trademark and territorial principle

8/18/2019 Trademark and Territorial Principle

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The famous marks exception to the territorialityprinciple in American trademark law.Link/Page CitationINT!"#CTI!N

!$er the course of thirty years of continuous operation% a restaurant named &'ukhara& in New "elhi%India% de$elops a reputation as one of the world(s finest restaurants. )*+ The restaurant ,ecomesfamous throughout much of the world% and the restaurant(s owners decide to open se$eral additional'ukhara restaurants outside of India. )-+ eanwhile% fi$e indi$iduals in New ork% familiar with thefamous 'ukhara restaurant in New "elhi% decide to open an Indian restaurant in New ork called&'ukhara 0rill.& )1+ The New ork restaurateurs% in addition to choosing a similar name for their restaurant% also replicate the New "elhi restaurant(s logos% decor% staff uniforms% menus% and red2checkered ,i,s. )3+ The owners of the New ork 'ukhara 0rill admit they chose their restaurant(sname% at least in part% due to the recognition of the &'ukhara& mark among the rele$ant population inNew ork familiar with the New "elhi restaurant. )4+ The owners of the New "elhi 'ukhara restaurantdo not operate any restaurants in the #nited 5tates% and they do not currently ha$e the 'ukhara markregistered with the #nited 5tates Patent and Trademark !ffice )PT!&+. )6+ Can the owners of the

New "elhi 'ukhara restaurant assert any su,stanti$e rights in #.5. courts to en7oin the owners of theNew ork 'ukhara 0rill from infringing its famous trademark8

#nder Article 4,is of the Paris Con$ention for the Protection of Industrial Property )the &ParisCon$ention&+ and Article 94)*+ of the Agreement on Trade2elated Aspects of Intellectual Propertyights )&TIP5&+% international treaties to which the #nited 5tates is a signatory% the &famous marks&doctrine might preclude the New ork restaurateurs( use of the 'ukhara mark in the situationdescri,ed a,o$e. ):+ #nder the famous marks doctrine% &;i+ 'ut a ma7ority of #.5. courts ha$e held that the ParisCon$ention is not self2executing and cannot form the ,asis of a claim in federal court a,sent federallegislation gi$ing effect to its articles. )9?+ Congress codified federal trademark law with the Lanham Act in 9>14% )99+ and the Ninth Circuit and the 5econd Circuit are currently split as to whether theLanham Act recogni=es the famous marks doctrine. )9*+

!ne important reason why Congress might ha$e chosen not to incorporate the famous marks doctrineinto the Lanham Act is that the doctrine runs contrary to the territoriality principle of Americantrademark law. )9-+ The territoriality principle, which is basic to U.S. trademark law, (14)provides that, "a trademark is recognied as having a separate e!istence in each sovereignterritory in which it is registered or legally recognied as a mark." )93+ As such% &ownership of amark in one country does not automatically confer upon the owner the exclusi$e right to use that markin another country.& )94+ Therefore% if federal trademark law recogni=es the famous marks doctrine% itdoes so as an exception to the territorial nature of a trademark.

This Note addresses the dichotomy ,etween the famous marks doctrine and the territoriality principlein #.5. trademark law. Part I descri,es the legal ,ackground of trademarks% the territoriality principle%and the famous marks doctrine. Part I also discusses the relationship ,etween the Paris Con$ention%TIP5% and the Lanham Act. Part II examines the decisions of courts in the #nited 5tates that ha$eaddressed the famous marks doctrine% including the current split ,etween the Ninth Circuit and the5econd Circuit in their treatment of the famous marks doctrine under the Lanham Act. Part IIIdiscusses the need for a famous marks exception to the territoriality principle. Part III also considers$arious standards for determining whether a mark would @ualify as famous under the famous marksdoctrine and argues that a $ariation of the Ninth Circuit(s &secondary meaning plus& is the appropriatestandard. The secondary meaning plus standard would ,est ,alance the aims of the territorialityprinciple with the need to pre$ent consumer confusion and ensure compliance with international treatyo,ligations.

I. L0AL 'ACB0!#N" ! TD TIT!IALIT PINCIPL AN" TD A!#5 AB5"!CTIN

A trademark is &any word% name% sym,ol% or de$ice% or any com,ination thereof ... used ,y a person ...

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to identify and distinguish his or her goods ... from those manufactured or sold ,y others....& )96+ Theprimary policy underlying the law of trademarks is the interest in protecting the pu,lic from confusionand deceit. )9:+ A secondary policy 7ustification for trademark law is the trademark owner(s interest innot ha$ing &the fruit of his la,or misappropriated.& )9>+ 'ut a trademark owner(s interest in protectinghis mark from misappropriation often runs contrary to the fundamental policy of the law regulating thefree market economy22that the pu,lic ,enefits from the encouragement of free competition. )*?+ As

such% exclusi$e rights in intellectual property% including trademarks% are the exception to the generalpreference for free copying and imitation. )*9+

A. The Lanham Act

In the #nited 5tates% trademark law de$eloped as a deri$ati$e of the common law tort of fraud anddeceit during the nineteenth century. )**+ Congress first attempted to pass federal legislationpro$iding for trademark registration in 9:6?% )*-+ ,ut the 5upreme Court held thelegislation unconstitutional in $iolation of Congress(s Commerce Clause authority in 9:6>. )*1+ #nlikecopyrights and patents% the Constitution does not grant Congress exclusi$e power to regulatetrademarks. )*3+ Therefore% Congress has power to regulate trademarks only under its CommerceClause authority to &regulate Commerce with foreign Nations% and among the se$eral 5tates% and withthe Indian Tri,es.& )*4+

rom 9:6> to 9>14% Congress passed a series of statutes and amendments under its CommerceClause authority directed at regulating trademarks within the #nited 5tates% ,ut they were allinade@uate to handle the realities of commerce in a rapidly industriali=ing nation. )*6+ In response tothese inade@uacies% a committee of the Patent 5ection of the American 'ar Association together withCongressman rit= Lanham% chairman of the Douse Patent Committee dealing with trademarks%introduced a new and comprehensi$e federal trademark registration act. )*:+ The Lanham Trademark Act% which represents the codification of federal trademark law% ,ecame law in 9>14. )*>+

'. The Territoriality "octrine

#nder section -*)9+)a+ of the Lanham Act% the owner of a mark registered with the #5PT! can ,ring aci$il suit for trademark infringement against a person who used the mark without the owner(s consent.

)-?+ #nder section 1-)a+)9+)A+ of the Lanham Act% the producer of a product or ser$ice can sue aperson who uses &any word% term% name% sym,ol% or de$ice% or any com,ination thereof ... which ... islikely to cause confusion ... as to the origin% sponsorship% or appro$al of ;the producer(s< ... ser$ices.&)-9+ #nlike an infringement claim under section -*% a claim under section 1- is a$aila,le for marks notregistered with the #5PT!. )-*+ 'ut ,efore a plaintiff can show that an infringer(s use of a mark islikely to cause confusion under section 1-% he must pro$e his own right to use that mark. )--+

#nder federal trademark law% to pro$e his own right to use the mark in the #nited 5tates a plaintiff who has not registered his mark with the #5PT! must demonstrate prior use of the mark within the#nited 5tates. )-1+ Courts refer to the re@uirement of prior use in the #nited 5tates as the&territoriality& doctrine. )-3+ #nder the territoriality doctrine% &;p+ Thus% for an owner of a mark inanother country to ensure that #.5. trademark law will recogni=e his rights to the mark in the #nited5tates% he must use that mark in the #nited 5tates. )1?+ 'ut under the territoriality principle% if aforeign mark holder has not used his mark in the #nited 5tates ,efore someone else% he will not ,ea,le to assert priority rights under federal law22&e$en if a #nited 5tates competitor has knowinglyappropriated that mark for his own use.& )19+ or the most part% the territoriality principle is the ruleamong foreign nations as well. )1*+ Article 4)-+ of the Paris Con$ention pro$ides that &;a< mark dulyregistered in a country of the ;Paris< #nion shall ,e regarded as independent of marks registered in

other countries of the #nion% including the country of origin.& )1-+ Thus% each country(s mark isindependent of another(s. Courts ha$e $iewed the #nited 5tates( adherence to the Paris Con$ention

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as committing to #.5. law the territoriality doctrine as em,odied in Article 4)-+ of the Paris Con$ention.)11+

C. The Paris Con$ention% TIP5% and the amous arks "octrine

The Paris Con$ention% of which the #nited 5tates is a signatory% has o$er 99? adhering nations and is

the primary international treaty go$erning patents% trademarks% and unfair competition. )13+ Theprincipal purpose of the Paris Con$ention is to ensure that foreign nationals recei$e the sametreatment within the mem,er countries regarding patents% trademarks% and unfair competition thatthose countries pro$ide to their own citi=ens. )14+ The Paris Con$ention does not create aninternational registry for trademarks% bt adopts the territoriality principle as a general rle andprovides that "a mark e!ists only nder the laws of each so$ereign nation.& )16+

