Famous Marks Doctrine: A Defeat in New York State

Last year, we reported on the Second Circuit's limitation of famous foreign trademark protection without domestic use. In March 2007, in ITC Limited v. Punchgini, et al., the Second Circuit held there was no federal 'famous marks' exception and upheld the district court's findings that despite foreign use of plaintiff's mark, ITC had abandoned its trademark domestically, and therefore could not seek protection under federal law for trademark infringement, unfair competition, and false advertising. The circuit court then certified questions to the New York Court of Appeals as to whether New York common law protects a trademark that despite being used only overseas might nonetheless be sufficiently famous in New York State to warrant barring others from using the name. In December 2007, the New York Court of Appeals declined to recognize the 'famous marks' doctrine, but it did confirm the possibility of protection under existing common law theories of misappropriation in certain limited circumstances.