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A Roll of the Dice for International Trademark Owners

By Jonathan E. Moskin

As international businesses seek to expand across borders, including by availing themselves of legal tools (such as the Madrid Protocol) to register in the United States trademarks developed abroad, there is surprisingly little guidance as to what enforceable rights under U.S. law actually result from this process. However, as shown by the recent decision, In re Casino de Monaco Trademark Litigation, 07 Civ. 4802 DAB, 2010 U.S. Dist. LEXIS 33950 (S.D.N.Y. March 31, 2010), even well-established foreign companies can encounter difficulties enforcing rights not grounded in traditional U.S. trademark law principles of use in commerce.

There are perhaps few casino operators of longer standing than Societe de Bains de Mer et du Cercle des Etrangers a Monaco, (“SBM”) owner of the Casino de Monte Carlo (dating to 1866). However, in In re Casino de Monaco Trademark Litigation, the U.S. District Court for the Southern District of New York concluded that SBM possesses no rights in the United States in its registered trademark “Casino de Monaco” and placed in doubt what rights, if any, it might have in the United States in the name “Casino de Monte Carlo.” The court thus: 1) granted summary judgment dismissing SBM's claim for trademark infringement arising from defendant PlayShare's use of the name “Grand Monaco Casino” (subsequently renamed “Grand Mondial Casino”) for its online casino; 2) canceled SBM's registration for the trademark “Casino de Monaco,” and 3) without finally deciding the matter, held it unlikely that SBM could prove ownership in the United States of enforceable rights in the trademark “Casino de Monte Carlo.”

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