The #amos marks doctrine originated in the addition o# $rticle %bis to the &aris 'onvention in1* as an e!ception to the general rle o# territoriality in establishing priority o# se in atrademark. (4+) Under this e!ception, "a trademark or service mark is protected within a nationi# it is well known in that nation even thogh the mark is not actally sed or registered in thatnation." (4) The prpose o# $rticle %bis "is to avoid the registration and se o# a trademark,liable to create con#sion with another mark already well known in the contry o# sch

registration or se, althogh the latter wellknown mark is not, or not yet, protected in thatcontry by a registration which wold normally prevent the registration or se o# a con#lictingmark.& )3?+ Article 4,is% howe$er% does not pro$ide any criteria for determining what constitutes afamous mark. )39+ Article 4,is merely pro$ides that the &competent authority& of the nation whereprotection is sought shall decide whether a mark is &well known in that country as ,eing already themark of a person entitled to the ,enefits of ;the Paris< Con$ention and used for identical or similar goods.& )3*+

In 9>>1% President 'ill Clinton signed into law the #ruguay Agreements Act to implement the 0eneral Agreement on Tariffs and Trade )&0ATT&+. )3-+ Title E of 0ATT relates to changes in intellectualproperty law known as the Trade2elated Aspects of Intellectual Property ights )TIP5+. )31+ Articles94)*+ and 94)-+ of TIP5% like Article 4,is of the Paris Con$ention% recogni=e the famous marks

doctrine as an exception to the territoriality principle% ,ut these articles extend the reach of Article 4,isto famous marks on non2competing goods. )33+ !f particular importance% TIP5 pro$ides that% when determining whether a markis a famous mark% the competent authority shall take account of &knowledge of the trademark in therele$ant sector of the pu,lic% including knowledge in the em,er concerned which has ,een o,tainedas a result of the promotion of the trademark.& )34+ The Paris Con$ention% on the other hand% onlypro$ides that the mark ,e famous in the country where the mark holder seeks protection. )36+ Thus%under TIP5% a foreign mark owner need not pro$e that his mark is famous among the population of an entire country% ,ut only among the &rele$ant sector of the pu,lic.& )3:+

Fhile TIP5 esta,lishes where to seek e$idence of famous mark status% neither TIP5 nor Article4,is of the Paris Con$ention pro$ide any factors for determining whether a mark @ualifies as a famousmark. )3>+ As such% different nations ha$e de$eloped different standards for determining what

constitutes a famous mark. )4?+ In the #nited 5tates% courts that ha$e recogni=ed the famous marksdoctrine under federal law ha$e de$eloped different approaches for determining whether a foreignmark falls under the famous marks exception. )49+ 'ut as discussed ,elow% federal courts are di$idednot only as to the factors for determining whether a mark is a famous mark% ,ut also as to whether federal law actually recogni=es a famous marks exception to the territoriality doctrine.

II. A!#5 AB5 CA5 LAF IN TD #NIT" 5TAT5

A. 5tate Common Law

Although the famous marks doctrine has existed since the introduction of Article 4,is of the Paris

Con$ention in 9>*3% there has ,een $ery little case law addressing the doctrine in federal courts in the#nited 5tates until the past decade. Prior to this past decade% the most nota,le cases dealing with the

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famous marks doctrine were trial court decisions from New ork in common law unfair competitionactions. )4*+ In aison Prunier $. Prunier(s estaurant G Cafe% Inc.% )4-+ a rench corporation soughtto en7oin the defendant(s operation of a restaurant in New ork City that utili=ed the same name as theplaintiff(s restaurants in Paris and London. )41+ In 9:6*% Alfred Prunier founded a seafood restaurantin Paris under the name &Prunier.& )43+ Prunier later opened a second Prunier restaurant in Paris% andthe ownership and management of the two Paris restaurants passed down through the family until

9>**% when the plaintiff corporation ,ought the restaurants. )44+ In 9>-3% the plaintiff esta,lished a,ranch Prunier restaurant in London. )46+ The Prunier restaurants de$eloped international fame for their @uality and wide $ariety of seafood. )4:+

Also in 9>-3% the defendants% without the permission of the rench plaintiff% opened a restaurant inNew ork named &Prunier(s estaurant and Cafe.& )4>+ In addition to taking the name of the famousrench restaurant% the defendants also adopted the rench restaurant(s slogan% &Tout ce @ui $ient delaw mer%& )6?+ and ad$ertised itself as &The amous rench 5ea ood estaurant.& )69+ Thedefendants admitted that they chose the name intentionally ,ecause of the good will and reputation of the plaintiff(s restaurants in Paris and London% ,ut they nonetheless argued that they ne$er heldthemsel$es out as actually ,eing associated with the rench Prunier(s restaurants. )6*+ The courtultimately found for the plaintiff corporation% e$en though the rench corporation had ne$er operated arestaurant in the #nited 5tates. )6-+

The court recogni=ed the rench plaintiff(s right to sue in New ork under Article 9?,is of the ParisCon$ention% which re@uires mem,er states to &assure to the mem,ers of the #nion an effecti$eprotection against unfair competition.& )61+ The court also recogni=ed the principle of territoriality% ,utfound that an exception to the territoriality principle exists where a second user is guilty of &,ad faith.&)63+ In determining whether a second user is guilty of ,ad faith% the court held that the mark(s fame isa factor. )64+ The rench Prunier restaurant was famous internationally% and it was entitled toprotection from &(any in7ury which might result to it from the deception of the pu,lic through theunauthori=ed use of its trade name% or a trade name which would lead the pu,lic to ,elie$e that it wasin some way connected with plaintiff.(& )66+

In 9>3>% a second New ork trial court granted in7uncti$e relief to another famous Paris restaurant,ased on the fame of the restaurant(s mark in the #nited 5tates. )6:+ In Eauda,le $. ontmartre% Inc.%

)6>+ a New ork City restaurateur copied the name% decor% and descripti$e script style of the famous&axim(s& restaurant in Paris. ):?+ The court found for the plaintiff e$en though the New orkrestaurant was not in direct competition with the Paris restaurant% concluding that the lack of directcompetition was immaterial to a common law unfair competition claim. ):9+ In determining whether theNew ork restaurant had misappropriated the axim(s mark% the court held that the rench restaurantowners had priority ,ecause of their uninterrupted use of the mark in Paris and the fame of theaxim(s mark among &the class of people residing in the cosmopolitan city of New ork who dine out.&):*+

It is important to note% howe$er% that although the holdings in ,oth of these cases recogni=e a famousmarks exception to the territoriality principle% they do not recogni=e this exception under Article 4,is of the Paris Con$ention. ):-+ Instead% the courts relied entirely on New ork common lawmisappropriation principles of unfair competition. ):1+

'. The Trademark Trial and Appeal 'oard

Two decisions of the federal Trademark Trial and Appeal 'oard )&TTA'&+ also pro$ide examples of early recognition of the famous marks exception. ):3+ In other(s estaurants% Inc. $. other(s !ther Bitchen% Inc.% ):4+ the TTA' found that ad$ertising in the #nited 5tates of a mark used in Canadacreates no priority rights in the mark for the Canadian mark holder against a later good faith user inthe #nited 5tates. ):6+ 'ut the court went on to state% in dictum% that if a plaintiff can show that hismark was &famous& in the #nited 5tates within the meaning of Eauda,le% then he will ,e a,le topreclude a later user of the mark in the #nited 5tates. )::+

In All ngland Lawn Tennis Clu, )Fim,ledon+% Ltd. $. Creations Aromati@ues% Inc.% ):>+ the #.5.defendant sought to register a trademark for &Fim,ledonCologne& with the #5PT!. )>?+ The TTA'%

under an alternati$e holding% granted the plaintiff(s re@uest to ,lock the registration ,ecause theFim,ledon mark had &ac@uired fame and notoriety as used in association with the annual

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championships within the meaning of Eauda,le.& )>9+ The TTA' granted the in7unction% e$en thoughthe plaintiff did not use the mark in the #nited 5tates% ,ecause &purchasers of applicant(s colognewould incorrectly ,elie$e that said product was appro$ed ,y or otherwise associated with theFim,ledon tennis championships and that allowance of the application would damage opposer(srights to the mark.& )>*+

'ut as with aison Prunier and Eauda,le% the TTA'(s recognition of the famous marks doctrine camenot from the Lanham Act or Article 4,is of the Pads Con$ention% ,ut from New ork common lawprinciples of unfair competition. )>-+ In other(s estaurants% one mem,er of the TTA' @uestionedthe ma7ority(s reliance on lauda,le and stated that federal application of the famous marks doctrine&depends upon whether the applica,le text of the Paris Con$ention ... and% in particular% Article 4,is of that Con$ention% is self2executing.& )>1+

