ITC Limited v. Punchgini, Inc. (2nd Cir. 2007)

d e f e n d a n t s ' use of a mark for restaurant services that plaintiffs had stopped using in the U n i t e d States for more than three years but that they assert nevertheless qualifies for pro tectio n as a "famous mark" based on continuing international use.

Decision affirmed in part; reserved in part pending the response of the New York C o ur t of Appeals to certified questions of state law.

ETHAN HORWITZ (Kandis M. Koustenis, William F. Sheehan, Robert D.

Carr oll, Terri L. McHenry, on the brief), Goodwin Procter, New York, Ne w York, for Plaintiffs.

M ICHE LLE MANCINO MARSH (Michael J. Freno, on the brief), Kenyon & Ke nyon , New York, New York, for Defendants.

REENA RAGGI, Circuit Judge: This case requires us to decide, among other things, the applicability of the "famous m a r k s " doctrine to a claim for unfair competition under federal and state law. Plaintiffs ITC L i m i t e d and ITC Hotels Limited (collectively "ITC") held a registered United States trademark for restaurant services: "Bukhara." They sued defendants, Punchgini, Inc., Buk hara Grill II, Inc., and certain named individuals associated with these businesses, in the U n i t e d States District Court for the Southern District of New York (Gerard E. Lynch, Judge) c l a im i n g that defendants' use of a similar mark and related trade dress constituted trademark i n f r in g e m e n t, unfair competition, and false advertising in violation of federal and state law.

I T C now appeals from the district court's award of summary judgment in favor of defendants on all claims. See ITC Ltd. v. Punchgini, Inc., 373 F. Supp. 2d 275 (S.D.N.Y. 2005).

H a v i n g reviewed the record de novo, we affirm the award of summary judgment on IT C's infringement claim, concluding, as did the district court, that ITC abandoned its Buk hara mark for restaurant services in the United States. To the extent ITC insists that the " f a m o u s marks" doctrine nevertheless permits it to sue defendants for unfair competition b e c a u s e its continued international use of the mark led to a federally protected right, we c o n c l u d e that Congress has not yet incorporated that doctrine into federal trademark law.2 T h e r e f o r e , we affirm the award of summary judgment on ITC's federal unfair competition c l a i m . Whether the famous marks doctrine applies to a New York common law claim for unf air competition and, if so, how famous a mark must be to trigger that application, are i s s u e s not easily resolved by reference to existing state law. Accordingly, we certify q u e s t io n s relating to these issues to the New York Court of Appeals, reserving our decision o n this part of ITC's appeal pending the state court's response. Finally, because we agree with the district court that ITC lacks standing to pursue a false advertising claim against defe ndan ts, we affirm that part of the district court's award of summary judgment. 3 I. F a c t u a l Background A. T h e Bukhara Restaurant in New Delhi I T C Limited is a corporation organized under the laws of India. Through its su bs id iar y, ITC Hotels Limited, it owns and operates the Maurya Sheraton & Towers, a fives t a r hotel in New Delhi, India. One of the restaurants in the Maurya Sheraton complex is "B ukh ara." Named after a city in Uzbekistan on the legendary Silk Road between China and t h e West, Bukhara offers a cuisine and decor inspired by the northwest frontier region of I n d i a . Since its opening in 1977, the New Delhi Bukhara has remained in continuous o p e r a t io n , acquiring a measure of international renown.4 Over the past three decades, ITC has sought to extend the international reach of the Buk hara brand. At various times, it has opened or, through franchise agreements, authorized Buk hara restaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, K a t h m a n d u , Ajman, New York, and Chicago. As of May 2004, however, ITC-owned or - a u t h o r iz e d Bukhara restaurants were in operation only in New Delhi, Singapore, Kathmandu, and Ajman.

B. I T C ' s Use of the Bukhara Mark in the United States 1. ITC 's Use and Registration of the M ark for Restaurants In 1986, an ITC-owned and -operated Bukhara restaurant opened in Manhattan. In 1 9 8 7 , ITC entered into a franchise agreement for a Bukhara restaurant in Chicago. Shortly a f t e r opening its New York restaurant, ITC sought to register the Bukhara mark with the U n i t e d States Patent and Trademark Office ("Patent and Trademark Office"). On October 1 3 , 1987, ITC obtained United States trademark registration for the Bukhara mark in c o n n e c t io n with "restaurant services." See United States Trademark Registration No.

1 , 4 6 1 , 4 4 5 (Oct. 13, 1987). The Manhattan restaurant remained in operation for only five y e a r s , closing on December 17, 1991. On August 28, 1997, after a decade in business, ITC c a n c e l le d its Chicago franchise. Notwithstanding its registration, ITC concedes that it has n o t owned, operated, or licensed any restaurant in the United States using the Bukhara mark s i n c e terminating the Chicago restaurant franchise.

2. U s e of the Mark for Packaged Foods O v e r three years later, in 2001, ITC commissioned a marketing study to determine the viability of selling packaged food products in the United States under the Bukhara label, i n c l u d in g "Dal Bukhara." 5 In that same year, ITC filed an application with the Patent and T radem ark Office to register a "Dal Bukhara" mark in connection with packaged, ready-tos e r v e foods. In M ay 2003, ITC sold packaged Dal Bukhara food products to two distributors, o n e in California and the other in New Jersey. One month later, in June 2003, ITC exhibited D al Bukhara products at the International Fancy Foods Show in New York City.

C. The Opening of "Bukhara Grill" M e a n w h i l e , in 1999, named defendants Raja Jhanjee, Vicky Vij, Dhandu Ram, and P a r a g n e s h Desai, together with Vijay Roa, incorporated "Punchgini, Inc." for the purpose of open in g an Indian restaurant in New York City. Jhanjee, Vij, and Ram had all previously w o r k e d at the New Delhi Bukhara, and Vij had also previously worked at ITC's New York B u k h a r a . In selecting a name for their restaurant, the Punchgini shareholders purportedly c o n s i d e re d "Far Pavilions" and "Passage to India" before settling on "Bukhara Grill." As Vij candidly acknowledged at his deposition, there was then "no restaurant Bukhara in New Y o r k , and we just thought we will take the name." Vij Dep. 25:7-11, May 5, 2004. After s o me initial success with "Bukhara Grill," several Punchgini shareholders, with the support o f two additional partners, defendants Mahendra Singh and Bachan Rawat, organized a s e c o n d corporation, "Bukhara Grill II, Inc.," in order to open a second New York restaurant, "B ukh ara Grill II." W h e n the record is viewed in the light most favorable to ITC, numerous similarities s u g g e s t iv e of deliberate copying can readily be identified between the defendants' Bukhara Grill restaurants and the Bukhara restaurants owned or licensed by ITC. Quite apart from t h e obvious similarity in name, defendants' restaurants mimic the ITC Bukharas' logos, decor, staff uniforms, wood-slab menus, and red-checkered customer bibs. Indeed, the s i m i la r i ti e s were sufficiently obvious to be noted in a press report, wherein defendant Jhanjee i s quoted acknowledging that the New York Bukhara Grill restaurant "is quite like Delhi's Bu kha ra." Shweta Rajpal, "Dal `Bukhara' in NY: A Bukhara-trained Trio Has Opened a S i m i l a r Restaurant in Manhattan," Hindustan Times, May 2, 2000; see also Bob Lape, " I n d i a n Outpost Needs Dash of Spice," Crain's New York Business, Dec.13-19, 1999, at 18 (noting name similarity between Bukhara Grill and former New York Bukhara).

D. P l a i n ti f f s ' Cease and Desist Letter B y letter dated March 22, 2000, ITC, through counsel, demanded that defendants refrain from further use of the Bukhara mark. The letter accused defendants of unlawfully a p p r o p r ia t i n g the reputation and goodwill of ITC's Bukhara restaurants in India and the U n i t e d States by adopting a virtually identical name for their New York Bukhara Grill r e s t a u r a n t s . It further demanded, under threat of legal action, that defendants acknowledge IT C's exclusive rights to the Bukhara mark, disclose the period for which defendants had use d the mark, and remit to ITC any profits derived therefrom.

In a response dated M arch 30, 2000, defendants' counsel expressed an interest in a v o i d i n g litigation. Nevertheless, counsel observed that ITC appeared to have abandoned t h e Bukhara mark by not using it in the United States for several years. Receiving no reply, d e f e n d a n t s ' counsel sent a second letter to ITC dated June 22, 2000, stating that, if no r e s p o n s e was forthcoming "by June 28, 2000, we will assume that ITC Limited has a b a n d o n e d rights it may have had in the alleged mark and any alleged claim against our cli en t." Marsh Letter to Horwitz, June 22, 2000. The record indicates no timely reply.

I n s t ea d , almost two years later, on April 15, 2002, ITC's counsel wrote to defendants r e i te r a t in g the demands made in March 2000 and complaining of defendants' failure formally to respond to that initial letter. Defendants' counsel promptly challenged the latter assertion; f a u l te d ITC for failing to reply to his March 22, 2000 letter; and reasserted his abandonment c o n t e n ti o n , a position that he claimed was now bolstered by the passage of additional time.

The re was apparently no further communication among the parties until this lawsuit.

E. The Instant Lawsuit O n February 26, 2003, ITC filed the instant lawsuit. In the amended complaint that is the controlling pleading for purposes of our review, ITC charged defendants with t r a d emark infringement under section 32(1)(a) of the Lanham Act, see 15U.S.C.

§ 1114(1)(a), as well as unfair competition and false advertising under sections 43(a) and 4 4 ( h ) of the Lanham Act, see 15U.S.C. §§ 1125(a), 1126(h). ITC also pursued parallel a c t io n s under New York common law.6 As an affirmative defense, defendants charged ITC with abandonment of its United States rights to the Bukhara mark and, on that ground, they filed a counterclaim seeking cancellation of the ITC registration.

Following discovery, defendants successfully moved for summary judgment. In a d e t a il e d published decision, the district court ruled that ITC could not pursue an infringement c l a im because the record conclusively demonstrated its abandonment of the Bukhara mark a s applied to restaurants in the United States. See ITC Ltd. v. Punchgini, Inc., 373 F. Supp.

2 d at 285. To the extent ITC asserted that its continued operation of Bukhara restaurants o u t s id e the United States allowed it to sue defendants for unfair competition under the f a m o u s marks doctrine, the district court was not convinced. It observed that, even if it were to assume the applicability of the famous marks doctrine, ITC had failed to adduce sufficient evide nce to permit a reasonable jury to conclude that the name or trade dress of its foreign restau rants had attained the requisite level of United States recognition to trigger the doctrine.

S e e id. at 291. Finally, the district court found that ITC lacked standing to pursue its false adv ertisin g claim. See id. at 291-92. This appeal followed.

Befo re this court, ITC advances essentially three arguments. It submits that (1) the record does not conclusively establish its abandonment of United States rights in the Bukhara m a r k , (2) the district court misapplied applicable federal and state law regarding the famous ma rks doctrine, and (3) it has standing to sue defendants for false advertising.

