Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Foreign Use of a Mark May Establish Trademark Priority in the U.S.
In the recent decision of First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc. (Fed. Cir. 2007) (the 'Federal Circuit's decision'), the Federal Circuit overturned a ruling by the Trademark Trial and Appeal Board (the 'Board') dismissing an opposition by First Niagara Insurance Brokers ('FN-Canada'), a Canadian company, to registration of 'First Niagara' and related marks by First Niagara Financial Group ('FN-US'), a U.S. company. In rendering its holding, the Federal Circuit declared that, in some cases, what would seem to be purely foreign trademark activity may establish superior trademark rights in the United States.
Company Histories of FN-Canada and FN-US
FN-Canada is an insurance broker that sells insurance policies issued by other companies in exchange for a commission. FN-Canada has been in business since 1886 and assumed the name 'First Niagara Insurance Brokers' in 1984. FN-Canada is located in Niagara Falls in Ontario, Canada near Niagara Falls, NY, though FN-Canada has no actual business presence in the United States and is not licensed to sell insurance in the United States. However, FN-Canada does have ties to the United States. For example:
- FN-Canada sells insurance policies issued by U.S. companies;
- FN-Canada sells insurance policies to U.S. citizens that have Canadian property;
- FN-Canada provides insurance to Canadians who are traveling to the United States; and
- FN-Canada has customers such as the Niagara Falls Bridge Commission, a joint United States-Canada commission that operates bridges between the countries.
Though FN-Canada does not own any registered U.S. trademarks, it uses several unregistered marks in its advertising and correspondence, such as 'First Niagara' and 'First Niagara Insurance Brokers.'
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Anti-Assignment Override Provisions
UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?