C. The Ninth Circuit

In *??1% the Ninth Circuit Court of Appeals ,ecame the first federal appeals court to directly addresswhether federal trademark law recogni=es the famous marks doctrine. )>3+ In 0rupo 0igante 5.A. deC.E. $. "allo G Co.% )>4+ the plaintiff had operated grocery stores in exico under the name &0igante&since 9>4*. )>6+ It registered the &0igante& trademark in 9>4- with the exican go$ernment% and% as

of 9>>9% it operated almost one hundred &0igante& grocery stores throughout exico% including twonext to the ,order with the #nited 5tates% near 5an "iego. )>:+ eanwhile% in 9>>9% ichael "allo,egan operating a grocery store in 5an "iego named &0igante arket.& )>>+ Along with one of his,rothers% he opened a second 5an "iego store under the same name in 9>>4. )9??+ In 9>>>% 0rupo0igante opened its first #.5. store in the Los Angeles area% followed ,y two other stores. )9?9+ 0rupo0igante called all three of its #.5. stores &0igante%& 7ust like its exican stores. )9?*+ The "allos sent0rupo 0igante a cease2and2desist letter in Huly 9>>>% when they learned that the exican companyhad opened a &0igante& store in Los Angeles. )9?-+ 0rupo 0igante responded ,y filing a lawsuit infederal court for trademark infringement under the Lanham Act. )9?1+

#nder a strict interpretation of the territoriality principle% the "allos would pre$ail against 0rupo0igante. )9?3+ The "allos were the first to make use of the &0igante& mark in the #nited 5tates% and%as such% they had priority in the trademark in the #nited 5tates. )9?4+ The district court% howe$er% held

that 0rupo 0igante(s &0igante& chain of grocery stores was sufficiently famous among exican2 Americans in 5outhern California to grant 0rupo 0igante senior user status for the mark in the #nited5tates. )9?6+ The district court determined that 0rupo 0igante(s &0igante& mark was famous in the#nited 5tates ,ecause it had ac@uired &secondary meaning& in 5outhern California. )9?:+

!n appeal% the Ninth Circuit acknowledged the fundamental principle in trademark law that &first intime e@uals first in right.& )9?>+ It also recogni=ed the territoriality principle as &(,asic to trademarklaw.(& )99?+ ollowing the territoriality principle% 0rupo 0igante(s use of the &0igante& mark for decadesprior to the "allos( use of the mark is rendered ineffectual% ,ecause 0rupo 0igante(s prior use of themark was in exico% not the #nited 5tates. )999+ 'ut the Ninth Circuit found that the territorialityprinciple is not a,solute. )99*+ The court recogni=ed a famous marks exception to the principle of territoriality% stating that &when foreign use of a mark achie$es a certain le$el of fame for that markwithin the #nited 5tates% the territoriality principle no longer ser$es to deny priority to the earlier

foreign user.& )99-+

The Ninth Circuit% howe$er% did not support its recognition of the famous marks doctrine with specificlanguage of the Lanham Act or Article 4,is of the Paris Con$ention% ,ut rather with policy 7ustifications.)991+ According to the court An absolute territoriality rule without a famous-mark

exception would promote consumer confusion and fraud.

Commerce crosses borders. In this nation of immigrants, so

do people. Trademark is, at its core, about protecting against

consumer confusion and "palming off." There can be no

ustification for using trademark law to fool immigrants into

thinking that they are buying from the store they liked back

home. !#$

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5ince there was no support for its recognition of the famous marks doctrine among federal circuitopinions% the court relied on auda,le and the TTA'(s decisions in All ngland Lawn Tennis Clu, andother(s estaurants. )994+

The Ninth Circuit re7ected the district court(s conclusion that secondary meaning was sufficient todetermine whether a foreign mark @ualifies as a &famous& foreign mark for purposes of the exception

to the territoriality principle. )996+ #nder the district court(s rule% a mark would ha$e secondarymeaning &(when% in the minds of the pu,lic% the primary significance of a mark is to identify the sourceof the product rather than the product itself.(& )99:+ In analy=ing the district court(s secondary meaningrule for defining a famous mark% the Ninth Circuit stated that it &would go too far if ;the court< did awaywith the territoriality principle altogether ,y expanding the famous2mark exception this much.& )99>+ Inaddition to secondary meaning% the Ninth Circuit held that% &where the mark has not ,efore ,een usedin the American market% the court must ,e satisfied% ,y a preponderance of the e$idence% that asu,stantial percentage of consumers in the rele$ant American market is familiar with the foreignmark.& )9*?+ The court went on to state that% in determining whether a mark is a famous mark% a courtshould consider whether a defendant intentionally copied the mark and whether unauthori=eddomestic use of a famous foreign mark would likelyconfuse consumers in the #nited 5tates. )9*9+

". The 5econd Circuit

In *??6% the 5econd Circuit Court of Appeals ,ecame the second federal circuit court to address theissue of whether there is a famous marks exception to the territoriality principle in ITC Ltd. $.Punchgini% Inc. )9**+ 'ut prior to the ruling in ITC% se$eral district courts within the 5econd Circuit hadruled on the a$aila,ility of the famous marks doctrine under federal trademark law% reaching $aryingconclusions. In "e 'eers LE Trademark Ltd. $. "e'eers "iamond 5yndicate% Inc.% )9*-+ the foreignplaintiffs claimed to ha$e trademark rights to the &"e 'eers& mark in the #nited 5tates for diamondsand other luxury names. )9*1+ The plaintiffs sued the defendants for% inter alia% trademarkinfringement under section 1-)a+ of the Lanham Act% after the defendants had registered se$eralInternet domain names using the "e 'eers name and attempted to register the "e 'eers mark withthe #5PT!. )9*3+ The plaintiffs conceded that they had not sold products or ser$ices under the "e'eers name in the #nited 5tates% )9*4+ and sought to esta,lish their priority rights to the "e 'eersmark under the famous marks doctrine. )9*6+ The defendants argued that since the plaintiffs had not

used the "e 'eers mark in commerce in the #nited 5tates% they did not ha$e priority rights to the "e'eers mark in the #nited 5tates under the territoriality principle. )9*:+

The district court referred to the famous marks doctrine as a &(contro$ersial( common2law exception tothe territoriality principle%& )9*>+ ,ut concluded that the owner of a famous foreign mark could assertthe doctrine under section 1-)a+ of the Lanham Act as a &7ustified exception& to the territorialityprinciple. )9-?+ The court noted that &;r


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Congress has enacted a statute% the Lanham Act% that carefully prescri,es the ,ases for federaltrademark claims.(& )919+ In finding that the famous marks doctrine is not part of federal trademarklaw% the court re7ected the plaintiff(s claim that the Lanham Act recogni=es the doctrine ,y pro$iding aforeign plaintiff with su,stanti$e rights under Article 4,is. )91*+ According to the court% the Lanham Act(s incorporation of the Paris Con$ention only re@uires &(national treatment.(& )91-+

'efore the 5econd Circuit(s ruling in ITC% the court had pre$iously declined to address directly thefamous marks doctrine in two cases where the issue had arisen. irst% in 'uti $. Impressa Perosa%5..L.% )911+ Impressa had opened a restaurant in 9>:: under the name &ashion Cafe& in ilan%Italy% and had registered the ashion Cafe mark with the rele$ant authority in Italy. )913+ Impressa hadad$ertised its restaurant in the #nited 5tates% ,ut it had ne$er operated any restaurants in the #nited5tates. )914+ eanwhile% in 9>>-% 'uff opened a restaurant called ashion Cafe in iami% lorida% andthen later opened restaurants with the same name in New !rleans and New ork. )916+ 'othImpressa and 'uti attempted to register the ashion Cafe mark with the #5PT!% and 'uti filed anaction in federal court seeking recognition that Impressa had no rights to the ashion Cafe mark in the#nited 5tates. )91:+ The district court% and later the 5econd Circuit% concluded that Impressa(s effortsat ad$ertising its restaurant in the #nited 5tates were insufficient to satisfy the use in commercestandard% ,ecause the defendant only offered restaurant ser$ices in Italy. )91>+ In its opinion% the5econd Circuit referenced the existence of the famous marks exception% ,ut concluded that the

exception had no application in the 'uti case ,ecause Impressa had made no claim under thedoctrine. )93?+

The 5econd Circuit again referenced the famous marks doctrine in mpresa Cu,ana del Ta,aco $.Cul,ro Corp.% ,ut declined to address whether the doctrine pro$ides a legal ,asis for esta,lishingpriority rights in the #nited 5tates. )939+ mpresa Cu,ana in$ol$ed Cu,ata,aco% a Cu,an cigar manufacturer% which sought to pre$ent a #.5. company% 0eneral Cigar% from selling cigars under theC!DI'A mark. )93*+ Cu,ata,aco had sold cigars under the C!DI'A mark in Cu,a since 9>4* andinternationally since 9>:*. )93-+ 'ut ,ecause of the 9>4- trade em,argo on Cu,an goods%Cu,ata,aco had ne$er sold C!DI'A cigars in the #nited 5tates. )931+ In 9>:9% 0eneral Cigar registered the C!DI'A mark with the #5PT! and ,egan selling cigars in the #nited 5tates under thatmark. 0eneral Cigar stopped selling C!DI'A cigars in 9>:6% ,ut it resumed selling them in 9>>*.)933+