II. Discussion A. S t a n d a r d of Review W e conduct de novo review of a summary judgment award, resolving all record a m b i g u i ti e s and drawing all factual inferences in favor of the non-moving party. See, e.g., P h a n e u f v. Fraikin, 448 F.3d 591, 595 (2d Cir. 2006). We will affirm an award of summary j u d g m e n t only if "the pleadings, depositions, answers to interrogatories, and admissions on f i l e, together with the affidavits, if any, show that there is no genuine issue as to any material f a c t and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P.

56(c).

B. Trademark Infringement I T C sues defendants for trademark infringement in violation of both federal and state l aw . Under section 32(1)(a) of the Lanham Act, see 15U.S.C. § 1114(1)(a), the owner of a mark registered with the Patent and Trademark Office can bring a civil action against a perso n alleged to have used the mark without the owner's consent. 7 Similarly, under New York state law, a mark owner may maintain a statutory or common law action against a party w h o engages in unauthorized use of the mark. See N.Y. Gen. Bus. Law § 360-k (McKinney 2 0 0 6 ) (protecting registered marks); Norden Rest. Corp. v. Sons of the Revolution, 51 N . Y . 2 d 518, 522-23, 434 N.Y.S.2d 967, 968 (1980) (acknowledging common law rights in u n r e g i st e r e d marks). Even if a plaintiff makes the showing required by federal and state law, how ever, the alleged infringer may nevertheless prevail if it can establish the owner's prior a b a n d o n m e n t of the mark. See 15U.S.C. § 1115(b)(2); Nercessian v. Homasian Carpet En ter., Inc., 60 N.Y.2d 875, 877, 470 N.Y.S.2d 363, 364 (1983) (holding that "rights in a t r a d e name may be lost by abandonment"). Indeed, abandonment is not only an affirmative d e f e n s e to an infringement action; it is a ground for cancelling a federally registered mark.

S e e 15U.S.C. § 1064(3).

Relying on this principle, defendants submit that ITC's infringement claim is nece ssarily defeated as a matter of law by proof that, by the time they opened their Bukhara Grill restaurants in New York, ITC had effectively abandoned the Bukhara mark in the U n i t e d States. Like the district court, we conclude that defendants successfully established a b a n d o n m e n t as a matter of law, warranting both summary judgment in their favor and can cella tion of ITC's registered mark. 1. T h e Doctrine of Abandonment T h e abandonment doctrine derives from the well-established principle that trademark rights are acquired and maintained through use of a particular mark. See Pirone v. M a c M i l la n , Inc., 894 F.2d 579, 581 (2d Cir. 1990) ("`There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed.'" (quoting United Drug Co. v. Theodore Rectanus Co., 2 4 8 U.S. 90 , 97 (1918))). This is true even of marks that have been registered with the Patent a n d Trademark Office. See Basile, S.p.A. v. Basile, 899 F.2d 35, 37 n.1 (D.C. Cir. 1990) ( " A l t h o u g h [a mark's] registration is a predicate to its protection under [section 32(1)(a) of] t h e Lanham Act, the underlying right depends not on registration but rather on use.").8 I n d e e d , one of the fundamental premises underlying the registration provisions in the L a n h a m Act is that trademark rights flow from priority and that priority is acquired through u s e . See, e.g., 15 U . S .C. § 1057(c) (stating that registration of mark "shall constitute c o n s t ru c t i v e use of the mark, conferring a right of priority, nationwide in effect . . . against a n y other person except for a person whose mark has not been abandoned and who, prior to s u c h filing[,] . . . has used the mark"). Thus, so long as a person is the first to use a particular mark to identify his goods or services in a given market, and so long as that owner continues to make use of the mark, he is "entitled to prevent others from using the mark to describe their own goods" in that market. Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985); see also Sengoku Works v. RMC Int'l, 96 F.3d 1217, 121 9 (9th Cir. 1996) ("It is axiomatic in trademark law that the standard test of ownership is priority of use.").

If, however, an owner ceases to use a mark without an intent to resume use in the reaso nably foreseeable future, the mark is said to have been "abandoned." See Silverman v . CBS, Inc., 870 F.2d 40, 45 (2d Cir. 1989); 2 J. Thomas McCarthy, McCarthy on T r a d e m a r k s and Unfair Competition, § 17:5, at 17-8 (4th ed. 2002) (observing that " a band onm ent" refers to situations involving the "non-use of a mark, coupled with an e x p r e s s or implied intention to abandon or not to resume use"). Once abandoned, a mark return s to the public domain and may, in principle, be appropriated for use by other actors in the marketplace, see Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd.

P'sh ip , 34 F.3d 410, 412 (7th Cir. 1994), in accordance with the basic rules of trademark pr io rity, see Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 630 (2d Cir. 1980).

2. D e m o n s t r a t in g Abandonment T h e party asserting abandonment bears the burden of persuasion with respect to two f a c t s : (1) non-use of the mark by the legal owner, and (2) lack of intent by that owner to r es u me use of the mark in the reasonably foreseeable future. See 15U.S.C. § 1127; Stetson v . Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2d Cir. 1992); Silverman v. CBS, Inc., 8 7 0 F.2d at 45; see also On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087 ( F e d . Cir. 2000) (placing burden of persuasion on party seeking cancellation on ground of a b a ndonm e n t); Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327, 334 (2d Cir. 1983) (pla cing burden of persuasion on party asserting abandonment as defense).

ITC concedes that defendants satisfied the first element through proof that ITC has n o t used the Bukhara mark for restaurant services in the United States since August 28, 1997.

N e v e r t h e l e s s , ITC insists that a triable issue of fact exists with respect to its intent to resume u s e of the service mark in the United States. To the extent the district court concluded o t h e r w i se , ITC submits the court applied an incorrect legal standard. To explain why we are n o t persuaded by this argument, we begin by discussing the particular legal significance of n o n - u s e of a registered mark for a period of at least three years.

Prim a Facie Evidence of Abandonment 3.

T h e Lanham Act expressly states that "[n]onuse" of a mark "for 3 consecutive years shall be prima facie evidence of abandonment." 15U.S.C. § 1127. This court has explained t h a t the term "prima facie evidence" in this context means "a rebuttable presumption of aba ndo nm ent." Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980); accord Silverman v. CBS, Inc., 870 F.2d at 45.

The role played by such a presumption is best understood by reference to Rule 301 of t h e Federal Rules of Evidence: In all civil actions and proceedings not otherwise provided for by Act of C o n g r e s s or by these rules, a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or to meet the p r e s u m p t io n , but does not shift to such party the burden of proof in the sense o f the risk of non-persuasion, which remains throughout the trial upon the party on whom it was originally cast.

F e d . R. Evid. 301. Although the term "presumption" is not specifically defined in the Rules o f Evidence, it is generally understood to mean "an assumption of fact resulting from a rule o f law which requires such fact to be assumed from another fact or group of facts found or o t h e r w i s e established in the action." 21B Charles Alan W righ t & Kenneth W. Graham, Jr., Federal Practice and Procedure § 5124 (2d ed. 2005); accord Joseph M. McLaughlin, Jack B . Weinstein & Margaret A. Berger, Weinstein's Federal Evidence § 301.02[1] (2d ed.

2006); see also Texas Dep't of Cmty. Affairs v. Burdine, 450 U.S. 248, 256 n.10 (1981) ( d e s c ri b i n g presumption as "legally mandatory inference"). The assumption ceases to o p e r a t e, however, upon the proffer of contrary evidence. See generally A.C. Aukerman Co. v . R.L. Chaides Constr. Co., 960 F.2d 1020, 1037 (Fed. Cir. 1992) (observing that under Ru le 301, a "presumption is not merely rebuttable but completely vanishes upon the i n t ro d u c t i o n of evidence sufficient to support a finding of the nonexistence of the presumed fact"); Saratoga Vichy Spring Co. v. Lehman, 625 F.2d at 1043 (suggesting that presumption of abandonment "disappears when rebutted by contrary evidence").

Thu s, in this case, the statutory presumption of abandonment requires that one fact, i . e., abandonment, be inferred from another fact, i.e., non-use of the mark for three years or m o r e . The significance of a presumption of abandonment is to shift the burden of production to the mark owner to come forward with evidence indicating that, despite three years of nonu s e , it intended to resume use of the mark within a reasonably foreseeable time. See Imperial T o b a c c o , Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1579 (Fed. Cir. 1990) (noting that t r ig g e r i n g of presumption "eliminates the challenger's burden to establish the [lack of] intent [ t o resume use] element of abandonment as an initial part of its case"); see also Cumulus M e d i a , Inc. v. Clear Channel Commc'ns, 304 F.3d 1167, 1176-77 (11th Cir. 2002); On-Line C a r e l in e , Inc. v. America Online, Inc., 229 F.3d at 1087. The ultimate burden of persuasion o n the issue of abandonment, however, remains at all times with the alleged infringer. See E m e r g e n c y One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 536 (4th Cir. 2000).

4. T h e Evidence Necessary to Defeat a Presumption of Abandonment This court has observed that "to overcome a presumption of abandonment after a suff iciently long period of non-use, a defendant need show only an intention to resume use `with in the reasonably foreseeable future.'" Empresa Cubana del Tabaco v. Culbro Corp., 3 9 9 F.3d 462, 468 n.2 (2d Cir. 2005) (quoting Silverman v. CBS, Inc., 870 F.2d at 45). ITC subm its that the district court erred in imposing a stricter standard, specifically requiring ITC to adduce "`objective, hard evidence of actual concrete plans to resume use in the reasonably fores eeab le future when the conditions requiring suspension abate'" to defeat defendants' summ ary judgment motion. ITC Ltd. v. Punchgini, Inc., 373 F. Supp. 2d at 280 (quoting E m p r e s a Cubana del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 268-69 (S.D.N.Y. 2002)).

This court has, in fact, criticized the particular language quoted by the district court, o b s e r v in g that such a "heavy burden" is not required by our precedent. See Empresa Cubana d e l Tabaco v. Culbro Corp., 399 F.3d at 467 n.2. Courts and commentators are in general a g r e e m e n t that proffered evidence is "sufficient" to rebut a presumption as long as the e v i d e n c e could support a reasonable jury finding of "the nonexistence of the presumed fact." W a n l a s s v. Fedders Corp., 145 F.3d 1461, 1464 (Fed. Cir. 1998); see also McLaughlin, We instein & Berger, supra, § 301.02[3][c] (stating that "the opponent of a presumed fact, in o r d e r to rebut, generally has the burden of presenting evidence so that a reasonable jury could b e convinced of the non-existence of the presumed fact"); Wright & Graham, supra, § 5126 ( " M o s t writers . . . interpret 301 to require that rebutting evidence suffice to support a finding o f the non-existence of the presumed fact."). In short, upon defendants' presentation of e v i d e n c e establishing a prima facie case of abandonment under the Lanham Act, ITC was r e q u i re d to come forward only with such contrary evidence as, when viewed in the light most favo rable to ITC, would permit a reasonable jury to infer that it had not abandoned the mark.

