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

The plaintiff/opposer is First Niagara Insurance Brokers Inc. (First Niagara Insurance - Canada), a family-owned Canadian insurance broker with two offices in Ontario. Its main office is in Niagara Falls, Ontario, and the other is in Niagara on the Lake, Ontario. The former is about 3 miles from the United States, while the latter is about 8 miles from the United States. First Niagara Insurance – Canada owns the Web site www.firstniagara.com. As of July 18, 2002, the company had received at least 2600 e-mails that it claims were misdirected. Many of these e-mails were apparently intended for First Niagara Financial – U.S.

Also, since 1984, First Niagara Insurance – Canada has used the marks FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS and FIRST NIAGARA BROKERS, INC. & Design in Canada in connection with a wide range of insurance-related services. These services include:

• Commercial insurance;
• Municipal insurance;
• Athletic bonus insurance;
• Home insurance;
• Boat and yacht insurance;
• Automobile insurance;
• Travel and medical insurance; and
• Life insurance.

First Niagara Insurance – Canada provides general commercial liability policies to Canadian companies that conduct a majority of their business in the United States, transport goods into and through the United States, and export goods to the United States. It also places insurance for tour operators who organize travel into the United States, and insures the Canadian homes of U.S. citizens and Canadian municipalities. This is in addition to insuring boats that travel into American waters and cars that travel on American roads. All of its insurance policies are issued by Canadian underwriting companies and are governed by Canadian law.

First Niagara Insurance – Canada is not licensed or registered to do business, or provide insurance services in the United States. It has no offices in the United States. The company also has never filed any U.S. tax returns (federal or state). It has no bank or investment accounts in the United States, nor does it own or lease any real property there, and has no U.S. agents. First Niagara Insurance – Canada also has never collected any premiums in the United States, doesn't advertise in any U.S. newspapers or radio stations, and doesn't own any U.S. trademark registrations for its FIRST NIAGARA marks. But it does advertise in Canadian newspapers that are distributed on the American side of Niagara Falls, and on Canadian radio stations whose signals are heard on the American side.

First Niagara Financial Group Inc.

The defendant/applicant is First Niagara Financial Group Inc. (First Niagara Financial – U.S.), a publicly traded bank holding company headquartered in Lockport, NY. It used to be known as Lockport Savings Bank, but changed its name to First Niagara Bank at the end of 1999, after conducting a comprehensive U.S. trademark clearance search that did not reveal marks for First Niagara Insurance – Canada. Between Jan. 7 and April 18, 2000, First Niagara Financial – U.S. filed six intent-to-use trademark applications to register the marks FIRST NIAGARA, FIRST NIAGARA & Design, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA e-CD, FIRST NIAGARA ONLINE, and FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE with the USPTO. These applications covered a variety of banking and financial services, including office-equipment leasing, and banking, insurance, financial, annuities, and investment and securities-brokerage services, along with construction-equipment, building-machinery and motor-vehicle leasing. Around the same time, First Niagara Insurance – U.S. also began using the Web site www.first-niagara.com.

The Dispute

Several months after First Niagara Financial – U.S. filed its trademark applications and began using its domain name, First Niagara Insurance – Canada contacted First Niagara Financial – U.S. about the misdirected e-mails. The parties were not able to resolve the matter. As a result, First Niagara Insurance – Canada has opposed the registration of all six of First Niagara Financial – U.S.' marks, alleging that they're likely to cause confusion with First Niagara Insurance – Canada's marks.

First Niagara Insurance – Canada also claimed that First Niagara Financial – U.S.' marks are likely to cause confusion with its FIRST NIAGARA marks, which have not been registered with the USPTO, because the marks are nearly identical and because both are used in connection with insurance services. First Niagara Financial – U.S., however, contends that First Niagara Insurance – Canada is not using the marks in the United States, and, thus, has no common-law rights on which to base opposition. It also said that confusion isn't likely.

The Primary Issue

Though both parties address the underlying likelihood-of-confusion issue raised in First Niagara Insurance – Canada's opposition, the threshold issue in this case is whether First Niagara Insurance – Canada is or has been using its marks in commerce in or with the United States, as defined by the Lanham Act, giving it prior common-law rights in the FIRST NIAGARA marks.

What Constitutes Use of a Trademark in Commerce?

According to the Lanham Act, “a mark shall be deemed to be in use in commerce … on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” (See, eg, 15 U.S.C. '1127.)