Cu,ata,aco argued that 0eneral Cigar had a,andoned the C!DI'A mark in 9>:6 when it stoppedselling cigars under the C!DI'A mark. )934+ Cu,ata,aco further argued that ,y 9>>*% when 0eneralCigar resumed selling C!DI'A cigars% Cu,ata,aco(s C!DI'A mark was sufficiently famous in the#nited 5tates to deser$e protection under the famous marks doctrine. )936+ The district courtrecogni=ed that the territoriality principle would normally pre$ent Cu,ata,aco from succeeding% since0eneral Cigar was the first user of the C!DI'A mark in the #nited 5tates. )93:+ The court% howe$er%concluded that a claimant could pursue rights identified in Article 4,is of the Paris Con$ention under section 11),+ of the Lanham Act. )93>+ The court further concluded that the proper standard for determining whether a mark is sufficiently famous to warrant Article 4,is protection is whether themark has ac@uired secondary meaning for recognition. )94?+ The district court ultimately found thatCu,ata,aco(s C!DI'A mark was sufficiently famous in the #nited 5tates to warrant protection andheld that Cu,ata,aco had priority in the mark o$er 0eneral Cigar. )949+

!n appeal% the 5econd Circuit re$ersed% ,ut declined to decide whether it should recogni=e thefamous marks doctrine ,ecause% &e$en assuming that the famous marks doctrine is otherwise $ia,leand applica,le% the ;Cu,an< em,argo ,ars ;plaintiff< from ac@uiring property rights in the ... markthrough the doctrine.& )94*+ Cu,ata,aco also asserted a claim for unfair competition under Article9?,is of the Paris Con$ention% as incorporated ,y sections 11),+ and 11)h+ of the Lanham Act. )94-+'ut the court held that the Paris Con$ention creates no su,stanti$e rights ,eyond those independentlypro$ided for in the Lanham Act. )941+

In *??6% the 5econd Circuit directly addressed the a$aila,ility of the famous marks doctrine under federal trademark law in ITC Ltd. $. Punchgini% Inc. )943+ In ITC% the plaintiff% a corporation organi=edunder the laws of India% opened &'ukhara& restaurant in 9>66 in a fi$e2star hotel in New "elhi% India.)944+ The restaurant has remained in continuous operation for the past thirty years and has o,tained

a measure of international renown. )946+ ITC named the restaurant after the legendary 5ilk oad cityin #=,ekistan% and the restaurant features a menu and decor inspired ,y the northwest region of

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India. )94:+ !$er the past three decades% following the success of its New "elhi restaurant% ITCopened or franchised 'ukhara restaurants in Dong Bong% 'angkok% 'ahrain% ontreal% 'angladesh%5ingapore% Bathmandu% and A7man. )94>+ ITC also opened a 'ukhara restaurant in New ork in 9>:4and licensed the use of the &'ukhara& mark% which it had registered with the #5PT! in 9>:6% to aChicago restaurateur the same year. )96?+ The New ork 'ukhara restaurant remained in ,usinessfor fi$e years% closing its doors in 9>>9. )969+ The Chicago restaurant had a longer lifespan% ,ut ITC

cancelled the franchise in 9>>6% after a decade in ,usiness. )96*+

Later% in 9>>>% fi$e indi$iduals incorporated Punchgini% Inc. for the purpose of opening an Indianrestaurant in New ork City. )96-+ Three of the fi$e Punchgini incorporators had pre$iously worked atITC(s New "elhi 'ukhara restaurant% and one of the fi$e incorporators had worked at ITC(s New ork'ukhara restaurant. )961+ In choosing a name for its New ork restaurant% Punchgini consideredse$eral different possi,ilities% ,ut ultimately decided on &'ukhara 0rill.& )963+ Punchgini(s choice wasdue% at least in part% to the recognition of the &'ukhara& mark among the rele$ant population in Nework familiar with ITC(s New "elhi restaurant. )964+ In addition to the similarity in names ,etweenITC(s &'ukhara& restaurant and Punchgini(s &'ukhara 0rill& restaurant% Punchgini also replicated ITC(s'ukhara restaurant(s logos% decor% staff uniforms% menus% and red2checkered ,i,s. )966+ Punchgini(s'ukhara 0rill was successful% and some of the original Punchgini incorporators organi=ed a secondcorporation for the purpose of opening another New ork restaurant% aptly named &'ukhara 0rill II.&

)96:+

In *???% ITC demanded that Punchgini refrain from further use of the &'ukhara& mark% accusing it of unlawfully appropriating the reputation of ITC(s 'ukhara restaurants in India and the #nited 5tates ,yadopting a $irtually identical name for its 'ukhara 0rill restaurants in New ork. )96>+ Punchginirefused to stop using the 'ukhara mark% and ITC filed a lawsuit in federal court in *??- for trademarkinfringement. )9:?+ ITC(s trademark infringement case faced a significanthurdle in that ITC had notowned% operated% or licensed any 'ukhara restaurants in the #nited 5tates since 9>>6. The districtcourt ruled that% ,ecause ITC had not used its 'ukhara mark in commerce in the #nited 5tates for o$er three years% it had a,andoned the mark. )9:9+ Therefore% in order for ITC to pre$ail% it had toargue that #.5. trademark law precludes Punchgini(s use of the 'ukhara mark ,ecause the mark issufficiently famous among the rele$ant population in New ork that it will cause consumer confusion22despite the fact that ITC had a,andoned its own use of the 'ukhara mark in the #nited 5tates ,efore

Punchgini opened its first 'ukhara 0rill restaurant. )9:*+

!n the issue of the famous marks doctrine% the district court stated that &;t


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)9>9+ The court held that section 11),+ merely &grants foreign mark holders co$ered ,y these treatiesonly those protections of #nited 5tates law already specified in the Lanham Act.& )9>*+ As for section11)h+(s references to an &entitle;ment< to effecti$e protection against unfair competition%& )9>-+ thecourt concluded that its &precedent precludes ;the court< from construing this phrase to afford foreignmark holders any rights ,eyond those specified in section 11),+.& )9>1+ The court reasoned thatCongress(s &specificity in dealing with registered marks cautions against reading a famous marks

exception into sections 11),+ and )h+% which nowhere reference the doctrine% much less thecircumstances under which it would appropriately apply despite the fact that the foreign mark was notused in this country.& )9>3+

"espite the 5econd Circuit(s holding that ITC could not maintain a federal claim for unfair competitionunder the famous marks doctrine% the court recogni=ed that ITC might ha$e a claim for misappropriation under New ork common law. )9>4+ As such% the court certified to the New orkCourt of Appeals the @uestion of whether New ork common law recogni=es the famous marksdoctrine. )9>6+ The court also certified to the New ork Court of Appeals the @uestion of how famous amark must ,e to fall within the famous marks doctrine. )9>:+ As to the second @uestion% the 5econdCircuit listed four possi,le standards that the state court might consider in esta,lishing whether amark @ualifies as a famous mark. )9>>+

In "ecem,er *??6% the New ork Court of Appeals answered the first @uestion affirmati$ely% ,utstipulated that it was &not there,y recogni=ing the famous or well2known marks doctrine% or any other new theory of lia,ility under the New ork law of unfair competition.& )*??+ Instead% the state courtheld that &when a ,usiness% through renown in New ork% possesses goodwill constituting property or a commercial ad$antage in this state% that goodwill is protected from misappropriation under New orkunfair competition law ... whether the ,usiness is domestic or foreign.& )*??9+

As to the second certified @uestion% the New ork court stated that% &at a minimum% consumers of thegood or ser$ice pro$ided under a certain mark ,y a defendant in New ork must primarily associatethe mark with the foreign plaintiff.& )*?*+ The court declined to pro$ide a list of rele$ant factors for determining whether a plaintiffs mark had esta,lished the re@uisite goodwill% ,ut stated that thisin@uiry would necessarily $ary with the facts of each case. )*?-+ After recei$ing the New ork court(sresponse% the 5econd Circuit affirmed its 7udgment for the Punchgini defendants22concluding that ITC

had failed &to raise a tria,le @uestion of fact on the issue of secondary meaning necessary to esta,lisha New ork 5tate claim for unfair competition in a foreign mark.& )*?1+

Thus% the two federal circuit courts that ha$e addressed the famous marks doctrine directly ha$ecome to conflicting conclusions a,out the doctrine(s existence under federal trademark law. In theNinth Circuit(s opinion in 0rupo 0igante% the court relied almost entirely on policy 7ustifications for recogni=ing the doctrine as an exception to an a,solute rule of territoriality. )*?3+ The 5econd Circuitconcluded in ITC that policy 7ustifications cannot% ,y themsel$es% support finding an exception to the,edrock principle of territoriality% especially where Congress had enacted a comprehensi$e trademarkstatute. )*?4+

III. INC!P!ATIN0 TD A!#5 AB5 "!CTIN INT! TD LANDA ACT

A. The Need for a amous arks xception to the Territoriality Principle

Although the 5econd Circuit concluded in ITC that the Ninth Circuit(s reliance on policy 7ustifications in0rupo 0igante could not% ,y itself% support 7udicial recognition of the famous marks doctrine under federal law% )*?6+ the 5econd Circuit did recogni=e the persuasi$eness of those policy arguments.)*?:+0lo,ali=ation% the Internet% increased immigration% the threat of trademark piracy% and the #nited5tates( own treaty o,ligations all lend powerful support to the argument that the #nited 5tates shouldrecogni=e% at the $ery least% a limited famous marks exception to the territoriality principle. )*?>+Therefore% Congress should act to incorporate expressly the protections for famous marks found in Article 4,is of the Paris Con$ention and Article 94)*+ of TIP5 into the Lanham Act. )*9?+