Sp ec ifi ca lly, it needed to adduce sufficient evidence to permit a reasonable jury to conclude that, in the three-year period of non-use -- from August 28, 1997, when ITC terminated the C h i c a g o Bukhara franchise, to August 28, 2000 -- ITC nevertheless maintained an intent to r es u me use of its registered mark in the reasonably foreseeable future.9 See Silverman v. C B S , Inc., 870 F.2d at 47; accord Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 4 6 7 n.2. Hard evidence of concrete plans to resume use of the mark would certainly carry this burden. But we do not foreclose the possibility that other circumstances, viewed in the l i g h t most favorable to the non-movant, might also support the necessary jury inference of intent. See, e.g., Geneva Pharms. Tech. Corp. v. Barr Labs, Inc., 386 F.3d 485, 506 (2d Cir. 2004) (looking to totality of circumstances to infer intent).

5. D e f e n d a n t s ' Entitlement to Summary Judgment a. T h e District Court Did Not Apply an Incorrect Standard A p p l y in g these principles to this case, we preliminarily observe that, despite the l a n g u a g e cited by ITC, the district court does not appear to have based its summary judgment award on a too strict evidentiary standard of rebuttal with respect to the presumption of aban don men t. To the contrary, the district court's ruling, when considered in its entirety, revea ls a careful review of the totality of the evidence adduced by ITC and a correct c o n c l u s io n that no circumstances were adduced from which a reasonable jury could infer that, during the relevant three-year period of non-use, ITC nevertheless intended to resume u s e of the registered mark in the United States in the reasonably foreseeable future. See ITC L t d . v. Punchgini, Inc., 373 F. Supp. 2d at 280 (stating that ITC had "failed to come forward with any evidence of . . . `activities it engaged in during the nonuse period . . . from which a n intent to resume use . . . may be reasonably inferred' . . . to rebut the statutory presumption o f abandonment at trial" (quoting Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 158 0)).

Even if the district court had applied an erroneous standard, however, we would still a f f i r m its judgment if, upon applying the proper standard on our own review of the record, w e were to identify no genuine issue of material fact requiring trial. See Baker v. Home D e p o t , 445 F.3d 541, 546 (2d Cir. 2006) (noting that we may affirm a district court decision o n any grounds for which there is a record sufficient to permit conclusions of law); Stetson v . Wolf, 955 F.2d at 850 (observing in abandonment case that "[a]n appellate court has the p o w e r to decide cases on appeal if the facts in the record adequately support the proper r e s u lt " ) . This is such a case. b. I T C 's Failure to Adduce Evidence from Which a Reasonable J u r y Could Infer Intent to Resume Use A s this court has recognized, "intent is always a subjective matter of inference and t h u s rarely amenable to summary judgment." Saratoga Vichy Spring Co. v. Lehman, 625 F . 2 d at 1044. At the same time, however, "`[t]he summary judgment rule would be rendered sterile . . . if the mere incantation of intent or state of mind would operate as a talisman to d e f e a t an otherwise valid motion.'" Distasio v. Perkin Elmer Corp., 157 F.3d 55, 61-62 (2d Cir. 1998) (quoting Meiri v. Dacon, 759 F.2d 989, 997 (2d Cir. 1985)). The latter point is particu larly relevant in the context of an abandonment dispute, because "[i]n every contested a b a n d o n m e n t case, the respondent denies an intention to abandon its mark; otherwise there wo uld be no contest." Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1581. Thus, cour ts have generally held that a trademark owner cannot rebut a presumption of a b a n d o n m e n t merely by asserting a subjective intent to resume use of the mark at some later date . See Vais Arms, Inc. v. Vais, 383 F.3d 287, 294 (5th Cir. 2004) ("At most, [the mark o w n e r ' s ] affidavit establishes only his subjective, uncommunicated desire not to abandon the m a r k , without any indication of when or how he intended to resume its commercial use; it d o e s not establish a genuine issue as to his intent to abandon."); Emergency One, Inc. v. A m e r i c a n FireEagle, Ltd., 228 F.3d at 537 ("[T]he owner of a trademark cannot defeat an a b a n d o n m e n t claim . . . by simply asserting a vague, subjective intent to resume use of a mark at some unspecified future date."); Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F . 2 d at 1581 ("An averment of no intent to abandon is little more than a denial in a pleading, w h i c h is patently insufficient to preclude summary judgment on the ground the facts are disputed."); see also Silverman v. CBS, Inc., 870 F.2d at 47 ("A bare assertion of possible future use is not enough."). Rather, to rebut a presumption of abandonment on a motion for summ ary judgment, the mark owner must come forward with evidence "with respect to . .

. what outside events occurred from which an intent to resume use during the nonuse period m a y reasonably be inferred." Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1581; accord Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d at 537-38; see also S i l v e rm a n v. CBS, Inc., 870 F.2d at 47 (noting that presumption of abandonment can be r e b u t te d "by showing reasonable grounds for the suspension and plans to resume use in the r e a s o n a b ly foreseeable future when the conditions requiring suspension abate"1 0 ).

ITC argues that four facts would allow a reasonable factfinder to infer its intent to r es u me use of the Bukhara mark for restaurants in the United States: (1) the reasonable g r o u n ds for its suspension of use of the mark, (2) its efforts to develop and market a Dal Buk hara line of packaged food, (3) its attempts to identify potential United States restaurant f r a n c h i s e e s , and (4) its continued use of the Bukhara mark for restaurants outside the United Sta tes. We are not persuaded. (1) G r o u n d s for Suspending Use IT C advances two reasons for suspending use of the Bukhara mark in the United S t a t e s from 1997 to 2000: (a) Indian regulations requiring it to return profits earned abroad seve rely hindered its ability to open and operate profitable Bukhara restaurants in the United S t a t e s , and (b) depressed market conditions in the hospitality industry from 1988 to 2003 i n h i b it e d its development of franchise partnerships in the United States. Because these r e a s o n s are unsupported by record evidence, they plainly cannot demonstrate the requisite intent. 1 1 A s to the first point, the record indicates that many of the Indian regulations cited by I T C had been in effect since 1973. Clearly, these regulations did not prevent ITC from o p e n i n g its Bukhara restaurant in New York in 1986 or from licensing a Bukhara restaurant in Chicago in 1987. Although ITC submits that the regulations were a significant factor in t h e failure of these two restaurants, no evidence was adduced to support this conclusory a s s e r ti o n . See generally Bridgeway Corp. v. Citibank, 201 F.3d 134, 142 (2d Cir. 2000) ( h o l d in g that conclusory statements, conjecture, and inadmissible evidence are insufficient to defeat summary judgment). Indeed, the record is to the contrary. When, at deposition, an I T C corporate representative was asked why the New York Bukhara closed, he replied s i m p l y that the restaurant was highly leveraged and unable to meet its debt obligations. He 11 W e do not decide whether such allegations, if supported by evidence, would permit a n y inference of ITC's intent to resume use of the Bukhara mark for restaurants in the f o r e s e e a b l e future. We note only that the conclusion is by no means obvious. m a d e no mention of any Indian regulations. Similarly, the letter by which ITC terminated its Chicago license agreement referenced only the franchisee's failure to pay fees owed to ITC , making no mention of Indian regulations.

Further, ITC fails to explain how Indian regulations, which ITC claims applied to any b u s i n e s s operated outside India, hindered its use of the Bukhara mark for restaurants in the U n i t e d States between 1997 and 2000 but permitted it to open a Bukhara restaurant in the U n i t e d Arab Emirates in 1998. To the extent ITC argues that the regulations limited its o p t i o n s by effectively requiring it to partner exclusively with well-established hotels, it offers n o evidence that hotels in the United States were unreceptive to such a partnership arra nge me nt.

With respect to ITC's argument that a market decline in the hospitality industry b e t w e e n 1988 and 2003 explains its non-use of the mark, the record indicates only a decline in India and the overseas market. ITC proffered no evidence demonstrating a decline in the U n i t e d States hospitality market during the relevant 1997-2000 period of non-use.1 2 (2) M arketin g Dal Bukhara Food Products ITC points to only one piece of evidence during the relevant 1997-2000 period i n d i c at i n g its intent to use the name Bukhara in connection with packaged foods: the minutes f r o m a July 27, 2000 corporate management committee meeting in India, which approved an i n i ti a t iv e to market food products under the name "Bukhara Dal." Significantly, the minutes now here indicate ITC's intent to market this product in the United States, much less ITC's i n t e n t to resume use of the Bukhara mark for restaurants in this country. Accordingly, we c o n c l u d e that the minutes, by themselves, are insufficient to create a genuine issue of m a t e r ia l fact as to ITC's intent to resume use of its registered service mark in the United Sta tes.

The remaining evidence adduced by ITC all post-dates the relevant 1997-2000 period o f non-use. Specifically, in 2001, ITC commissioned a study regarding the marketing of p a c k a g e d food bearing the Bukhara mark in the United States. That same year, ITC filed trademark applications for several marks containing the word "Bukhara" in relation to p a c k a g e d food products. Not until 2003 did ITC actually showcase its packaged food line a t a New York trade show or sell these products to two United States distributors. These a c t s , all occurring well after 2000 and suggesting future use of the Bukhara mark for a p r o d u c t other than restaurants, are insufficient to support the necessary inference that, in the n o n - u s e period, ITC maintained an intent to resume use of the mark for restaurants in the Un ited States in the reasonably foreseeable future.

(3) I d e n t if y in g Bukhara Franchisees I T C argues that evidence of its discussions with various persons about expanding the Buk hara restaurant franchise to New York, California, and Texas creates a jury issue as to its intent to resume use of its registered mark within a reasonably foreseeable time. In fact, t h e only evidence of these so-called "discussions" is a few facsimiles, e-mails, and letters s e n t to ITC over a five-year period from 1998 to 2002. There is no evidence that ITC i n i ti a t ed any of these contacts. More to the point, no evidence indicates that ITC responded to or seriously considered these unsolicited proposals in a manner that would permit a reaso nable jury to infer its intent to resume use of its Bukhara mark for restaurants. As such, t h e s e communications, even when viewed in the light most favorable to ITC, do not give rise to a material question of fact on the issue of ITC's intent to resume use of its registered mark.

I T C submits that record evidence also reveals its negotiations to expand the Bukhara r e s ta u r a n t brand into Starwood hotels. The proffered evidence consists of (1) a 2002 letter from Starwood's Asia-Pacific headquarters indicating a general interest in operating Bukhara restau rants in some of its hotels outside India, and (2) a 2004 story from an Indian newspaper a b o u t ITC's intent to open Bukhara restaurants in London and Tokyo. Neither document r e f e r e n ce s the possible opening of a Bukhara restaurant in the United States. Moreover, both t h e letter and the news story post-date the 1997-2000 period of non-use that gives rise to the p r e s u m p t io n of abandonment, and they make no mention of any intent to resume use arising d u r i n g this critical time frame. Accordingly, this evidence is insufficient to raise a material issue of fact.

(4) B u k h a r a Restaurants Outside the United States F i n a l l y, ITC cites La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc. to support its argument that the continued operation of its Bukhara restaurants outside the U n i t e d States demonstrates "an ongoing program to exploit the mark commercially," giving r i s e to an inference of an intent to resume the mark's use in this country, 495 F.2d 1265, 1272 ( 2 d Cir. 1974). In fact, ITC's reliance on Societe Anonyme is misplaced. In that case, this court ruled that a "meager trickle" of perfume sales within the United States -- 89 bottles sold over a period of 20 years -- was insufficient to establish trademark rights in the United S t a t e s . Id. Nothing in that case suggests that ongoing foreign use of a mark, by itself, supp orts an inference that the owner intends to re-employ a presumptively abandoned mark in the United States. Cf. id. at 1271 n.4 (noting "well-settled" view "that foreign use is i n e f f e c tu a l to create trademark rights in the United States"). Indeed, we identify no authority sup por ting that conclusion.

