In the case of A. Bourjois & Company, Inc. v. Katzel (1922), the U.S Supreme Court ruled in favor of A. Bourjois & Company, a perfume company that had registered its trademark in the United States before it was registered by Katzel, another perfume company operating out of Canada and importing into the US market under an identical mark. The court held that even though Katzel used this trademark first internationally, because they did not register it within America prior to Bourjois doing so; their claim was invalid on American soil. The decision established a precedent for how trademarks are protected under U.S law - giving priority to those who first use them domestically over those who may have used them earlier abroad but failed to register them promptly upon entering the US market.

In the dissenting opinion for A. Bourjous & Company, Inc. v. Katzel (1922), Justice Holmes argued that the majority's decision was inconsistent with prior rulings and failed to consider important aspects of trademark law. He contended that a foreign company should not be able to prevent an American company from using a similar mark in the United States simply because they had registered it first abroad, especially when there was no evidence of intent to deceive or cause confusion among consumers. Furthermore, he believed that allowing such broad protection could potentially stifle competition and innovation by giving foreign companies undue control over domestic markets.