The primary policy underlying the law of trademarks is the interest in protecting the pu,lic fromconfusion and deceit. )*99+ The Ninth Circuit stated in 0rupo 0igante that% in this nation of

immigrants% &;t


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marks exception would help protect immigrants from confusion and deceit. Additionally% the Internet%satellite tele$ision% and increased international air tra$el ha$e all worked to create a smaller and morenetworked world. )*9-+ 'rand manufacturers can now promote their products across ,orders in amuch more efficient and cost2effecti$e manner than pre$iously possi,le. )*91+ 'rand reputation for some ,rands expands to foreign markets e$en ,efore the ,rand owner has actually ,egun marketinghis products in those countries. )*93+ #nfortunately for the owners of these international ,rands%

trademark law has not kept pace with the rapid expansion of glo,ali=ation. )*94+ As a result%trademark pirates are often a,le to register internationally famous marks with their local trademarkoffice ,efore the true owner of the mark e$en recogni=es a need to protect its mark in that particular country. )*96+

Trademarks% as intellectual property assets% are often the most $alua,le assets glo,al companieshold. )*9:+ In order to protect these assets% it is essential that #.5. companies ,e a,le to enforce thefamous marks doctrine internationally. )*9>+ The principle of comity among nations demands that the#nited 5tates also honor its treaty o,ligations under the Paris Con$ention and TIP5 and codify thefamous marks exception into federal trademark law. )**?+ urthermore% recognition of the famousmarks doctrine under federal law will ,enefit #.5. consumers% ,ecause a strong trademark systemenhances competition. )**9+ A,sent ade@uate trademark protection within #.5. courts% foreigncompanies will ha$e little reason to pro$ide @uality goods to #.5. consumers% ,ecause free riders

would ,e a,le to destroy their competiti$e ad$antage. )***+

'. Possi,le amous arks 5tandards

!nce Congress has determined that expressly incorporating the famous marks doctrine into theLanham Act ,est ser$es the underlying policies of federal trademark law% it must then consider theappropriate standard for determining when the doctrine should apply. In ITC% the 5econd Circuitcertified to the New ork Court of Appeals the @uestion of how famous a foreign mark must ,e topermit its owner to sue for unfair competition. )**-+ The 5econd Circuit then suggested four possi,lestandards that the New ork Court of Appeals might consider in answering the @uestion secondarymeaning% secondary meaning plus% the anti2dilution statute standard% and the recommendation of theForld Intellectual Property !rgani=ation )&FIP!&+. )**1+ Although the court suggested thepossi,ilities as standards for applying the famous marks doctrine under New ork common law% these

four standards are also helpful when considering the appropriate standard for application of thefamous marks doctrine under federal trademark law.

9. The 5econdary eaning 5tandard

#nder the secondary meaning standard% a foreign mark would @ualify for federal trademark protectionunder the famous marks doctrine if the mark had the a,ility to &trigger in consumers( minds a link,etween a product or ser$ice and the source of that product or ser$ice.& )**3+ The #.5. "istrict Courtfor the Central "istrict of California adopted this standard in 0rupo 0igante to hold that the correctin@uiry was to decide whether the &0igante& mark had ac@uired secondary meaning in the 5an "iegoarea. )**4+ In finding that the 0igante mark had satisfied the secondary meaning standard andtherefore @ualified for protection under the famous marks doctrine% the district court considered se$enindependent factors. )**6+ These factors included &sur$ey e$idenceK direct consumer testimonyK

exclusi$ity% manner and length of use of the markK amount and manner of ad$ertisingK amount of salesand num,er of customersK esta,lished place in the marketK and proof of intentional copying ,y thedefendant.& )**:+

5econdary meaning ser$es two separate functions in trademark law. )**>+ irst% secondary meaning&ser$es to determine whether certain marks are distincti$e enough to warrant protection.& )*-?+Therefore% in 0rupo 0igante% the foreign plaintiff would ha$e to pro$e that consumers identify the0igante mark with the foreign plaintiff(s particular ,rand of store. )*-9+ The second function of thesecondary meaning standard is to define the geographic area in which a user has priority% regardlessof which user used the mark first. )*-*+ This second function of secondary meaning is an applicationof the Tea2ectanus doctrine. )*--+ #nder this doctrine% priority of use of a mark in one area of the#nited 5tates does not necessarily pre$ent a good faith and innocent user in another area of the#nited 5tates from also using the mark% if the second user(s geographic area is &remote.& )*-1+

'ecause a ,asic principle of trademark law is that trademark rights are go$erned ,y priority of use%)*-3+ if a senior user has not used his mark in the 7unior user(s territory% then the Tea2ectanus

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doctrine holds that the senior user may not pre$ent the 7unior user(s use of the mark. )*-4+ The resultis that one user might ha$e the right to use a mark in one geographic area of the #nited 5tates% whileanother user has the right to use the same mark in another geographic area of the #nited 5tates.)*-6+

The 0rupo 0igante district court acknowledged that% in adopting a secondary meaning standard for

famous foreign marks% it was analy=ing the case as if ,oth the plaintiff and defendants were operatingstores in 5outhern California% as opposed to the actual situation% where the plaintiff claimed its firstpriority status ,ased on its prior use of the 0igante mark in exico. )*-:+ The plaintiff operated a0igante store in Ti7uana% 7ust twenty miles south of the defendants( 5an "iego stores22as such% &;thecourt could find< no rational reason why the outcome in this case should ,e different if the ;plaintiff<operated ;its< 0igante grocery stores *? miles to the north of the defendants( stores% rather than *?miles to the south.& )*->+ Thus% under the district court(s secondary meaning standard% it is completelyirrele$ant that the foreign plaintiff(s earlier use of the mark was entirely outside the #nited 5tates.)*1?+

'ut &treating international use differently is what the territoriality principle does%& as the Ninth Circuitcorrectly stated in 0rupo 0igante. )*19+ If Congress were to adopt secondary meaning as theappropriate standard% it would effecti$ely a,olish the territoriality principle. )*1*+ #nder this standard% it

would make no difference whether prior use was made in the #nited 5tates or a,road. )*1-+ The onlyrele$ant in@uiry% under the Tea2ectanus doctrine% would ,e whether the mark had o,tainedsecondary meaning within the &rele$ant sector of the pu,lic& )*11+ to warrant protection. The NinthCircuit concluded that &;w+

-. The Anti2"ilution 5tatute 5tandard

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The standard pro$ided under section 1-)c+ of the Lanham Act% the federal anti2dilution statute% )*4?+was the third possi,le standard suggested ,y the 5econd Circuit in ITC. )*49+ The anti2dilutionstandard is a much higher standard than secondary meaning in that it re@uires that a mark ,e &widelyrecogni=ed ,y the general consuming pu,lic of the #nited 5tates as a designation of source of thegoods or ser$ices of the mark(s owner.& )*4*+ The holder of a mark that satisfies this high standard

may seek to en7oin another person who uses the mark% &regardless of the presence or a,sence of actual or likely confusion% of competition% or of actual economic in7ury.& )*4-+ Thus% a mark that meetsthis high standard recei$es nationwide protection.

5ection 1-)c+)*+)A+ pro$ides four factors for a court to consider when determining whether a mark issufficiently famous for anti2dilution protection

)i+ The duration% extent% and geographic reach of ad$ertising and pu,licity of the mark% whether ad$ertised or pu,lici=ed ,y the owner or third parties.

)ii+ The amount% $olume% and geographic extent of sales of goods or ser$ices offered under the mark.

)iii+ The extent of actual recognition of the mark.

)i$+ Fhether the mark was registered under the Act of arch -% 9::9% or the Act of e,ruary *?% 9>?3%or on the principal register. )*41+

These factors pro$ide useful guidelines that a court might consider in determining whether a mark issufficiently famous to warrant protection under the foreign marks doctrine.

'ut the anti2dilution standard% especially the re@uirement that the mark ,e &widely recogni=ed ,y thegeneral consuming pu,lic of the #nited 5tates%& )*43+ is much too high a standard to apply in thefamous marks doctrine context. In 0rupo 0igante% the Ninth Circuit argued that courts should notallow unscrupulous entrepreneurs to use trademark law to &fool immigrants into thinking that they are,uying from the store they liked ,ack home.& )*44+ If Congress were to choose to apply the anti2dilution standard to the famous marks doctrine% the doctrine would not ser$e to protect immigrants in

the $ast ma7ority of cases. Applied to the facts of the 0rupo 0igante case% the foreign plaintiff wouldneed to pro$e that a significant percentage of all Americans across the nation recogni=ed the 0igantemark as the plaintiff(s mark. )*46+ 'ut the ,enefit the 0rupo 0igante defendants recei$ed ,y adoptingthe 0igante mark was not the goodwill the mark carried nationwide% it was the goodwill the markcarried among the Dispanic population in 5outhern California. )*4:+ Thus% adopting the anti2dilutionstandard for purposes of determining whether a mark would fall under the famous marks doctrinewould ,e e@ui$alent to refusing to recogni=e the doctrine altogether.