Accordingly, like the district court, we conclude that ITC's continued foreign use of t h e Bukhara mark for restaurants does not raise a material issue of fact regarding its intent to resume similar use of the mark in the United States. Because ITC plainly abandoned its right to the Bukhara mark for restaurant services in the United States, we affirm the award o f summary judgment in favor of defendants on ITC's federal and state infringement claims.

C. U n f a i r Competition 1. F e d e r a l Claim Under Section 43(a)(1)(A) of the Lanham Act I T C claims that defendants violated section 43(a)(1)(A) of the Lanham Act by e n g a g i n g in unfair competition in the use of its Bukhara mark and its related trade dress.1 3 S e c t i o n 43(a)(1)(A) allows the producer of a product or service to initiate a cause of action a g a i n s t a person who uses "any word, term name, symbol, or device, or any combination t h e r e o f . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or a p p r o v a l of [the producer's] . . . services." 15U.S.C. § 1125(a)(1)(A). This protection is b r o a d e r than that afforded by section 32(1)(a), which prohibits only infringement of marks actua lly registered with the Patent and Trademark Office. See Two Pesos v. Taco Cabana, 5 0 5 U.S. 763 , 768 (1992) ("Section 43(a) prohibits a broader range of practices than does § 32, which applies to registered marks, but it is common ground that § 43(a) protects q u a lifying unregistered trademarks" (internal citations and quotation marks omitted)); accord C h a m b e r s v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002).

To succeed on a section 43(a)(1)(A) claim, a plaintiff must prove (1) that the mark or d r e s s is distinctive as to the source of the good or service at issue, and (2) that there is the l i k e li h o o d of confusion between the plaintiff's good or service and that of the defendant. See Y u r m a n Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001) (citing Wal-Mart Stores, I n c . v. Samara Bros., 529 U.S. 205, 210 (2000)); see also Two Pesos v. Taco Cabana, 505 U . S . at 768; Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006). Preliminary to making this showing, however, a plaintiff must demonstrate its own r i g h t to use the mark or dress in question. See Planetary Motion, Inc. v. Techsplosion, Inc., 2 6 1 F.3d 1188, 1193 (11th Cir. 2001) (stating that plaintiff must show "that it had prior rights to the mark at issue" in order to prevail in a section 43(a) claim); Exxon Corp. v. Humble E x p l o r a ti o n Co., 695 F.2d 96, 103 (5th Cir. 1983) (stating that where a section 43(a) claim is based on alleged ownership of a mark, it is necessary to consider "[w]hether the mark has b e e n abandoned" before considering merits of claim); P. Daussa Corp. v. Sutton Cosmetics ( P . R.), Inc., 462 F.2d 134, 136 (2d Cir. 1972) ("To be entitled to relief, however, [plaintiff] m u s t show not only confusing similarity, but priority of right over [defendant] to the use of the [plaintiff's] mark.").

In light of our conclusion that, as a matter of law, ITC abandoned its registered Buk hara mark as of August 28, 2000, ITC confronts a high hurdle in demonstrating that, at t h e time of defendants' challenged actions, it possessed a priority right to the use of the Buk hara mark and related trade dress for restaurants in the United States. See Vais Arms, I n c . v. Vais, 383 F.3d at 292 n.8 (noting that "abandonment results in a break in the chain of p r i o ri t y" ) (quoting 2 McCarthy, supra, § 17:4); Emergency One, Inc. v. American Fire Eagle E n g i n e Co., 332 F.3d 264, 268 (4th Cir. 2003) ("The priority to use a mark . . . can be lost t h r o u g h abandonment."); see also Exxon Corp. v. Humble Exploration Co., 695 F.2d at 1030 4 (observing that it would be "incongruous" to allow plaintiff who had abandoned mark to succ essfu lly sue defendant for false designation or representation of origin). To clear this h u rd l e, ITC invokes the famous marks doctrine. It submits that, because (1) since 1977, it h a s continuously used its Bukhara mark and trade dress outside the United States; and (2) that mark was renowned in the United States before defendants opened their first Bukhara Grill restaurant in New York in 1999, it has a priority right to the mark sufficient to claim sec tion 43(a)(1)(A) protection in this country.

To explain why we disagree, we begin by discussing the principle of trademark t er rito ria lity. We then discuss the famous marks exception to this principle and the i n t e rn a t i o n al treaties, implementing legislation, and policy concerns relied on by ITC in urg ing the application of this exception to this case. a. The Territoriality Principle T h e principle of territoriality is basic to American trademark law. See American Circu it Breaker Corp. v. Or. Breakers, Inc., 406 F.3d 577, 581 (9th Cir. 2005); Kos Pharms., I n c . v. Andrx Corp., 369 F.3d 700, 714 (3d Cir. 2004); Buti v. Impressa Perosa, S.R.L., 139 F . 3 d 98, 103 (2d Cir. 1998); Person's Co. v. Christman, 900 F.2d 1565, 1568-69 (Fed. Cir. 1 9 9 0 ) . As our colleague, Judge Leval, has explained, this principle recognizes that a trademark has a separate legal existence under each country's laws, and that its proper lawful function is not necessarily to specify the origin or manu factu re of a good (although it may incidentally do that), but rather to s y m b o li z e the domestic goodwill of the domestic markholder so that the c o n s u m i n g public may rely with an expectation of consistency on the domestic r e p u t a ti o n earned for the mark by its owner, and the owner of the mark may be c o n f i d e n t that his goodwill and reputation (the value of the mark) will not be i n j u re d through use of the mark by others in domestic commerce.

Osa wa & Co. v. B & H Photo, 589 F. Supp. 1163, 1171-72 (S.D.N.Y. 1984).1 4 Precisely because a trademark has a separate legal existence under each country's l a w s , ownership of a mark in one country does not automatically confer upon the owner the e x c l u s iv e right to use that mark in another country. Rather, a mark owner must take the p r o p e r steps to ensure that its rights to that mark are recognized in any country in which it s e e k s to assert them. Cf. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 3 3 0 F.3d 617, 628 (4th Cir. 2003) ("United States courts do not entertain actions seeking to e n f o r c e trademark rights that exist only under foreign law."); E. Remy Martin & Co., S.A. v . Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525, 1531 (11th Cir. 1985) ("Our concern must b e the business and goodwill attached to United States trademarks, not French trademark rights under French law." (internal quotation marks omitted)).

A s we have already noted, United States trademark rights are acquired by, and d e p e n d e n t upon, priority of use. See supra at [12-13]. The territoriality principle requires t h e use to be in the United States for the owner to assert priority rights to the mark under the L a n h a m Act. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at 103 (noting that "Impressa's r e g i st r a ti o n and use of the Fashion Café name in Italy has not, given the territorial nature of t r a d e m a rk rights, secured it any rights in the name under the Lanham Act"); La Societe A n o nym e des Parfums le Galion v. Jean Patou, Inc., 495 F.2d at 1271 n.4 ("It is well-settled t h a t foreign use is ineffectual to create trademark rights in the United States."); see also Le B l um e Import Co. v. Coty, 293 F. 344, 350 (2d Cir. 1923) (observing that "the protection of a trade-mark in the United States is not to be defeated by showing a prior use of a like trademark in France, or in some other foreign country" so long as "the one claiming protection is able to show that he was first to use it in this country"); cf. Grupo Gigante S.A. de C.V. v. Da llo & Co., 391 F.3d 1088, 1093 (9th Cir. 2004) (stating general proposition that "priority o f trademark rights in the United States depends solely upon priority of use in the United S t a t e s , not on priority of use anywhere in the world," although recognizing famous marks d o c t r in e as an exception to territoriality principle (quoting 4 McCarthy, supra, § 29:2, at 296 )). But see International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des E trangers a Monaco, 329 F.3d 359, 381 (4th Cir. 2003) (concluding that United States trademark rights can be acquired merely through advertising in the United States combined w i t h rendering of services abroad to American customers). Thus, absent some use of its mark in the United States, a foreign mark holder generally may not assert priority rights u n d e r federal law, even if a United States competitor has knowingly appropriated that mark f o r his own use. See Person's Co. v. Christman, 900 F.2d at 1569-70 (holding that foreign u s e is not sufficient to establish priority rights even over a United States competitor who took ma rk in bad faith). b. T h e Famous M arks Doctrine as an Exception to the Territo riality Principle I T C urges us to recognize an exception to the territoriality principle for those foreign m a r k s that, even if not used in the United States by their owners, have achieved a certain me asu re of fame within this country.

(1) O r i g i n of the Famous Marks Doctrine T h e famous marks doctrine is no new concept. It originated in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, a s rev. at Stockholm, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 ("Paris Convention").

A r t i c le 6bis, which by its terms applies only to trademarks, requires member states e x officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark w h i c h constitutes a reproduction, an imitation, or a translation, liable to create c o n f u s i o n , of a mark considered by the competent authority of the country of r e g i st r a ti o n or use to be well known in that country as being already the mark o f a person entitled to the benefits of this Convention and used for identical or s i m i la r goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation l i a b le to create confusion therewith.

Paris Convention, art. 6bis.1 5 One commentator has observed that the "purpose" of Article 6 bis "is to avoid the registration and use of a trademark, liable to create confusion with a n o t h e r mark already well known in the country of such registration or use, although the l a t te r well-known mark is not, or not yet, protected in that country by a registration which wo uld normally prevent the registration or use of the conflicting mark." G.H.C.

B o d e n h a u s e n , Guide to the Application of the Paris Convention for the Protection of Indu strial Property 90 (1968).

(2) T h e Famous Marks Doctrine in the United States (a) S t a t e Common Law T h e famous marks doctrine appears first to have been recognized in the United States b y a New York trial court in a common law action for unfair competition in the use of a t r a d e m a rk . See Maison Prunier v. Prunier's Rest. & Café, 159 Misc. 551, 557-58, 288 N . Y . S . 529, 535-36 (N.Y. Sup. Ct. 1936). The owner of "Maison Prunier," a Paris restaurant with a branch in London, sought to enjoin defendants' operation of a New York City r e s ta u r a n t named "Prunier's Restaurant and Café." The New York restaurant had apparently a d o p t e d both the Paris restaurant's name and slogan ("Tout ce qui vient de la mer" 1 6 ) and bold ly advertised itself as "The Famous French Sea Food Restaurant." While the French p l a i n ti f f conceded that it had never operated a restaurant in the United States, it nevertheless s o u g h t relief for the unauthorized use of its name and mark under the common law of unfair c o m p e t i ti o n .