The Act also states that commerce includes “all commerce which may be lawfully regulated by Congress.” Under the Commerce Clause of the U.S. Constitution, Congress has the power to regulate “commerce with foreign nations and among the several States ….” Thus, a party asserting use of a mark in commerce in connection with services must prove that the mark has been “used” or “displayed” in the sale or advertising of services, and that services have been rendered in commerce between the states, or commerce between the United States and a foreign country. “Use sufficient to support service mark registration includes such things as business cards, stationery, circulars, brochures, invoices, direct mailing pieces, advertisements, store signs and almost every type of printed matter.” See, Penta Hotels, Ltd. v. Penta Tours, 9 USPQ2d 1081 (D.Conn. 1988).

First Niagara Insurance's Arguments

Applying the Lanham Act's definition of “use in commerce” to the facts in this case, First Niagara Insurance – Canada asserts that its marks have been used or displayed in the sale or advertising of services in commerce – between the states, and between the United States and Canada.

First Niagara Insurance – Canada began by arguing that its radio and newspaper advertisements, and its sports sponsorships constitute the continuous use and display of its marks in advertising its services ' in the United States and Canada. It also notes that its marks appear on the letterhead, calling cards, invoices, and insurance certificates that it sends to clients and business partners in the United States and Canada.

Next, First Niagara Insurance – Canada asserted that the acts of selling insurance to Americans who own property in Canada, selling insurance that covers boats and vehicles in which interstate trips are made on American waterways and roads, negotiating claims that arise from insurance incidents that occur in the United States, cooperating with American insurance brokers and conducting related insurance activities in the United States demonstrate use of its marks in commerce between or among the states.

In making this argument, it relied in part on the holdings in Morningside Group Ltd. v. Morningside Capital Group, LLC, 183 F.3d 133 (2d Cir. 1999) and Penta Hotels, 9 U.S.P.Q.2d 1081 (D. Conn. 1988), both of which are discussed below.

In Morningside, the Second Circuit found that the Hong Kong-based Morningside Group had conducted “material aspects” of its investment services in the United States. See, Morningside Group, 182 F.3d at 136. The court placed particular emphasis on the fact that the Morningside Group had structured and financed investments in a broad range of American companies and assisted in managing their acquisitions, solicited coinvestors in those endeavors, assisted Asian companies in acquiring U.S. technology through negotiations of joint ventures and licensing transactions, and provided financial advice to American investors concerning potential investments in Asia. First Niagara Insurance – Canada also claimed that it, too, conducts material aspects of its business in the United States.

In Penta Hotels, the court found that the plaintiff, a foreign hotel company that eventually opened a hotel in New York City after several years of a loose affiliation with an existing New York hotel, had advertised and displayed its mark in connection with the sale or advertising of services in the United States. See, Penta Hotels, 9 USPQ at 1094. As evidence of this, the court cited Penta Hotel's use of its mark on brochures, fact sheets, rate sheets, posters, hotel signage and advertisements placed in American trade publications. Relying on a line of cases holding that the rendering of services in one state to interstate travelers constitutes use in commerce, the court also determined that Penta Hotels had rendered services in interstate commerce in the United States by taking and confirming hotel reservations by its New York-based corporate sales office. It also stated that taking hotel reservations is an “integral part” of providing hotel services.

By analogy, First Niagara Insurance – Canada contended that issuing insurance certificates to Canadian residents who travel in the United States, engaging in cobrokerage arrangements with American insurance brokers, and providing insurance and commercial-liability services to American citizens who own property in Canada are integral parts of its Canadian insurance-related services. And because the U.S. Supreme Court has held that Congress may regulate the business of insurance (See, United States v. South-Eastern Underwriters Assn., 322 U.S. 533 (1944)), it argued that insuring Canadian citizens who drive on American roads is synonymous with rendering services in interstate commerce.

Moreover, based on facts set forth above and the holding in Int'l. BanCorp. LLC. V. Societe des Bains der Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359 (4th Cir. 2003), cert. denied 124 S. Ct. 1052 (2004), First Niagara Insurance – Canada claimed that it also renders services in commerce between the United States and Canada. In Int'l BanCorp., the Fourth Circuit held that the use of a mark in connection with casino services advertised in the United States but actually rendered in Monaco constituted use of the mark in commerce between the United States and a foreign country.