1. The FIP! 5tandard

inally% the 5econd Circuit suggested in ITC that% should the New ork Court of Appeals decide toadopt a completely new standard for the recognition of the famous marks doctrine% it might consider the factors recommended ,y the FIP! in 9>>> in the non2,inding Hoint ecommendation Concerning

Pro$isions on the Protection of Fell2Bnown arks. )*4>+ These factors include

9. the degree of knowledge or recognition of the mark in the rele$ant sector of the pu,licK

*. the duration% extent and geographical area of any use of the markK

-. the duration% extent and geographical area of any promotion of the mark% including ad$ertising or pu,licity and the presentation% at fairs or exhi,itions% of the goods and/or ser$ices to which the markappliesK

1. the duration and geographical area of any registrations% and/or any applications for registration% of the mark% to the extent that they reflect use or recognition of the markK

3. the record of successful enforcement of rights in the mark% in particular% the extent to which themark was recogni=ed as well known ,y competent authoritiesK

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4. the $alue associated with the mark. )*6?+

The New ork Court of Appeals ultimately answered the 5econd Circuit(s second certified @uestion ,ystating that% under New ork common law% &;w+ As to the former issue% the practical needfor flexi,ility in applying the secondary meaning plus standard mandates that a court not define

&su,stantial percentage& as any specific threshold num,er. )*:?+ $idence to pro$e that a su,stantialpercentage of the pu,lic is familiar with a particular mark might include & unsolicited re@uests frompotential licensees% distri,utors and consumers of the goods or ser$ices which ,ear the mark.... ;and<sur$ey e$idence.& )*:9+ 'ecause the types of e$idence that a plaintiff might introduce to esta,lish thefame of his mark could $ary so drastically% any attempts ,y a court to esta,lish a minimum percentagethat constitutes &su,stantial percentage& will likely pro$e futile. )*:*+ urther% courts should,e hesitant to attach too much weight to sur$ey e$idence that purports to esta,lish that a certainpercentage of the rele$ant sector of the pu,lic is familiar with a particular mark% as that e$idence mightnot ,e comprehensi$e or entirely accurate.

!n a case2,y2case ,asis% the issue that will most likely pro$e determinati$e under the secondarymeaning plus standard will ,e defining who constitutes the &rele$ant sector of the pu,lic.& In 0rupo0igante% Hudge 0ra,er stated in her concurrence that

%ecause a conclusion that &laintiffs ha'e a protectable interest would prohibit (efendants from selling groceries

under that mark to any residents of )an (iego County--not

ust to *exican-Americans--it makes little sense to define

the rele'ant public so narrowly. Comprised of all grocery

shoppers, the "rele'ant sector of the public" in this case is the

'ery antithesis of a speciali+ed market because e'eryone

eats, the rele'ant sector of the public consists of all residents

of )an (iego County, without ualification. !/0$

Thus% under Hudge 0ra,er(s analysis of what constitutes the rele$ant sector of the pu,lic% 0rupo0igante would ha$e to pro$e that a su,stantial percentage of the entire population of 5an "iego

County was familiar with the plaintiff(s 0igante mark. )*:1+ "efining the rele$ant sector of the pu,licso ,roadly would render the famous marks doctrine ineffecti$e in many of the cases where its

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application would ,e most desira,le. If the famous marks doctrine is to mean anything to the plaintiff in 0rupo 0igante% the court must define the rele$ant sector of the pu,lic to include only the peoplewho a defendant seeks to confuse and decei$e. )*:3+ #nder the facts of 0rupo 0igante% a fairer definition of the rele$ant sector of the pu,lic would ,e only those exican2Americans in 5an "iegowho shopped at the defendants( 0igante stores. )*:4+

'ut determining the appropriate standard for who constitutes the rele$ant sector of the pu,lic wouldalso greatly depend on the facts of a gi$en case. The FIP!% in its Hoint ecommendation ConcerningPro$isions on the Protection of Fell2Bnown arks% pro$ided se$eral factors for determining whoconstitutes the rele$ant sector of the pu,lic

)a+ ele$ant sectors of the pu,lic shall include% ,ut shall not necessarily ,e limited to

)i+ actual and/or potential consumers of the type of goods and/or ser$ices to which the mark appliesK

)ii+ persons in$ol$ed in channels of distri,ution of the type of goods and/or ser$ices to which the markappliesK

)iii+ ,usiness circles dealing with the type of goods and/or ser$ices to which the mark applies.

),+ Fhere a mark is determined to ,e well known in at least one rele$ant sector of the pu,lic in aem,er 5tate% the mark shall ,e considered ,y the em,er 5tate to ,e a well2known mark.

)c+ Fhere a mark is determined to ,e known in at least one rele$ant sector of the pu,lic in a em,er 5tate% the mark may ,e considered ,y the em,er 5tate to ,e a well2known mark.

)d+ A em,er 5tate may determine that a mark is a well2known mark% e$en if the mark is not wellknown or% if the em,er 5tates applies su,paragraph )c+% known% in any rele$ant sector of the pu,licof the em,er 5tate. )*:6+

or example% in Person(s Co. $. Christman% )*::+ the plaintiff was a Hapanese clothes manufacturer who produced and sold clothes under the &Person(s& ,rand. )*:>+ It did not sell &Person(s& clothes in

the #nited 5tates and had not registered the mark with the #5PT!% and the &Person(s& mark was notknown in the #nited 5tates. )*>?+ The defendant% while on a trip to Hapan% disco$ered the plaintiff(sline of clothes and decided to de$elop his own line of &Person(s& clothes to sell in the #nited 5tates%without the plaintiff(s permission. )*>9+ Fhen the plaintiff learned of the defendant(s acti$ities% he suedthe defendant ,ased on likelihood of confusion% ,ut the court held that the plaintiff(s prior use in Hapandid not warrant him protection in the #nited 5tates. )*>*+

Fhile commentators ha$e critici=ed the Person(s Co. court(s holding. )*>-+ it is clear that the plaintiff(smark was not famous in the #nited 5tates when the defendant first made use of the mark in the#nited 5tates. Therefore% the famous marks doctrine should not apply in that situation. 'ut under anarrow definition of who constitutes the rele$ant sector of the pu,lic% such a plaintiff could argue that acourt should only consider whether a su,stantial percentage of Hapanese2Americans are familiar withthe mark. et the defendant in Person(s did not appropriate the plaintiff(s mark ,ecause he wanted to

appropriate the goodwill associated with the mark in the #nited 5tates )*>1+22the mark was not knownoutside of Hapan% so there was no goodwill associated with the mark in the #nited 5tates. )*>3+

As this example shows% in applying the secondary meaning plus standard% it is important that courtsfocus on &the o$erall (commercial impression( and the picture that emerges from the totality of thee$idence.& )*>4+ Adoption of the Ninth Circuit(s secondary meaning plus standard would allow courtsthe flexi,ility they need to analy=e whether a mark is sufficiently famous for protection on a case2,y2case ,asis.

C!NCL#5I!N

The Paris Con$ention and TIP5 ,oth pro$ide that signatory nations recogni=e a famous marksexception to the fundamental trademark principle of territoriality. )*>6+ The #nited 5tates is a

signatory of ,oth of these international treaties. 'ut TIP5 is not self2executing on its face% )*>:+ anda ma7ority of #.5. courts ha$e held that the Paris Con$ention is not self2executing. )*>>+ As such% if

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federal trademark law pro$ides for a famous marks exception to the territoriality principle% it must doso under the Lanham Act22the comprehensi$e and fre@uently amended statute that represents thecodification of federal trademark law. 'ut the Lanham Act does not expressly pro$ide for the famousmarks doctrine. )-??+ Therefore% it is up to Congress% not the federal 7udiciary% to incorporate thefamous marks doctrine into federal trademark law.

Cases such as ITC and 0rupo 0igante pro$ide con$incing e$idence that Congress must act toincorporate the su,stanti$e pro$isions of the Paris Con$ention and TIP5 into the Lanham Act. )-?9+The primary policy of trademark law is to protect the pu,lic from confusion and deceit. )-?*+ Thefamous marks doctrine will pre$ent the ,eha$iors that the defendants in ITC and 0rupo 0iganteexhi,ited22taking ad$antage of the goodwill of a famous foreign mark to confuse customers intothinking that they were associated with the foreign mark holder.