In ruling in favor of the plaintiff, the trial court first observed that "the right of a F re n c h corporation to sue here for protection against unfair competition was expressly g r a n t e d in [Article 10bis of] the [Paris] convention between the United States and various o t h e r powers for the protection of industrial property." Id. at 554, 288 N.Y.S. at 532.1 7 It t h e n ruled that "actual competition in a product is not essential to relief under the doctrine o f unfair competition." Id. at 555, 288 N.Y.S. at 533. The plaintiff was entitled to protection f r o m "`any injury which might result to it from the deception of the public through the u n a u t h o r iz e d use of its trade name, or a trade name which would lead the public to believe t h a t it was in some way connected with the plaintiff.'" Id. at 556, 288 N.Y.S. at 534 (quoting L ong 's Hat Stores Corp. v. Long's Clothes, Inc., 224 A.D. 497, 498, 231 N.Y.S. 107, 107 (1 st Dep't 1928)). Although the court acknowledged the general rule of territoriality, see id. a t 557, 288 N.Y.S. at 535 (noting no "right to protection against the use of a trade-mark or t r a d e name beyond the territory in which it operates"), it recognized an exception to the rule whe re the second user was guilty of bad faith, see id. at 557-58, 288 N.Y.S. at 536-37. The court identified the fame of the mark as a factor relevant to deciding whether the second user h a d , in good faith, made use of a mark without knowing of its prior use by another party. See i d . at 559, 288 N.Y.S. at 537. The Prunier court concluded that the French plaintiff was e n t i tl e d to protection against unfair competition because its trademark enjoyed "wide repute" a n d the facts of the case indicated a total lack of good faith on the part of the defendants. Id. a t 559, 288 N.Y.S. at 537. The basis of this holding, it should be noted, was not Article 6bis o f the Paris Convention. Instead, the holding was based entirely on New York common law p r i n c ip l e s of unfair competition.

Mo re than twenty years later, in Vaudable v. Montmartre, Inc., 20 Misc. 2d 757, 193 N.Y .S.2d 332 (N.Y. Sup. Ct. 1959), another New York trial court granted a different Paris r e s t a uran t, "Maxim's," injunctive relief against a New York City restaurant that had a p p r o p r ia t e d its name, decor, and distinctive script style, all without permission. The court c o n c l u d e d that the lack of direct competition between the two restaurants was "immaterial" to a common law claim for unfair competition. Id. at 759, 193 N.Y.S.2d at 335. The only r e l e v an t question was whether "there had been a misappropriation, for the advantage of one p e r s o n , of a property right belonging to another." Id. at 759, 193 N.Y.S.2d at 335. Noting t h a t the Paris Maxim's had been in continuous operation since 1946, when it reopened after Wo rld War II, the court concluded that its owners had priority rights as against the junior A m e r i c a n user by virtue of (1) their uninterrupted use of the mark abroad, and (2) the fame o f the "Maxim's" mark among "the class of people residing in the cosmopolitan city of New Y o r k who dine out." Id. 758, 193 N.Y.S.2d at 334.

(b) F e d e r a l Actions (i) T r a d e m a r k Board Rulings A quarter century later, the federal Trademark Trial and Appeal Board ("Trademark B o a r d " ) invoked Vaudable's recognition of the famous marks doctrine in several inter partes p r o c e e d i n g s .1 8 In Mother's Rests., Inc. v. Mother's Other Kitchen, Inc., the Trademark B o a r d stated in dictum that: [I]t is our view that prior use and advertising of a mark in connection with g o o d s or services marketed in a foreign country (whether said advertising occu rs inside or outside the United States) creates no priority rights in said mark in the United States as against one who, in good faith, has adopted the s am e or similar mark for the same or similar goods or services in the United State s prior to the foreigner's first use of the mark on goods or services sold a n d / o r offered in the United States at least unless it can be shown that the f o r e i g n party's mark was, at the time of the adoption and first use of a similar mark by the first user in the United States, a "famous" mark within the m e a n i n g of Vaudable v. Montmartre, Inc.

2 1 8 U.S.P.Q 1046, *8 (T.T.A.B. 1983) (concluding that customers would be likely to confuse t h e "Mother's Pizza Parlour" trademark with the "Mother's Other Kitchen" trademark) (inte rna l citation omitted).

That same year, the Trademark Board applied the same reasoning in All England L a w n Tennis Club, Ltd. v. Creative Aromatiques, 220 U.S.P.Q. 1069 (T.T.A.B. 1983), g r a n t in g plaintiff's request to block registration of a trademark for "Wimbledon Cologne" e v e n though plaintiff was not itself using the Wimbledon mark on any product sold in the U n i t e d States. The Trademark Board observed that the Wimbledon mark had "acquired fame a n d notoriety as used in association with the annual championships within the meaning of Va udab le " and that "purchasers of applicant's cologne would incorrectly believe that said p r o d u c t was approved by or otherwise associated with the Wimbledon tennis championships a n d that allowance of the application would damage opposer's rights to the mark." Id. at *10.

R ec en tly, the Trademark Board has reiterated in dicta that owners of well known f o r e i g n marks need not use those marks in the United States to challenge the registration of m a r k s likely to promote confusion on the part of consumers. See, e.g., First Niagara Ins.

B r o k e r s , Inc. v. First Niagara Fin. Group, Inc., 77 U.S.P.Q.2d 1334, *30-31 (2005), overruled o n other grounds by First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., No. 06120 2, 2007 U.S. App. LEXIS 367 (Fed. Cir. Jan. 9, 2007).

As this court has frequently observed, Trademark Board decisions, "while not binding o n courts within this Circuit, are nevertheless `to be accorded great weight'" under general p r i n c ip l e s of administrative law requiring deference to an agency's interpretation of the s t a tu t e s it is charged with administering. Buti v. Impressa Perosa S.R.L., 139 F.3d at 105 ( q u o t in g Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989)); s e e also In re Dr Pepper Co., 836 F.2d 508, 510 (Fed. Cir. 1987). In applying this principle to this case, however, we identify a significant concern: nowhere in the three cited rulings d o e s the Trademark Board state that its recognition of the famous marks doctrine derives f r o m any provision of the Lanham Act or other federal law. Indeed, the federal basis for the T radem ark Board's recognition of the famous marks doctrine is never expressly stated. Its r e l ia n c e on Vaudable suggests that recognition derives from state common law. At least one T radem ark Board member, however, has questioned whether state common law can support r ec og n it io n of the famous marks doctrine as a matter of federal law: [I]t seems to me that the Vaudable decision according protection to the famous M a x i m ' s restaurant in the United States . . . is inapplicable in this case since t h a t decision was based on a theory of unfair competition, namely m i s a p p r o p ri a t io n , under the law of the State of New York. Under Federal law, it seems to me that application of the well-known marks doctrine depends on wh eth e r the applicable text of the Paris Convention . . . and, in particular, A r t i c le 6bis of that Convention, is self-executing [so as to become part of federal law].

Mo ther's Rests., Inc. v. Mother's Other Kitchen, Inc., 218 U.S.P.Q 1046, *21 (Allen, c o n c u r r in g in part, dissenting in part) (internal citations omitted). Because we conclude that t h e Trademark Board's reliance on state law to recognize the famous marks doctrine falls o u t s id e the sphere to which we owe deference, we consider de novo the question of that d o ct ri ne 's existence within federal trademark law.

(ii) F e d e r a l Case Law T o date, the Ninth Circuit Court of Appeals is the only federal appeals court to have reco gni zed the famous marks doctrine as a matter of federal law. See Grupo Gigante S.A. d e C.V. v. Dallo & Co., 391 F.3d at 1088; cf. International Bancorp, LLC v. Societe des B a i n s de Mer et du Cercle des Estrangers a Monaco, 329 F.3d at 389 n.9 (Motz, J., d i s s e n ti n g ) (noting that the famous marks doctrine has been applied so infrequently that its viability is uncertain). In Grupo Gigante, 391 F.3d at 1088, the Ninth Circuit considered w h e t h e r the "Gigante" mark -- registered and used by a large chain of grocery stores in M e x i c o since 1963 -- was sufficiently well known among Mexican-Americans in Southern Calif ornia to afford it priority over a competing "Gigante" mark used by a separate chain of L o s Angeles grocery stores. In resolving this question, the court ruled: [T ]h ere is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famo u s-mark exception would promote consumer confusion and fraud.

C o m m e r c e crosses borders. In this nation of immigrants, so do people.

T r a d e m a r k is, at its core, about protecting against consumer confusion and " p a l m i n g off." There can be no justification for using trademark law to fool i m m i g ra n t s into thinking that they are buying from the store they liked back home.

Id . at 1094 (footnotes omitted).

In Grupo Gigante, the Ninth Circuit did not reference either the language of the L a n h a m Act nor Article 6bis of the Paris Convention to support recognition of the famous m a r k s doctrine. Indeed, elsewhere in its opinion, the court specifically stated that the Paris C o n v e n t i o n creates no "additional substantive rights" to those provided by the Lanham Act.

I d . at 1100. The court also acknowledged that the famous marks doctrine is not recognized b y California state law. See id. at 1101 (observing that cases cited by plaintiff "provide no s upport for the conclusion that use anywhere in the world suffices to establish priority in California"). Thus, it appears that the Ninth Circuit recognized the famous marks doctrine a s a matter of sound policy: "An absolute territoriality rule without a famous marks exception w o u l d promote customer confusion and fraud." Id. at 1094.

T h i s court has twice referenced the famous marks doctrine, but on neither occasion were we required to decide whether it does, in fact, provide a legal basis for acquiring priority rights in the United States for a foreign mark not used in this country. See Buti v. I m p r e s s a Perosa, S.R.L., 139 F.3d at 104 n.2 (referencing Mother's Restaurant and Vaudable but, in the end, concluding that famous marks doctrine "has no application here given that I m p r e s s a has made no claim under that doctrine"); see also Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 481 (declining to decide whether famous marks doctrine should b e recognized because "even assuming that the famous marks doctrine is otherwise viable a n d applicable, the [Cuban] embargo bars [plaintiff] from acquiring property rights in the .

. . mark through the doctrine").1 9 District courts in this Circuit have reached varying conclusions about the applicability o f the famous marks doctrine to Lanham Act claims. In Empresa Cubana del Tabaco v. Culbro Corp., 213 F. Supp. 2d at 283-84, Judge Sweet concluded that the rights identified in Article 6bis of the Paris Convention could not be pursued in a section 44(h) claim, but could be pursued under section 44(b).2 0 In an unpublished 2005 decision, De Beers LV 19 I n Empresa Cubana, however, we did observe, in dictum, that "[t]o the extent that a foreign entity attempts to utilize the famous marks doctrine as [a] basis for its right to a U . S . trademark and seeks to prevent another entity from using the mark in the United States, t h e claim should be brought under Section 43(a)." Id. at 480 n.10.

20 S e e infra at [43-48].

T radem ark Ltd. v. DeBeers Diamond Syndicate, Inc., No. 04-civ-4099, 2005 U.S. Dist.

L E X IS 9307 (S.D.N.Y. May 18, 2005), Judge Cote characterized the famous marks doctrine a s a "controversial common law exception to the territoriality principle," id. at *21.

N e v e r t h e l e s s , she concluded that rights obtained by the operation of the doctrine at common l a w could be asserted in a federal unfair competition action filed under section 43(a) of the L a n h a m Act. See id. at *25-26; see also De Beers LV Trademark Ltd. v. DeBeers Diamond S y n d ic a t e Inc., 440 F. Supp. 2d 249 (S.D.N.Y. 2006).