First Niagara Financial's Arguments

First Niagara Financial – U.S. countered First Niagara Insurance – Canada's arguments by noting that the Board has routinely rejected attempts by foreign parties to assert use of their marks in commerce in the United States based on contacts with American citizens. It made an analogy between First Niagara Insurance – Canada's advertising and promotional activities in this case and the facts in Linville v. Rivard, 26 USPQ2d 1508 (T.T.A.B. 1993) vacated and remanded on other grounds, 31 USPQ2d 1218 (Fed. Cir. 1993) ' a cancellation that involved a Canadian hairdresser. In that case, the Board found no use in commerce where the respondent:

• Did not operate a hairdressing or beauty salon in the United States for a 5-year period;
• Owned 33 hairdressing and beauty salons, all of which were located in Canada;
• Advertised its services on Canadian radio stations that also reached the United States;
• Advertised in Canadian newspapers that may have been read by people in the United States; and
• Distributed promotional materials at the North Dakota State Fair.

First Niagara Financial – U.S. said that the Board should treat the facts in this case as no different from the facts in Linville. Indeed, it noted that First Niagara Insurance – Canada has not taken steps to obtain insurance licenses, open offices, hire employees or register its trademarks in the United States. These facts, according to First Niagara Financial – U.S., indicate that First Niagara Insurance – Canada has not actually rendered any services in the United States.

First Niagara Financial – U.S. also relied on Mother's Restaurants Inc. v. Mother's Other Kitchen, Inc., 218 USPQ 1046 (T.T.A.B. 1983), in which the opposer claimed priority of use by virtue of the fact that it had advertised its restaurants in radio announcements broadcast on Canadian radio stations whose signals reached the United States, that it had distributed promotional materials advertising its restaurants at tourist-information booths in Ontario and that travelers from the United States had dined at its restaurants. The Board held that prior advertising and promotion of a mark in a foreign country does not create exclusive rights to that mark in the United States against another party who in good faith adopts a similar mark prior to the foreign user's entry into the American market.

Further, First Niagara Financial – U.S. asserted that First Niagara Insurance – Canada's advertising and promotion activities in the United States resemble the plaintiff's endeavors in Buti Impressa Perosa S.R.L., 139 F.3d 98 (2nd Cir. 1998). In that case, the Second Circuit decided that the distribution in the United States of T-shirts, key chains and cards by the owner of a restaurant in Italy did not establish use of the mark in interstate commerce in the United States. See, Buti, 139 F.3d at 98. In addition to not having any offices or employees in the United States, First Niagara Financial – U.S. also pointed out that First Niagara Insurance – Canada's American advertising has been minimal and sporadic, that some of the advertising took place 20 years ago, and that neither providing Canadian insurance to Americans who own property in Canada nor insuring Canadian motorists who travel into the United States constitutes rendering a service in America. It also alleged that First Niagara Insurance – Canada's policyholders are the people moving in commerce, not the insurance company.

In short, First Niagara Financial – U.S. claimed that First Niagara Insurance – Canada's business is completely foreign to the United States based on the fact that it maintains no offices or licenses in America, pays no licensing fees in the United States, does not comply with American insurance laws, has no employees in the United States and pays no U.S. taxes.

Conclusion

No matter which party's arguments prove more persuasive, the Board's decision in this case is likely to have an impact on the ability of foreign trademark owners to protect their marks in the United States. If it rules in favor of First Niagara Insurance – Canada, the Board may open the door for a number of creative arguments on which foreign trademark owners could premise Lanham Act claims in the United States. However, a decision in favor of First Niagara Financial – U.S. will more than likely make it more difficult for foreign trademark owners to assert rights in their marks in the United States.

Either way, this case shows that more than ever, national, regional and local businesses are increasingly involved in international commerce, putting their marks, trade names and domain names in conflict in foreign countries. The recent eligibility of U.S. businesses for trademark registration in the European Union and under the Madrid Protocol are other instances of the trend.

Resources mentioned in this article

First Niagara Insurance – Canada: www.firstniagara.com.

First Niagara Insurance – U.S.: www.first-niagara.com.

Internet Corporation for Assigned Names and Numbers (ICANN) – www.icann.org.

Pillsbury Winthrop LLP – www.pillsburywinthrop.com.

Practising Law Institute – www.pli.edu.

Trademark Trial and Appeal Board – www.uspto.gov/web/offices/dcom/ttab.

U.S. Courts – www.uscourts.gov.

U.S. Patent and Trademark Office – www.uspto.gov.

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.