A secondary policy of trademark law is to protect the trademark owner(s interest in his mark. )-?-+0lo,ali=ation has increased the $alue of famous marks as intellectual property assets% ,ut it has alsocreated more opportunities for trademark piracy. )-?1+ The incorporation of the famous marks doctrineinto federal law will help ensure the owners of famous foreign marks that their marks are safe frommisappropriation in the #nited 5tates. inally% if Congress does not act to incorporate the famousmarks doctrine into the Lanham Act% then the #nited 5tates will remain in $iolation of its treaty

o,ligations under the Paris Con$ention and TIP5. This could lead to pro,lems of reciprocity when#.5. companies attempt to ensure the protection of their famous marks a,road. )-?3+

Congress should incorporate the su,stanti$e pro$isions of Article 4,is of the Paris Con$ention and Article 94)*+ of TIP5 into the Lanham Act. The appropriate standard for determining whether aforeign mark warrants protection as a famous foreign mark should ,e the Ninth Circuit(s secondarymeaning plus standard. )-?4+ The secondary meaning plus standard will ,est ,alance the need topre$ent consumer confusion and ensure compliance with international treaty o,ligations thatincorporate the territoriality principle. oreo$er% the secondary meaning plus standard will allow courtsthe flexi,ility to apply the famous marks doctrine in what will necessarily ,e a fact2specific% case2,y2case determination.

)9+ Courts and commentators often refer interchangea,ly to the &famous marks& doctrine and the

&well2known marks& doctrine. 3 H. TD!A5 CCATD% CCATD !N TA"AB5 G #NAIC!PTITI!N ;section< *>49 )1th ed. *??6+K see% e.g.% ITC Ltd. $. Punchgini% Inc. )ITC II+% 1:* .-d9-3% 934 )*d Cir. *??6+% cert. denied% 9*: 5. Ct. *:: )*??6+K mpresa Cu,ana "el Ta,aco $. Cul,roCorp.% *9- . 5upp. *d *16% *:4 )5.".N.. *??*+. In the #nited 5tates% the term &famous marks& hasat least two different legal connotations. 3 CCATD% supra% ;section< *>49. This Note discussesthe famous marks doctrine as the legal concept ,y which the owner of a trademark can protect hismark within a particular nation if the mark is sufficiently well known in that nation% e$en if the owner has not actually used or registered the mark in that nation% Id. The status of a mark as a &famousmark& is also rele$ant in the context of state and federal anti2dilution statutes% Id.K see 93 #.5.C.;section< 99*3)c+ )*??4+. This Note will not discuss &famous marks& in the context of dilution.

)*+ Dypothetical ,ased on ITC II% 1:* .-d 9-3K see ITC Ltd. $. Punchgini% Inc. )ITC III+% ::? N..*d:3*% :31 )N.. *??6+ )stating that the London2,ased &estaurant& maga=ine named ITC(s 'ukhara

restaurant as one of the fifty ,est restaurants in the world+% ac@. in answer to certified @uestion 39:.-d 93> )*d Cir. *??:+.

)-+ 5ee ITC II% 1:* .-d at 91-.

)1+ Id. at 911.

)3+ Id.

)4+ Id.

)6+ Id.

):+ 5ee Agreement on Trade2elated Aspects of Intellectual Property ights% Apr. 93% 9>>1%arrakesh Agreement sta,lishing the Forld Trade !rgani=ation% Annex IC% Legal Instruments22

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esults of the #ruguay ound% -- I.L.. 99*3 )9>>1+ ;hereinafter TIP5IK Paris Con$ention for theProtection of Industrial Property% ar. *?% 9::-% re$ised on Huly 91% 9>46% *9 #.5.T. 93:-% :*:#.N.T.5. -?3 ;hereinafter Paris Con$ention+ 3 CCATD% supra note 9% ;section< *>1.

)9?+ 5ee 0rupo 0igante 5.A. de C.E. $. "allo G Co. )0rupo II+% ->9 .-d 9?::% 9?>>29?? )>th Cir.*??1+ )&;T3 .*d 9*:6 )-d Cir. 9>6>+ )finding that the Paris Con$ention is not self2executing andre@uires domestic legislation for implementation+. 'ut see Eanity air ills% Inc. $. T. aton Co.% *-1.*d 4--% 41? )*d Cir. 9>34+ )o,ser$ing in dictum that% upon ratification ,y Congress% the ParisCon$ention re@uired &no special legislation in the #nited 5tates ... to make ;it< effecti$e here&+K 3CCATD% supra note 9% ;section< *>--.

)99+ 5ee Trademark Act of 9>14% Pu,. L. No. 6>21:>% 4? 5tat. 1*6 )codified as amended at 93 #.5.C.;section9 .-d 9?:: )recogni=ing the famous marks doctrine under the Lanham Act+% with ITC II% 1:* .-d 9-3 )declining to recogni=e the famous marks doctrine under the Lanham Act a,sent action ,y Congress+.

)9-+ 5ee 3 CCATD% supra note 9% ;section< *>9.

)91+ 5ee ITC II% 1:* .-d at 933 )&The principle of territoriality is ,asic to American trademark law.&+K Am. Circuit 'reaker Corp. $. !r. 'reakers% Inc.% 1?4 .-d 366% 3:9 )>th Cir. *??3+ )&It is now generallyagreed and understood that trademark protection encompasses the notion of territoriality.&+K BosPharms.% Inc. $. Andrx Corp.% -4> .-d 6??% 691 )-d Cir. *??1+ )stating that territoriality is ,asic totrademark law+K Person(s Co. $. Christman% >?? .*d 9343% 934:24> )ed. Cir. 9>>?+ )&The concept of territoriality is ,asic to trademark lawK trademark rights exist in each country solely according to that

country(s statutory scheme.&+.

)93+ 3 CCATD% supra note 9% ;section< *>9.

)94+ ITC II% 1:* .-d at 933.

)96+ 93 #.5.C. ;section< 99*6)*??4+.

)9:+ 9 CCATD% supra note 9% ;section< *9.

)9>+ Id.

)*?+ Id.K see ippo fg. Co. $. ogers Imports% Inc.% *94 . 5upp. 46? )5.".N.. 9>4-+K see also 9

CCATD% supra note 9% ;section< 99.

)*9+ 5ee Int(l News 5er$. $. Associated Press% *1: #.5. *93% *3? )9>9:+ )'randeis% H.% dissenting+)discussing exceptions to the general rule for production that in$ol$es creation% in$ention% or disco$ery+K 9 CCATD% supra note 9% ;section< 99K see also 5TATNT )TDI"+ ! #NAIC!PTITI!N ;section< 9 cmt. a )9>>3+ )&The freedom to engage in ,usiness and to compete for the patronage of prospecti$e customers is a fundamental premise of the free enterprise system.&+.

)**+ 9 CCATD% supra note 9% ;section< 3*K see also 'onito 'oats% Inc. $. Thunder Craft 'oats%Inc.% 1:> #.5. 919% 919 )9>:>+ )&The law of unfair competition has its roots in the common2law tort of deceit its general concern is with protecting consumers from confusion as to source. Fhile thatconcern may result in the creation of (@uasi2property rights( in communicati$e sym,ols% the focus is onthe protection of consumers% not the protection of producers as an incenti$e to product inno$ation.&+.

)*-+ 5ee Act of Huly :% 9:6?% ch. *-?% ;section:% *9?29*K see also 9

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CCATD% supra note 9% ;section< 3-.

)*1+ 5ee Trade2ark Cases% 9?? #.5. :* )9:6>+.

)*3+ 5ee #.5. C!N5T. art. I% ;section< :% cl. : )&The Congress shall ha$e Power ... ;t?% >6 )9>9:+ )&There is no such thingas property in a trade2mark except as a rightappurtenant to an esta,lished ,usiness or trade inconnection with which the mark is employed.... ;I9.

)-4+ 3 CCATD% supra note 9% ;section< *>* )footnotes omitted+.

)-6+ !sawa G Co. $. ' G D Photo% 3:> . 5upp 994-% 9969 )5.".N.. 9>:1+.

)-:+ 5ee% e.g.% Am. Circuit 'reaker Corp. $. !r. 'reakers Inc.% 1?4 .-d 366% 3:9 )>th Cir. *??3+K5TATNT )TDI"+ ! #NAI C!PTITI!N ;section< *1 cmt. f )9>>3+ )&The premise of theuni$ersality principle that trademarks necessarily identify the original manufacturer has ,een re7ectedin ;#.5.< domestic law.&+.

)->+ ITC Ltd. $. Punchgini% Inc. )ITC II+% 1:* .-d 9-3% 933 )*d Cir. *??6+% cert. denied% 9*: 5. Ct. *::)*??6+K see also 3 CCATD% supra note 9% ;section< *>9.

1A2 trademark has a separate legal existence under each country3s laws, and ... its proper lawful function is not necessarily to

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specify the origin or manufacture of a good !although it may

incidentally do that$, but rather to symboli+e the domestic

goodwill of the domestic markholder so that the consuming public

may rely with an expectation of consistency on the domestic

reputation earned for the mark by its owner, and the owner of the

mark may be confident that his goodwill and reputation !the 'alue

of the mark$ will not be inured through use of the mark by others in domestic commerce.

!sawa% 3:> . 5upp at 996926*.