That same year, in Almacenes Exito S.A. v. El Gallo Meat Market, Inc., Judge Rakoff r e a c h e d a different conclusion, ruling that "[t]o the extent the famous marks doctrine is a creature of common law it may support state causes of action, but it has no place in federal l a w where Congress has enacted a statute, the Lanham Act, that carefully prescribes the bases f o r federal trademark claims," 381 F. Supp. 2d 324, 326-27 (S.D.N.Y. 2005) (internal cita t i o n omitted). Identifying the territoriality principle as a "bedrock principle of federal trademark law," id. at 326, Judge Rakoff concluded that recognition of a famous marks e x c e p t io n represented "such a radical change in basic federal trademark law" that it could "only be made by Congress, not by the courts," id. at 328. He specifically rejected the a r g u m e n t advanced here by ITC, i.e., that the Lanham Act itself recognizes a famous marks e x c e p t io n by providing a foreign plaintiff with substantive rights identified in Article 6bis.

H e observed that "the Paris Convention, as incorporated by the Lanham Act, only requires ` n a t io n a l treatment.'" Id. at 328 (internal quotation marks omitted). We agree with this ana lysis for reasons discussed in the next two lettered subsections of this opinion.

(c) T r e a t ie s Protecting Famous Marks and United S t a t e s Implementing Legislation I T C insists that Article 6bis of the Paris Convention, together with Article 16(2) of t h e Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), see U r u g u a y Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994) (codified as a m e n d e d at scattered sections of United States Code), provides legal support for its claim to f a m o u s marks protection. As previously noted, Article 6bis provides for member states to the Paris Convention, upon the request of an interested party, to prohibit the use of a trademark which constitutes a reproduction, an i m i ta t i o n , or a translation, liable to create confusion, of a mark considered by t h e competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of t h i s Convention and used for identical or similar goods.

Paris Convention, art. 6bis. Further, TRIPs Article 16(2) extends Article 6bis to service ma rks, see supra at [32] n.15.

A t the outset, we observe that ITC does not specifically contend that these two treaty a r t ic l e s are self-executing.2 1 While Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956), might support such an argument with respect to Article 6bis protection of trademarks, s e e id. at 640 (observing in dictum that, upon ratification by Congress, the Paris Convention 21 S e l f - e x ec u t i n g treaties do not require implementing legislation and become effective a s domestic law immediately upon entry into force. Non-self-executing treaties do not b e co m e effective as domestic law until implementing legislation is enacted. See Flores v. S . Peru Copper Corp., 414 F.3d 233, 257 n.34 (2d Cir. 2003). r e q u i re d "no special legislation in the United States . . . to make [it] effective here"),2 2 no s i m i la r conclusion can extend to Article 16(2) protection of service marks because TRIPs is plainly not a self-executing treaty. See In re Rath, 402 F.3d 1207, 1209 n.2 (Fed. Cir. 2005); s e e also S. Rep. No. 103-412, at 13 (1994) (accompanying the Uruguay Round Agreements A c t , Pub. L. No. 103-465, 108 Stat. 4809 (1994)) (stating that TRIPs and other GATT agree men ts "are not self-executing and thus their legal effect in the United States is governed b y implementing legislation"). While Congress has amended numerous federal statutes to i m p l e m e n t specific provisions of the TRIPs agreement, it appears to have enacted no legislation aimed directly at Article 16(2).2 3 ITC nevertheless submits that Lanham Act sections 44(b) and (h) effectively incorp orate the protections afforded famous marks by the Paris Convention and TRIPs.2 4 22 B u t see International Café, S.A.L. v. Hard Rock Café Int'l, Inc., 252 F.3d 1274, 1 2 7 7 n.5 (11th Cir. 2001) (concluding that the Paris Convention is not self-executing b e c a u s e , on its face, it provides for effectiveness through domestic implementing legislation).

23 S e e , e.g., Pub. L. No. 103-465, 514, 108 Stat. 4809, 4976) (amending 17U.S.C. § 1 0 4A , governing copyrights in restored works, to comport with TRIPs); Pub. L. No. 103-465, 5 3 2 , 108 Stat. 4809, 4983 (amending 35U.S.C. § 154, governing United States patents, to comp ort with TRIPs). Significantly, Congress has enacted legislation to implement TRIPs Article 16(3), which contemplates the extension of anti-dilution protection to certain famous m a r k s . See Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985 ( 1 9 9 5 ) (codified at 15U.S.C. § 1125(c)); see H. Rep. 104-374, reprinted in 1995 U .S .C .C .A .N . 1029 (indicating that anti-dilution act was intended to make United States law c o n s i s te n t with terms of TRIPs and Paris Convention). No comparable legislation exists with resp ect to Article 16(2).

24 S e c t i o n 44(b) states: A n y person whose country of origin is a party to any convention or treaty App ellant's Br. at 14-16 & n.2. ITC's argument is, however, at odds with this court's 2005 r u l in g in Empresa Cubana del Tabaco v. Culbro Corporation, 399 F.3d 462. In that case, we expr essly held that the Paris Convention creates no substantive United States rights beyond those independently provided in the Lanham Act: " A s other courts of appeals have noted, the rights articulated in the Paris C o n v e n t i o n do not exceed the rights conferred by the Lanham Act. Instead, w e conclude that the Paris Convention, as incorporated by the Lanham Act, only requires `national treatment.' National treatment means that foreign nationals should be given the same t r e a tm e n t in each of the member countries as that country makes available to its own citizens. So, section 44 of the Lanham Act gives foreign nationals the s am e rights and protections provided to United States citizens by the Lanham Ac t.

I d . at 485 (emphasis added) (quoting International Café, S.A.L. v. Hard Rock Café Int'l, Inc., 2 5 2 F.3d 1274, 1277-78 (11th Cir. 2001) but omitting internal citations); see also Grupo Gig ante S.A. de C.V. v. Dallo & Co., 391 F.3d at 1100 (stating that Paris Convention creates n o "additional substantive rights" to those provided by Lanham Act). Although this s t a te m e n t was made in the context of a claim asserting substantive rights under Article 10bis o f the Paris Convention, the reasoning applies with equal force to claimed famous marks p r o t e c ti o n under Article 6bis and TRIPs Article 16(2) because no famous marks rights are indep ende ntly afforded by the Lanham Act. See Almacenes Exito S.A. v. El Gallo Meat M k t ., 381 F. Supp. 2d at 327-28.

In reaching this conclusion, we are mindful that one leading commentator urges o t h e r w i se . See 4 McCarthy, supra, § 29:4, at 29-20; see also Empresa Cubana del Tabaco v . Culbro Corp., 399 F.3d at 480 (recognizing McCarthy's view of famous marks doctrine w i t h o u t deciding its correctness). McCarthy concludes that "both the TRIPs Agreement and t h e Paris Convention Article 6bis require the United States to recognize rights" in famous f o r e i g n marks, even if they have not been registered or used in the United States. See 4 M cC ar th y, supra, § 29:62, at 29-167. "In the author's view, this international obligation is e n f o r c e d in the United States by Lanham Act § 44(b) and § 44(h)." Id.; see also id. § 29:4, a t 29-20-21. McCarthy appears to construe the statutory "entitle[ment] to effective p r o t e c ti o n against unfair competition," conferred by section 44(h), to create a federal right to famous marks protection "`coextensive with the substantive provisions'" of Articles 6bis a n d 16(2). Id., § 29:4, at 29-21 (quoting Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 793 (9th Cir. 1981)). We cannot agree.

First, we do not think Toho is helpful in determining whether Congress intended to i n c or p o r a te into the Lanham Act a famous marks exception to the principle of trademark ter rito ria lity. The treaty at issue in that case was not the Paris Convention or TRIPs, but a Trea ty of Friendship, Commerce and Navigation between the United States and Japan. See T o h o Co. v. Sears, Roebuck & Co., 645 F.2d at 792 (citing Treaty of Friendship, Commerce a n d Navigation, United States-Japan, Apr. 2, 1953, 4 U.S.T. 2063). Further, the right at issue w a s not United States priority for a foreign mark not used in this country, but a foreign comp any's right to United States protection against unfair competition for a mark that it did u s e in this country. See id. at 789-90 (describing use of "Godzilla" mark in the U n i t e d States). Even though the Ninth Circuit concluded that, in such circumstances, the foreign mark holder was entitled to the same rights as a domestic counterpart, it did not afford the f o r e i g n mark holder any right not already provided in the Lanham Act. Rather, it concluded t h a t "the practical effect of section 44 and [the Treaty of Friendship, Navigation and C o m m e r c e ] is to provide a federal forum in which Toho can pursue its state claims." Id. at 7 9 3 .2 5 S e c o n d , and more important, we do not ourselves discern in the plain language of 25 W e discuss ITC's state law claim for unfair competition infra at [50]. s e c t io n s 44(b) and (h) a clear congressional intent to incorporate a famous marks exception into federal unfair competition law. Section 44(b) guarantees foreign mark holders only "the bene fits of this section . . . to the extent necessary to give effect to any . . . convention, treaty o r reciprocal law," as well as the "rights to which any owner of a mark is otherwise entitled b y this chapter." 15U.S.C. § 1126(b) (emphasis added). In short, whatever protections Article 6bis and Article 16(2) might contemplate for famous marks, section 44(b) grants f o r e i g n mark holders covered by these treaties only those protections of United States law a l r e ad y specified in the Lanham Act. See Empresa Cubana del Tabaco v. Culbro Corp., 399 F . 3 d at 485. The Lanham Act's unfair competition protections, as we have already e x p l a in e d , are cabined by the long-established principle of territoriality. See supra at [29-31].

T o the extent Section 44(h) references an "entitle[ment] to effective protection against unf air competition," 15U.S.C. § 1126(h), our precedent precludes us from construing this p h r a s e to afford foreign mark holders any rights beyond those specified in section 44(b). See H a v a n a Club Holding, S.A. v. Galleon S.A., 203 F.3d 116, 134 (2d Cir. 2000) (characterizing t h e "[r]ights under section 44(h)" as "co-extensive with treaty rights under section 44(b), i n c l u d in g treaty rights relating to . . . the repression of unfair competition" (internal quotation m a r k s omitted)); see also American Auto. Ass'n v. Spiegel, 205 F.2d 771, 774 (2d Cir. 1953) ( " S i n c e [section 44(h)] is limited to `person[s] designated in subsection (b),' we look to that sub sec tion to learn its scope.").