The plaintiff/opposer is First Niagara Insurance Brokers Inc. (First Niagara Insurance - Canada), a family-owned Canadian insurance broker with two offices in Ontario. Its main office is in Niagara Falls, Ontario, and the other is in Niagara on the Lake, Ontario. The former is about 3 miles from the United States, while the latter is about 8 miles from the United States. First Niagara Insurance – Canada owns the Web site www.firstniagara.com. As of July 18, 2002, the company had received at least 2600 e-mails that it claims were misdirected. Many of these e-mails were apparently intended for First Niagara Financial – U.S.

Also, since 1984, First Niagara Insurance – Canada has used the marks FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS and FIRST NIAGARA BROKERS, INC. & Design in Canada in connection with a wide range of insurance-related services. These services include:

• Commercial insurance;
• Municipal insurance;
• Athletic bonus insurance;
• Home insurance;
• Boat and yacht insurance;
• Automobile insurance;
• Travel and medical insurance; and
• Life insurance.

First Niagara Insurance – Canada provides general commercial liability policies to Canadian companies that conduct a majority of their business in the United States, transport goods into and through the United States, and export goods to the United States. It also places insurance for tour operators who organize travel into the United States, and insures the Canadian homes of U.S. citizens and Canadian municipalities. This is in addition to insuring boats that travel into American waters and cars that travel on American roads. All of its insurance policies are issued by Canadian underwriting companies and are governed by Canadian law.

First Niagara Insurance – Canada is not licensed or registered to do business, or provide insurance services in the United States. It has no offices in the United States. The company also has never filed any U.S. tax returns (federal or state). It has no bank or investment accounts in the United States, nor does it own or lease any real property there, and has no U.S. agents. First Niagara Insurance – Canada also has never collected any premiums in the United States, doesn't advertise in any U.S. newspapers or radio stations, and doesn't own any U.S. trademark registrations for its FIRST NIAGARA marks. But it does advertise in Canadian newspapers that are distributed on the American side of Niagara Falls, and on Canadian radio stations whose signals are heard on the American side.

First Niagara Financial Group Inc.

The defendant/applicant is First Niagara Financial Group Inc. (First Niagara Financial – U.S.), a publicly traded bank holding company headquartered in Lockport, NY. It used to be known as Lockport Savings Bank, but changed its name to First Niagara Bank at the end of 1999, after conducting a comprehensive U.S. trademark clearance search that did not reveal marks for First Niagara Insurance – Canada. Between Jan. 7 and April 18, 2000, First Niagara Financial – U.S. filed six intent-to-use trademark applications to register the marks FIRST NIAGARA, FIRST NIAGARA & Design, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA e-CD, FIRST NIAGARA ONLINE, and FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE with the USPTO. These applications covered a variety of banking and financial services, including office-equipment leasing, and banking, insurance, financial, annuities, and investment and securities-brokerage services, along with construction-equipment, building-machinery and motor-vehicle leasing. Around the same time, First Niagara Insurance – U.S. also began using the Web site www.first-niagara.com.

The Dispute

Several months after First Niagara Financial – U.S. filed its trademark applications and began using its domain name, First Niagara Insurance – Canada contacted First Niagara Financial – U.S. about the misdirected e-mails. The parties were not able to resolve the matter. As a result, First Niagara Insurance – Canada has opposed the registration of all six of First Niagara Financial – U.S.' marks, alleging that they're likely to cause confusion with First Niagara Insurance – Canada's marks.

First Niagara Insurance – Canada also claimed that First Niagara Financial – U.S.' marks are likely to cause confusion with its FIRST NIAGARA marks, which have not been registered with the USPTO, because the marks are nearly identical and because both are used in connection with insurance services. First Niagara Financial – U.S., however, contends that First Niagara Insurance – Canada is not using the marks in the United States, and, thus, has no common-law rights on which to base opposition. It also said that confusion isn't likely.

The Primary Issue

Though both parties address the underlying likelihood-of-confusion issue raised in First Niagara Insurance – Canada's opposition, the threshold issue in this case is whether First Niagara Insurance – Canada is or has been using its marks in commerce in or with the United States, as defined by the Lanham Act, giving it prior common-law rights in the FIRST NIAGARA marks.

What Constitutes Use of a Trademark in Commerce?

According to the Lanham Act, “a mark shall be deemed to be in use in commerce … on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” (See, eg, 15 U.S.C. '1127.)

