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Second Circuit Limits Famous Foreign Trademark Protection Without Domestic Use

By Kyle-Beth Hilfer

The Second Circuit recently ruled that, in the absence of specific Congressional legislation, owners of famous foreign trademarks must show use within the United States to avail themselves of the protections offered by American federal law. The Court of Appeals also certified questions to the district court as to whether New York common law protects a famous foreign trademark that only has been used in a foreign country. The case is an instructive overview of the law of trademark abandonment and the famous marks doctrine.

On March 28, 2007, the Second Circuit ruled in favor of defendants Punchgini, Inc., Bukhara Grill, II, Inc., and several named individuals ('Defendants') who had contested plaintiffs ITC Limited's and ITC Hotels Limited's ('ITC') claims of trademark infringement, unfair competition, and false advertising. ITC sought protection of its 'famous mark' for restaurant services based on continuing international use. The Second Circuit upheld the district court's findings that ITC had stopped using the mark domestically for more than three years. ITC's domestic abandonment was the death knell of its claims.

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