Anne Gilson LaLonde on the "Famous Marks Doctrine": Foreign Trademark Renown as the Basis for Protection in the United States
Your international client does not use its mark in the United States, though it is quite well known here. A United States company copies that mark and uses it on its own goods in the United States. Legal? Yes, in the Second Circuit. No, in the Ninth Circuit. Compare ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir.), cert. denied, 128 S. Ct. 288 (2007) with Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004). This division in the appellate courts over the "famous marks doctrine" will make trademark clearance in the U.S. more difficult and may make trademark enforcement outside the U.S. more challenging as well. This commentary, written by Anne Gilson LaLonde, author of Gilson on Trademarks, explains the reasons behind the circuit split and flags important issues for both domestic and international trademark owners.
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