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What Protection Do Foreign Firms' Trademarks Have In The United States?

By Patrick J. Jennings
March 29, 2005

What happens when two businesses, one an insurance broker on the Canadian side of Niagara Falls and the other a bank holding company on the American side, begin using similar domain names and trademarks that result in thousands of misdirected e-mails?

Due to the increasing integration of the global economy and the Internet's pervasive effect on modern-day trademark law, the aggrieved parties have at least three different legal bodies from which to seek relief:

  • The Internet Corporation for Assigned Names and Numbers (ICANN);
  • A U.S. court; or
  • The Trademark Trial and Appeal Board (TTAB), an administrative body established by the United States Patent and Trademark Office (USPTO) to adjudicate disputes regarding the right to obtain and maintain federal trademark registrations.

This article describes one party's choice of the TTAB, which is expected to decide the case in the coming months. As part of the TTAB's outreach efforts to the trademark bar, the Board occasionally hears actual oral arguments in pending cases – with the consent of parties to the actions. In this case, a hearing for final arguments was held at the New York City headquarters of the CLE group Practising Law Institute in February. Here's the gist of the arguments.

First Niagara Insurance Brokers Inc.

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