The Act also states that commerce includes “all commerce which may be lawfully regulated by Congress.” Under the Commerce Clause of the U.S. Constitution, Congress has the power to regulate “commerce with foreign nations and among the several States ….” Thus, a party asserting use of a mark in commerce in connection with services must prove that the mark has been “used” or “displayed” in the sale or advertising of services, and that services have been rendered in commerce between the states, or commerce between the United States and a foreign country. “Use sufficient to support service mark registration includes such things as business cards, stationery, circulars, brochures, invoices, direct mailing pieces, advertisements, store signs and almost every type of printed matter.” See , Penta Hotels, Ltd. v. Penta Tours , 9 USPQ2d 1081 (D.Conn. 1988).

First Niagara Insurance's Arguments

Applying the Lanham Act's definition of “use in commerce” to the facts in this case, First Niagara Insurance – Canada asserts that its marks have been used or displayed in the sale or advertising of services in commerce – between the states, and between the United States and Canada.

First Niagara Insurance – Canada began by arguing that its radio and newspaper advertisements, and its sports sponsorships constitute the continuous use and display of its marks in advertising its services ' in the United States and Canada. It also notes that its marks appear on the letterhead, calling cards, invoices, and insurance certificates that it sends to clients and business partners in the United States and Canada.

Next, First Niagara Insurance – Canada asserted that the acts of selling insurance to Americans who own property in Canada, selling insurance that covers boats and vehicles in which interstate trips are made on American waterways and roads, negotiating claims that arise from insurance incidents that occur in the United States, cooperating with American insurance brokers and conducting related insurance activities in the United States demonstrate use of its marks in commerce between or among the states.

In making this argument, it relied in part on the holdings in Morningside Group Ltd. v. Morningside Capital Group, LLC , 183 F.3d 133 (2d Cir. 1999) and Penta Hotels , 9 U.S.P.Q.2d 1081 (D. Conn. 1988), both of which are discussed below.

In Morningside, the Second Circuit found that the Hong Kong-based Morningside Group had conducted “material aspects” of its investment services in the United States. See, Morningside Group, 182 F.3d at 136. The court placed particular emphasis on the fact that the Morningside Group had structured and financed investments in a broad range of American companies and assisted in managing their acquisitions, solicited coinvestors in those endeavors, assisted Asian companies in acquiring U.S. technology through negotiations of joint ventures and licensing transactions, and provided financial advice to American investors concerning potential investments in Asia. First Niagara Insurance – Canada also claimed that it, too, conducts material aspects of its business in the United States.

In Penta Hotels, the court found that the plaintiff, a foreign hotel company that eventually opened a hotel in New York City after several years of a loose affiliation with an existing New York hotel, had advertised and displayed its mark in connection with the sale or advertising of services in the United States. See, Penta Hotels, 9 USPQ at 1094. As evidence of this, the court cited Penta Hotel's use of its mark on brochures, fact sheets, rate sheets, posters, hotel signage and advertisements placed in American trade publications. Relying on a line of cases holding that the rendering of services in one state to interstate travelers constitutes use in commerce, the court also determined that Penta Hotels had rendered services in interstate commerce in the United States by taking and confirming hotel reservations by its New York-based corporate sales office. It also stated that taking hotel reservations is an “integral part” of providing hotel services.

By analogy, First Niagara Insurance – Canada contended that issuing insurance certificates to Canadian residents who travel in the United States, engaging in cobrokerage arrangements with American insurance brokers, and providing insurance and commercial-liability services to American citizens who own property in Canada are integral parts of its Canadian insurance-related services. And because the U.S. Supreme Court has held that Congress may regulate the business of insurance ( See , United States v. South-Eastern Underwriters Assn. , 322 U.S. 533 (1944)), it argued that insuring Canadian citizens who drive on American roads is synonymous with rendering services in interstate commerce.

Moreover, based on facts set forth above and the holding in Int'l. BanCorp. LLC. V. Societe des Bains der Mer et du Cercle des Estrangers a Monaco , 329 F.3d 359 (4th Cir. 2003), cert. denied 124 S. Ct. 1052 (2004), First Niagara Insurance – Canada claimed that it also renders services in commerce between the United States and Canada. In Int'l BanCorp., the Fourth Circuit held that the use of a mark in connection with casino services advertised in the United States but actually rendered in Monaco constituted use of the mark in commerce between the United States and a foreign country.