We further note that, in section 44(d) of the Lanham Act, Congress detailed c i r c u m s ta n c e s under which the holders of foreign registered marks can claim priority rights in the United States, notably including among those circumstances actual or intended use in t h e United States within a specified time. See 15U.S.C. § 1126(d) (affording United States priority rights from date of foreign registration if, inter alia, application for United States r e g i st r a ti o n is filed within six months along with a statement of bona fide intent to use marks in commerce, but denying mark holder right to sue for acts committed prior to United States r e g i st r a ti o n unless registration based on actual use in commerce2 6 ). Congress's specificity in dealing with registered marks cautions against reading a famous marks exception into s e c t io n s 44(b) and (h), which nowhere reference the doctrine, much less the circumstances u n d e r which it would appropriately apply despite the fact that the foreign mark was not used i n this country. We are mindful that Congress has not hesitated to amend the Lanham Act to effect its intent with respect to trademark protection, having done so almost thirty times s i n c e the statute took effect in 1947. See 1 McCarthy, supra, §§ 5:5-11, at 5-13-22.2 7 In light o f these legislative efforts, the absence of any statutory provision expressly incorporating the f a m o u s marks doctrine or Articles 6bis and 16(2) is all the more significant. Before we c o n s t ru e the Lanham Act to include such a significant departure from the principle of territo riality, we will wait for Congress to express its intent more clearly.

(d) P o l i c y Rationales Cannot, by Themselves, Su p p o r t Judicial Recognition of the Famous M a r k s Doctrine Under Federal Law E v e n if the Lanham Act does not specifically incorporate Article 6bis and Article 1 6 ( 2 ) protections for famous foreign marks, ITC urges this court to follow the Ninth Circuit's l e a d and to recognize the famous marks doctrine as a matter of sound policy. See Grupo Gig ante S.A. de C.V. v. Dallo & Co., 391 F.3d at 1094 (recognizing famous marks doctrine b e c a u se "[t]here can be no justification for using trademark law to fool immigrants into t h i n k in g that they are buying from the store they liked back home"). ITC argues that the U n i t e d States cannot expect other nations to protect famous American trademarks if United Sta tes courts decline to afford reciprocal protection to famous foreign marks.

We acknowledge that a persuasive policy argument can be advanced in support of the f a m o u s marks doctrine. See, e.g., De Beers LV Trademark Ltd. v. DeBeers Diamond S y n d ic a t e , Inc., 2005 U.S. Dist. LEXIS 9307, at *25 (noting that "[r]ecognition of the famous m a r k s doctrine is particularly desirable in a world where international travel is commonplace a n d where the Internet and other media facilitate the rapid creation of business goodwill that t r a n sc e n d s borders"); Frederick W . Mostert, Well-Known and Famous Marks: Is Harmony Poss ible in the Global Village?, 86 Trademark Rep. 103, 106 (1996) (arguing that "protection o f the global trading system through the prevention of piracy and unfair exploitation of well k n ow n marks has become essential"). The fact that a doctrine may promote sound policy, how ever, is not a sufficient ground for its judicial recognition, particularly in an area r e g u l a te d by statute. See, e.g., Badaracco v. Comm'r, 464 U.S. 386, 398 (1984) ("The r e l e v a n t question is not whether, as an abstract matter, the rule advocated by petitioners a c c o r d s with good policy. The question we must consider is whether the policy petitioners f a v o r is that which Congress effectuated by its enactment of [the statute]."). In light of the c o m p r e h e n s i v e and frequently modified federal statutory scheme for trademark protection s e t forth in the Lanham Act, we conclude that any policy arguments in favor of the famous m a r k s doctrine must be submitted to Congress for it to determine whether and under what c i r c u ms t a nc e s to accord federal recognition to such an exception to the basic principle of ter rito ria lity. See Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F. Supp. 2d at 3262 8 . Absent such Congressional recognition, we must decline ITC's invitation to grant ju di cia l recognition to the famous marks doctrine simply as a matter of sound policy.

F o r all these reasons, we affirm the district court's award of summary judgment in fav or of defendants on ITC's federal unfair competition claim.

2. S t a t e Common Law Claim for Unfair Competition a. IT C 's Reliance on the Famous Marks Doctrine to Sue for Unfair C o m p e t i t io n Under New York Law I T C submits that, even if we affirm the district court's dismissal of its federal unfair c o m p e t i ti o n claim, we must reverse the dismissal of its parallel state law claim. As it c o r r e c tl y observes, New York common law allows a plaintiff to sue for unfair competition whe re a "property right or a commercial advantage" has been "misappropriated." Flexitized, I n c . v. National Flexitized Corp., 335 F.2d 774, 781-82 (2d Cir. 1964). Nevertheless, in light o f ITC's abandonment of the Bukhara mark and dress for restaurants in the United States, its common law assertion of a "property right or a commercial advantage" in these d e s i g n a ti o n s based on their foreign use depends on whether New York recognizes the famous ma rks doctrine in the circumstances here at issue.

As we have already noted, at least two New York cases indicate such recognition as a general matter: Vaudable v. Montmartre, Inc., 20 M isc. 2d 757, 193 N.Y.S.2d 332, and M a i s o n Prunier v. Prunier's Rest. & Café, 159 Misc. 551, 288 N.Y.S.2d 529. Neither the N e w York Court of Appeals nor any intermediate New York appellate court, however, has e v e r specifically adopted the views expressed in Prunier and Vaudable to accord common l a w protection to the owners of famous marks. Moreover, no New York court has clearly d e l i n ea t e d a standard for determining when a mark becomes sufficiently famous to warrant p r o t e c ti o n . "In the absence of authoritative law from the state's highest court, we must either ( 1 ) predict how the New York Court of Appeals would resolve the state law question, or, if state law is so uncertain that we can make no reasonable prediction, (2) certify the question to the New York Court of Appeals for a definitive resolution." DiBella v. Hopkins, 403 F.3d 102 , 111 (2d Cir. 2005). In this case, we opt for certification. b. Certif y i n g the Question of New York's Common Law R e c o g n i t io n of the Famous Marks Doctrine (1) S t a n d a r d for Certification New York law and Second Circuit Local Rule § 0.27 permit us to certify to the New York Court of Appeals "determinative questions of New York law [that] are involved in a c a s e pending before [us] for which no controlling precedent of the Court of Appeals exists." N .Y . Comp. Codes R. & Regs. tit. 22, § 500.27(a). In deciding whether to certify a question, w e consider, inter alia, "(1) the absence of authoritative state court interpretations of the [law in question]; (2) the importance of the issue to the state, and whether the question implicates i s s u e s of state public policy; and (3) the capacity of certification to resolve the litigation." M orris v. Schroder Capital Mgmt. Int'l, 445 F.3d 525, 531 (2d Cir. 2006) (internal quotation marks omitted).

(2) C e r t i fi e d Question 1: Does New York Recognize the F a m o u s Marks Doctrine? In this case, we conclude that these factors weigh in favor of certifying the question o f New York's recognition of the famous marks doctrine. First, the only New York cases to address the question of whether state common law recognizes the famous marks doctrine, V a u d a ble and Prunier, are decades-old trial court decisions. While these decisions are r o u t i n e l y cited by non-New York courts as accurate statements of the state's common law o f unfair competition,2 8 and while commentators routinely identify the cases as foundational in the development of the famous marks doctrine,2 9 the lack of authoritative adoption of the f a m o u s marks doctrine by New York's highest court weighs in favor of certification.

S e c o n d , recognition of the famous marks doctrine as part of New York common law is plainly an important policy issue for a state that plays a pivotal role in international c o m m e r c e . This factor strongly counsels in favor of our soliciting the views of the New York Court of Appeals. See generally Board of Regents v. Roth, 408 U.S. 564, 577 (1972) ( o b s e r v in g that property interests "are created and their dimensions are defined by existing r u l e s or understandings that stem from an independent source such as state law"). Finally, c e r t if i c a ti o n will conclusively resolve the question of whether ITC's state unfair competition c l a im was, in fact, properly dismissed.

A cc or di ng ly, we certify the following question to the New York Court of Appeals: " D o e s New York common law permit the owner of a famous mark or trade dress to assert prop erty rights therein by virtue of the owner's prior use of the mark or dress in a foreign c o u n t r y? " (3) C e r t i f i e d Question 2: How Famous Must a Mark Be to C o m e Within the Famous Marks Doctrine? If the New York Court of Appeals were to answer the first certified question in the a f f i r m a ti v e , we ask it to consider a second query: "How famous must a foreign mark or trade d r e s s be to permit its owner to sue for unfair competition?" 3 0 Although we have had no prior o c c a s i o n to address this question, we note the availability of a number of possible standards.

(a) S e c o n d a r y Meaning If New York were inclined to recognize a broad famous marks doctrine, the Court of A p peals might conclude that a foreign mark's acquisition of "secondary meaning" in the state w a s sufficient to accord it common law protection. "Secondary meaning" is a term of art r e f e r e n ci n g a trademark's ability to "`identify the source of the product rather than the p r o d u c t itself.'" Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 766 n.4 (quoting Inwood La bs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982)); see Allied Maint. Corp. v. A l l i e d Mech. Trades, Inc., 42 N.Y.2d 538, 545, 399 N.Y.S.2d 628, 632 (1977) (explicating "second ary meaning" under New York law); see also Genesee Brewing Co. v. Stroh Brewing C o . , 124 F.3d 137, 143 n.4 (2d Cir. 1997) (identifying factors relevant to determining second ary meaning). Under this standard, a court deciding whether to accord famous marks p r o t e c ti o n would consider only whether the source of the foreign mark is well known in New Yo rk. See generally Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d at 1097.

The Court of Appeals might note, however, that in Grupo Gigante the Ninth Circuit spec ifically rejected "secondary meaning" as the appropriate standard for application of the f a m o u s marks doctrine. That federal court explained that such an interpretation of the f a m o u s marks doctrine went "too far" because it effectively eliminated the territoriality p r i n c ip l e that itself "has a long history in the common law." Id. at 1097-98.

(b) S e c o n d a r y Meaning Plus I n s t ea d , the Court of Appeals might consider the Ninth Circuit's compromise s t a n d a rd , which can be described as "secondary meaning plus." See id. at 1098 (holding that "second ary meaning is not enough"). Under this test, "where the mark has not before been u s e d in the American market, 3 1 the court must be satisfied, by a preponderance of the e v i d e n c e , that a substantial percentage of consumers in the relevant American market is f a m i l ia r with the foreign mark." Id. (emphasis added); see also 4 McCarthy, supra, § 29:4, a t 29-17 (suggesting that a "substantial" percentage of consumers in the relevant American market would be at least 50%).

Judg e Graber, concurring in Grupo Gigante, emphasized the intermediate character of this standard: I agree that a foreign owner of a supposedly famous or well-known foreign trademark must show a higher level of "fame" or recognition than that required to establish secondary meaning. Ultimately, the standard for famous or well k n ow n marks is an intermediate one. To enjoy extraterritorial trademark p r o t e c ti o n , the owner of a foreign trademark need not show the level of r e c o g n i t io n necessary to receive nation-wide protection against trademark d i l u ti o n . On the other hand, the foreign trademark owner who does not use a mark in the United States must show more than the level of recognition that is n e c e s s a ry in a domestic trademark infringement case.

391 F.3d at 1106 (Graber, J., concurring).

(c) T h e Anti-Dilution Statute Standard Prec isely because "secondary meaning plus" is an intermediate standard, the Court of Ap peals might also consider the high standard of recognition established by section 43(c) of t h e Lanham Act, the federal anti-dilution statute. See 15U.S.C. § 1125(c). Under that f e d e r a l law, four non-exclusive factors are relevant when determining whether a mark is suff iciently famous for anti-dilution protection: (i) T h e duration, extent, and geographic reach of advertising and publicity o f the mark, whether advertised or publicized by the owner or third parties; (ii) T h e amount, volume, and geographic extent of sales of goods or s e r v ic e s offered under the mark; (iii) The extent of actual recognition of the mark; (iv) W h e t h e r the mark was registered under the Act of March 3, 1881, or th e Act of February 20, 1905, or on the principal register.

