ARI), a Texas rice marketer and exporter, sold extensively in Saudi Arabia and held U.S. registrations for the “Abu Bint” mark and a “girl” design used on rice bags since the 1960s.
- ARI’s attempt to register “Abu Bint” in Saudi Arabia was unsuccessful.
- Arkansas Rice Growers Cooperative Association (Riceland), a U.S. cooperative, entered the Saudi market using rice bag designs of similar overall appearance and adopted brands and imagery including “Abu Binten,” “Bint al-Arab,” and “Gulf Girl,” with similar layout and female-figure depictions.
- A Saudi merchant associated with Riceland registered “Bint al-Arab” in Saudi Arabia; Saudi law allowed certain prior users to continue use, but the right was personal and nontransferable.
- ARI presented evidence of actual confusion in Saudi Arabia among consumers and intermediaries, who mistook Riceland’s products for ARI’s “Abu Bint” rice.
- ARI sued in federal court under the Lanham Act, seeking to enjoin Riceland’s allegedly infringing sales and packaging used in Saudi Arabia.

## Issues

1. Whether the Lanham Act could be applied extraterritorially to enjoin a U.S. company’s allegedly infringing trademark and trade dress use in Saudi Arabia.
2. Whether ARI satisfied the requirements for a Lanham Act preliminary injunction, including likelihood of success and irreparable injury.
3. Whether Saudi trademark law and a Saudi registration by a third party required denial of U.S. injunctive relief on comity or conflict-of-laws grounds.

## Decision

- The Fifth Circuit affirmed the preliminary injunction.
- The court held that the Lanham Act could reach Riceland’s Saudi conduct given the U.S. parties and the effect on U.S. commerce and goodwill.
- The court found no abuse of discretion in the district court’s determinations of likely success, irreparable harm, and equitable factors.
- The court concluded that the Saudi registration and Saudi trademark rules did not create a conflict sufficient to bar relief, particularly because any continuing-use right was personal and did not establish a superior, transferable right in Riceland.

## Legal Principles

- The Lanham Act may apply to foreign conduct when the defendant is a U.S. entity, the conduct has a substantial effect on U.S. commerce (including export trade and U.S.-based goodwill), and applying U.S. law does not create a serious conflict with foreign law.
- Preliminary injunctive relief under the Lanham Act requires: (1) likelihood of success on the merits, (2) threat of irreparable injury, (3) balance of hardships favoring the movant, and (4) no disservice to the public interest; strong evidence of likely confusion can support irreparable harm in trademark cases.
- A foreign trademark registration held by a third party does not automatically defeat Lanham Act relief where it does not confer clearly superior rights on the defendant and the injunction operates on the U.S. defendant rather than the foreign sovereign.

## Conclusion

The Fifth Circuit upheld a preliminary injunction prohibiting a U.S. rice exporter from using confusingly similar marks and trade dress in Saudi Arabia, confirming that the Lanham Act can reach foreign sales by U.S. entities when U.S. commerce and goodwill are affected and foreign-law conflict concerns are not compelling.


American Rice, Inc. v. Arkansas Rice Growers Coop. Ass’n, 701 F.2d 408 (5th Cir. 1983)