First Niagara Financial's Arguments

First Niagara Financial – U.S. countered First Niagara Insurance – Canada's arguments by noting that the Board has routinely rejected attempts by foreign parties to assert use of their marks in commerce in the United States based on contacts with American citizens. It made an analogy between First Niagara Insurance – Canada's advertising and promotional activities in this case and the facts in Linville v. Rivard , 26 USPQ2d 1508 (T.T.A.B. 1993) vacated and remanded on other grounds, 31 USPQ2d 1218 (Fed. Cir. 1993) ' a cancellation that involved a Canadian hairdresser. In that case, the Board found no use in commerce where the respondent:

• Did not operate a hairdressing or beauty salon in the United States for a 5-year period;
• Owned 33 hairdressing and beauty salons, all of which were located in Canada;
• Advertised its services on Canadian radio stations that also reached the United States;
• Advertised in Canadian newspapers that may have been read by people in the United States; and
• Distributed promotional materials at the North Dakota State Fair.

First Niagara Financial – U.S. said that the Board should treat the facts in this case as no different from the facts in Linville. Indeed, it noted that First Niagara Insurance – Canada has not taken steps to obtain insurance licenses, open offices, hire employees or register its trademarks in the United States. These facts, according to First Niagara Financial – U.S., indicate that First Niagara Insurance – Canada has not actually rendered any services in the United States.

First Niagara Financial – U.S. also relied on Mother's Restaurants Inc. v. Mother's Other Kitchen, Inc., 218 USPQ 1046 (T.T.A.B. 1983), in which the opposer claimed priority of use by virtue of the fact that it had advertised its restaurants in radio announcements broadcast on Canadian radio stations whose signals reached the United States, that it had distributed promotional materials advertising its restaurants at tourist-information booths in Ontario and that travelers from the United States had dined at its restaurants. The Board held that prior advertising and promotion of a mark in a foreign country does not create exclusive rights to that mark in the United States against another party who in good faith adopts a similar mark prior to the foreign user's entry into the American market.

Further, First Niagara Financial – U.S. asserted that First Niagara Insurance – Canada's advertising and promotion activities in the United States resemble the plaintiff's endeavors in Buti Impressa Perosa S.R.L., 139 F.3d 98 (2nd Cir. 1998). In that case, the Second Circuit decided that the distribution in the United States of T-shirts, key chains and cards by the owner of a restaurant in Italy did not establish use of the mark in interstate commerce in the United States. See, Buti, 139 F.3d at 98. In addition to not having any offices or employees in the United States, First Niagara Financial – U.S. also pointed out that First Niagara Insurance – Canada's American advertising has been minimal and sporadic, that some of the advertising took place 20 years ago, and that neither providing Canadian insurance to Americans who own property in Canada nor insuring Canadian motorists who travel into the United States constitutes rendering a service in America. It also alleged that First Niagara Insurance – Canada's policyholders are the people moving in commerce, not the insurance company.

In short, First Niagara Financial – U.S. claimed that First Niagara Insurance – Canada's business is completely foreign to the United States based on the fact that it maintains no offices or licenses in America, pays no licensing fees in the United States, does not comply with American insurance laws, has no employees in the United States and pays no U.S. taxes.

Conclusion

No matter which party's arguments prove more persuasive, the Board's decision in this case is likely to have an impact on the ability of foreign trademark owners to protect their marks in the United States. If it rules in favor of First Niagara Insurance – Canada, the Board may open the door for a number of creative arguments on which foreign trademark owners could premise Lanham Act claims in the United States. However, a decision in favor of First Niagara Financial – U.S. will more than likely make it more difficult for foreign trademark owners to assert rights in their marks in the United States.

Either way, this case shows that more than ever, national, regional and local businesses are increasingly involved in international commerce, putting their marks, trade names and domain names in conflict in foreign countries. The recent eligibility of U.S. businesses for trademark registration in the European Union and under the Madrid Protocol are other instances of the trend.

Resources mentioned in this article

First Niagara Insurance – Canada: www.firstniagara.com.

First Niagara Insurance – U.S.: www.first-niagara.com.

Internet Corporation for Assigned Names and Numbers (ICANN) – www.icann.org.

Pillsbury Winthrop LLP – www.pillsburywinthrop.com.

Practising Law Institute – www.pli.edu.

Trademark Trial and Appeal Board – www.uspto.gov/web/offices/dcom/ttab.

U.S. Courts – www.uscourts.gov.

U.S. Patent and Trademark Office – www.uspto.gov.