)1?+ 5ee ITC II% 1:* .-d at 933K . emy artin G Co.% 5.A. $. 5haw2oss Int(l Imports% Inc.% 634 .*d93*3% 93-9 )99th Cir. 9>:3+ )&!ur concern must ,e the ,usiness and goodwill attached to #nited5tates trademarks% not rench trademark rights under rench law.& )internal @uotation marksomitted++K cf. Int(l 'ancorp% LLC $. 5ociete des 'ains de er et du Cercle des strangers a onaco%-*> .-d -3>% -:9 )1th Cir. *??-+ )finding that the owner of a foreign mark can esta,lish #.5.trademark rights through ad$ertising in the #nited 5tates coupled with the rendering of ser$ices to American customers a,road+.

)19+ IT CII% 1:* .-d at 934K see also Person(s Co. $. Christman% >?? .*d 9343% 934>26? )ed. Cir.9>>?+ )holding that use in Hapan is not sufficient to esta,lish priority rights in the #nited 5tates% e$enthough the #.5. competitor took the mark in ,ad faith+.

)1*+ 3 CCATD% supra note 9% ;section< *>9.

)1-+ Paris Con$ention% supra note :% art. 4)-+K see also Person(s Co.% >?? .*d at 934> )&;T9% 3>> )3th Cir. 9>:3+.

)11+ 5ee Int(l Cafe% 5.A.L. $. Dard ock Cafe Int(l )#.5.A.+% Inc.% *3* .-d 9*61% 9*6> )99th Cir. *??9+)&;T*3.

)14+ 5ee id.K 0.D.C. '!"NDA#5N% 0#I" T! TD APPLICATI!N ! TD PAI5C!NENTI!N ! TD P!TCTI!N ! IN"#5TIAL P!PT >? )9>4:+.

)16+ 3 CCATD% supra note 9% ;section< *>*3.

)1:+ Article 4,is of the Paris Con$ention pro$ides that

)9+ The countries of the ;Paris< #nion undertake% ex officio if their legislation so permits% or at there@uest of an interested party% to refuse or to cancel the registration% and to prohi,it the use% of a

trademark which constitutes a reproduction% an imitation% or a translation% lia,le to create confusion% of a mark considered ,y the competent authority of the country of registration or use to ,e well known inthat country as ,eing already the mark of a person entitled to the ,enefits of this Con$ention and usedfor identical or similar goods. These pro$isions shall also apply when the essential part of the markconstitutes a reproduction of any such well2known mark or an imitation lia,le to createconfusion therewith.

)*+ A period of at least fi$e years from the date of registration shall ,e allowed for re@uesting thecancellation of such a mark. The countries of the #nion may pro$ide for a period within whichthe prohi,ition of use must ,e re@uested.

)-+ No time limit shall ,e fixed for re@uesting the cancellation or the prohi,ition of the use of marksregistered or used in ,ad faith.

Paris Con$ention% supra note :% art. 4,isK see also ITC Ltd. $. Punchgini% Inc. )ITC II+% 1:* .-d 9-3%

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934 )*d Cir. *??6+% cert. denied% 9*: 5. Ct. *:: )*??6+K 3 CCATD% supra note 9% ;section< *>1.

)1>+ 3 CCATD% supra note 9% ;section< *>49K see also Almacenes xito 5.A. $. l 0allo eatkt.% Inc.% -:9 . 5upp. *d -*1% -*42*6 )5.".N.. *??3+K "e 'eers LE Trademark Ltd. $. "e'eers"iamond 5yndicate% Inc.% No. ?1 Ci$. 1?>> )"LC+% *??3 #.5. "ist. LJI5 >-?6% at M *9 )5.".N.. ay9:% *??3+.

)3?+ '!"NDA#5N% supra note 14% at >?.

)39+ 5ee rederick F. ostert% Fell2Bnown and amous arks Is Darmony Possi,le in the 0lo,alEillage8% :4 TA"AB P. 9?-% 9?6 )9>>4+.

)3*+ Paris Con$ention% supra note :% art. 4,isK see also 3 cCATD% supra note 9% ;section< *>4*.

)3-+ 5ee 3 CCATD% supra note 9% ;section< *>-4 )noting that 0ATT is a multilateral treaty of o$er one hundred nations aimed at reducing trade ,arriers and li,erali=ing world trade+.

)31+ 5ee TIP5% supra note :K 3 CCATD% supra note 9% ;section< *>-4.

)33+ Articles 94)*+ and 94)-+ of TIP5 pro$ide

;94)*+< Article 4his of the Paris Con$ention )9>46+ shall apply% mutatis mutandis% to ser$ices. Indetermining whether a trademark is well2known% em,ers shall take account of the knowledge of thetrademark in the rele$ant sector of the pu,lic% including knowledge in the em,er concerned whichhas ,een o,tained as a result of the promotion of the trademark.

;94)-+< Article 4his of the Paris Con$ention )9>46+ shall apply% mutatis mutandis% to goods or ser$iceswhich are not similar to those in respect of which a trademark is registered% pro$ided that use of thattrademark in relation to those goods or ser$ices would indicate a connection ,etween those goods or ser$ices and the owner of the registered trademark and pro$ided that the interests of the owner of theregistered trademark are likely to ,e damaged ,y such use.

TIP5% supra note :% arts. 94)*+% 94)-+K see also 3 CCATD% supra note 9% ;section< *>4-.

)34+ TIP5% supra note :% art. 94)*+ )emphasis added+.

)36+ Paris Con$ention% supra note :% art. 4,is.

)3:+ ostert% supra note 39% at 9?:.

)3>+ 5ee id.

)4?+ 5ee 3 CCATD% supra note 9% ;section< *>4*K Alexis Feiss,erger% Note% Is ame Alone5ufficient to Create Priority ights An International Perspecti$e on the Eia,ility of the amous/Fell2Bnown arks "octrine% *1 CA"!! AT5 G NT. L.H. 6-> )*??4+ )comparing the treatment of the

famous marks exception in the #nited 5tates to its treatment in 'ra=il% China% and 5outh Africa+.

)49+ Compare 0rupo 0igante 5.A. de C.E. $. "allo G Co. )0rupo II+% ->9 .-d 9?::% 9?>: )>th Cir.*??1+ )finding that% in addition to determining that a mark satisfies the secondary meaning test% a courtmust also ,e satisfied that &a su,stantial percentage of consumers in the rele$ant American market isfamiliar with the foreign mark&+% with 0rupo 0igante 5.A. de C.E. $. "allo G Co. )0rupo 9+% 99> .5upp. *d 9?:-% 9?>9 )C.". Cal. *???+ )finding that a mark need only attain secondary meaning in therele$ant sector of the pu,lic to @ualify as a famous mark for purposes of the famous marks exception+%$acated% ->9 .-d 9?:: )>th Cir. *??1+.

)4*+ 5ee Eauda,le $. ontmartre% Inc.% 9>- N..5.*d --* )N.. 5up. Ct. 9>3>+K aison Prunier $.Prunier(s est. G Cafe% Inc.% *:: N..5. 3*> )N.. 5up. Ct. 9>-4+.

)4-+ *:: N..5. 3*> )N.. 5up. Ct. 9>-4+.

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)41+ Id. at 3-?2-9.

)43+ Id. at 3-?.

)44+ Id.

)46+ Id.

)4:+ Id. at 3-?2-9.

)4>+ Id. at 3-9.

)6?+ 5ee ITC Ltd. $. Punchgini% Inc. )ITC II+% 1:* .-d 9-3% 936 n.94 )*d Cir. *??6+% cert. denied% 9*:5. Ct. *:: )*??6+ )pro$iding the translation as &$erything that comes from the sea&+.

)69+ aison Prunier% *:: N..5. at 3-9.

)6*+ Id.

)6-+ Id. at 3-:.

)61+ Id. at 3-*. Article 9?,is of the Paris Con$ention pro$ides

)9+ The countries of the #nion are ,ound to assure to nationals of such countries effecti$e protectionagainst unfair competition.

)*+ Any act of competition contrary to honest practices in industrial or commercial matters constitutesan act of unfair competition.

)-+ The following in particular shall ,e prohi,ited

9. all acts of such a nature as to create confusion ,y any means whate$er with the esta,lishment% the

goods% or the industrial or commercial acti$ities% of a competitorK

*. false allegations in the course of trade of such a nature as to discredit the esta,lishment% thegoods% or the industrial or commercial acti$ities% of a competitorK

-. indications or allegations the use of which in the course of trade is lia,le to mislead the pu,lic as tothe nature% the manufacturing process% the characteristics% the suita,ility for their purpose% or the@uantity% of the goods.

Paris Con$ention% supra note :% art. 9?,is.

)63+ aison Prunier% *:: N..5. at 3-32-4.

)64+ Id. at 3-6.

)66+ Id. at 3-1 )@uoting Long(s Dat 5tores Corp. $. Long(s Clothes% Inc.% *-9 N..5. 9?6% 9?: )N.. App. "i$. 9>*:++.

)6:+ 5ee Eauda,le $. ontmartre% Inc.% 9>- N..5.*d --* )N.. 5up. Ct. 9>3>+.

)6>+ 9>- N..5.*d --* )N.. 5up. Ct. 9>3>+.

):?+ Id. at --1.

):9+ Id. at --3.

):*+ Id. at --1.

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