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Famous Marks Doctrine: A Defeat in New York State

BY Kyle-Beth Hilfer
January 31, 2008

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.

The ITC Case

ITC owns an Indian restaurant in New Delhi, India called 'Bukhara' and 'Bukhara' restaurants elsewhere in Asia. ITC had operated restaurants in Manhattan and Chicago from 1986 through 1997, and held a registered trademark for restaurant services. Two years after ITC ceased its domestic restaurant operations, in 1999, the defendants, who included former employees of ITC's New York restaurant, opened Indian restaurants in New York City under the name 'Bukhara Grill.' They adopted the Bukhara name and allegedly incorporated logos and decor that were similar to ITC's original restaurant. ITC filed its lawsuit in February 2003, after defendants' attorneys rejected ITC's cease and desist letters, asserting abandonment.

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