I d . § 1125(c)(2).

U n d e r the federal anti-dilution statute, the holder of a mark deemed famous under this t e s t may seek an injunction against another person who, "at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to c a u s e dilution by blurring or dilution by tarnishment of the famous mark, regardless of the p r e s e n c e or absence of actual or likely confusion, of competition, or of actual economic inju ry." Id. § 1125(c)(1). ITC does not sue for dilution in this case. Nevertheless, the Court o f Appeals might consider whether the factors set out in the statute provide a useful guide fo r defining famous marks generally.

(d) R e c o m m e n d a t i o n of the World Intellectual P r o p e r ty Organization Fi na lly, should the Court of Appeals decide to articulate an entirely new and different standard of recognition for the application of the famous marks doctrine, among the factors it might consider are those identified as relevant in the non-binding "Joint Recommendation C o n c e r n i n g Provisions on the Protection of Well-Known Marks," adopted by the World I n t e ll e c tu a l Property Organization in 1999: (1) the degree of knowledge or recognition of the mark in the relevant sector of the public; (2) the duration, extent and geographical area of any use of the mark; (3) the duration, extent and geographical area of any promotion of the m a r k , including advertising or publicity and the presentation, at fairs or exhib itions, or the goods and/or services to which the mark applies; (4) the duration and geographical area of any registrations, and/or any a p p l i ca t i o n for registration, of the mark, to the extent that they reflect use or recognition of the mark; (5) the record of successful enforcement of rights in the mark, in particular, t h e extent to which the mark was recognized as well known by co mp eten t authorities; [and] (6) the value associated with the mark.

Wo rld Intellectual Property Organization, Joint Recommendation Concerning Provisions on t h e Protection of Well-Known Marks (Sept. 1999), available at http://www.wipo.int/abouti p / e n /d e v e l o p m e n t iplaw/pub833.htm.

W e express no view as to how New York should define its state common law. We s imply reserve decision on ITC's challenge to the district court's dismissal of its state c o m m o n law claim for unfair competition pending the New York Court of Appeals response t o our certified questions.

D. The False Advertising Claim 1. L a n ha m Act Section 43(a)(1)(B) I T C submits that, to the extent defendants implied some affiliation between their Buk hara Grill restaurants and ITC's Bukhara products, they are guilty of false advertising und er section 43(a)(1)(B) of the Lanham Act.3 2 That statute states, in relevant part: ( a ) (1 ) Any person who, on or in connection with any goods or services, or any c o n t a in e r for goods, uses in commerce any word, term, name, symbol, or d e v i c e , or any combination thereof, or any false designation of origin, false or m i s l e a d in g description of fact, or false or misleading representation of fact, which ...

( B ) in commercial advertising or promotion, misrepresents the nature, c h a r a c t e r i s ti c s , qualities, or geographic origin of his or her or another person's g o o d s , services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.

15U.S.C. § 1125(a).

2. S t a n d i n g to Complain of False Advertising T o establish standing to pursue a false advertising claim under section 43(a)(1)(B), a n aggrieved party must demonstrate both (1) "`a reasonable interest to be protected against t h e advertiser's false or misleading claims,'" and (2) "`a reasonable basis for believing that th i s interest is likely to be damaged by the false or misleading advertising.'" Societe des H otels Meridien v. LaSalle Hotel Operating P'ship, 380 F.3d 126, 130 (2d Cir. 2004) ( q u o t in g Ortho Pharm. Corp. v. Cosprophar, Inc., 32 F.3d 690, 694 (2d Cir. 1994)). The "reaso nable interest" prong of this test includes commercial interests, direct pecuniary i n t e r e s ts , and even a future potential for a commercial or competitive injury. See PDK Labs, I n c . v. Friedlander, 103 F.3d 1105, 1111 (2d Cir. 1997) (citing Berni v. Int'l Gourmet Rests. o f Am., Inc., 838 F.2d 642, 648 (2d Cir. 1988)). The "reasonable basis" prong requires the plaintiff to show "`both likely injury and a causal nexus to the false advertising.'" Havana C l u b Holding, S.A. v. Galleon S.A., 203 F.3d at 130 (quoting Ortho Pharm. Corp. v. C o s p r o p h a r , Inc., 32 F.3d at 694).

In this case, the district court dismissed ITC's section 43(a)(1)(B) claim for lack of s ta n d i n g . Insofar as ITC professed a plan to open a new Bukhara restaurant in the U n i t e d S t a t e s , the court concluded that the plan was too ill-defined to constitute a "reasonable i n t e re s t [ ] to be protected," particularly in light of ITC's abandonment of its registered Buk hara mark for restaurant services. See ITC v. Punchgini, 373 F. Supp. 2d at 292. To the e x t e n t ITC had attempted to market its Dal Bukhara line of packaged foods in the U n i t e d S t a t e s , the district court identified this as a "reasonable interest to be protected." Id.

N e v e r t h e l e s s , it concluded that ITC had failed to adduce evidence of "a reasonable basis" for it to think that defendants' actions would likely damage this interest. See id. ITC submits t h a t both these conclusions are erroneous. We disagree.

3. ITC 's Standing Claims Are Without Merit a. I T C ' s Development and Marketing of the Dal Bukhara Line B e c a u s e defendants do not challenge the district court's conclusion that ITC's efforts t o develop and market its Dal Bukhara line of packaged foods could give it a "reasonable i n t e r e s t to be protected," we do not review that conclusion on this appeal. We consider only w h e t h e r ITC demonstrated a sufficient "reasonable basis" to think that this interest was likely to be damaged by defendants' false advertising of its New York restaurants. On appeal, ITC subm its that it demonstrated the requisite reasonable basis "because Defendants' misleading statem ents draw direct and misleading comparisons between [themselves] and ITC's [New De lhi] Bukhara, and because ITC sells [its Dal Bukhara] food products based on the r e p u t a ti o n of its [overseas Bukhara] restaurants." Appellants' Br. at 43. We are not persuaded.

Wh ere a "defendant has drawn a direct comparison between its own product and that of the plaintiff, we are inclined, without much more, to find standing to bring Lanham Act claim s." Societe des Hotels Meridien v. LaSalle Hotel Operating P'ship, 380 F.3d at 130.

Tha t, however, is not this case. ITC has presented no evidence indicating that defendants e v e r publicly compared their Bukhara Grill restaurants to the packaged Dal Bukhara food p r o d u c t s . Indeed, all of defendants' allegedly misleading statements were made well before I T C launched its Dal Bukhara line in 2003. Thus, we cannot agree with ITC that defendants' statem ents comparing Bukhara Grill to the New Delhi Bukhara are the functional equivalent o f a direct comparison between defendants' restaurants and ITC's packaged food products.

Wh ere a plaintiff's products are "not obviously in competition with the defendant's p r o d u c t s , [and] the defendant's advertisements do not draw direct comparisons between the pro duc ts," then a plaintiff must make a "more substantial showing" of "injury and causation" to satisfy the reasonable basis prong of the standing requirement. Ortho Pharm. Corp. v. C o s p r o p h a r , Inc., 32 F.3d at 694. On the record before us, we agree with the district court t h a t ITC has failed to satisfy this burden. Specifically, ITC has produced no evidence that d e f e n d a n t s ' operation of their Bukhara Grill restaurants is likely to damage its Dal Bukhara p a c k a g e d food line. As the district court aptly observed: "It stretches the limits of reason to s u g g e s t that consumers, confused as to a non-existent affiliation between ITC's canned `Dal B u k h a r a ' [foods] and dishes served at defendants' restaurants, are likely to visit Manhattan t o dine out at the `Bukhara Grill' restaurant, rather than purchasing the canned product at t h e i r local grocery store." ITC v. Punchgini, 373 F. Supp. 2d at 292. b. Injury to ITC's Bukhara Restaurants Outside the United States A lte rn ati ve ly, ITC submits that it has standing to sue defendants for false advertising b e c a u s e defendants' efforts to associate their Bukhara Grill establishments with ITC's Buk hara restaurants will discourage diners disappointed by the food or service at Bukhara Grill from patronizing ITC's Bukhara restaurants. Assuming arguendo that ITC's interest in avoiding reputational damage to its overseas restaurants is a "reasonable interest" to be p r o t e c te d by United States law, ITC has failed to adduce an evidentiary basis for thinking s u c h damage likely. See Ortho Pharm. Corp. v. Cosprophar, Inc., 32 F.3d at 694 (observing t h a t "plaintiff must show more than a `subjective belief' that it will be damaged"). While a p l a i n ti f f need not demonstrate that it has, in fact, "lost sales because of the defendant's adv ertise me nts," to establish standing, it must demonstrate "the likelihood of injury and c a u s a t io n . . . in some manner." Id.

In an effort to carry this burden, ITC offers evidence that a significant percentage of d e f e n d a n t s ' customers are New Yorkers of Indian descent. It submits that these customers are more apt to travel to India than average New Yorkers and, therefore, more likely to come into contact with ITC's Bukhara restaurants. ITC asserts that, based on possible negative e x p e r i en c e s at defendants' Bukhara Grill, these travelers will not patronize the ITC B u k h a r a s , adversely affecting their earnings. ITC's reasoning depends on multiple levels of s p e c u l a ti o n , and its conclusion is too attenuated from the patronage profile evidence to d e m o n s t r a te a real "likelihood of injury and causation" sufficient to confer standing to sue f o r false advertising. See Joint Stock Soc'y v. UDV N. Am., Inc., 266 F.3d 164, 181-85 (3d Cir. 2001) (rejecting Russian vodka producers' argument that they had standing to assert f a l s e advertising claim because advertisements by defendants in United States indirectly hurt sale s of Russian vodka overseas). c. T h e Possibility that ITC Might Again Open Bukhara Restaurants i n the United States In a final effort to establish standing, ITC argues that the United States represents an a r e a of "natural expansion" for its current operations and that it is presently "considering" o p e n i n g Bukhara restaurants here. Appellants' Br. at 45. ITC notes that in Berni v. I n t e rn a t i o n al Gourmet Restaurants of America, 838 F.2d at 648, this court suggested that a p l a i n ti f f "considering establishing a commercial venture in the future" might, under some c i r c u m s t a n c e s , have a sufficient commercial interest to sue a competitor for false advertising.

T h e suggestion is dictum because the court ruled that the Berni plaintiff did not, in fact, have s ta n d i n g . Even if we were inclined, however, to hold that well-developed plans to enter a m a r k e t constitute a sufficient commercial interest to be protected from false advertising, see, e . g ., West Indian Sea Island Cotton Ass'n v. Threadtex, Inc., 761 F. Supp. 1041, 1049 n.5 ( S. D. N. Y. 1991); National Lampoon, Inc. v. American Broad. Co., 376 F. Supp. 733, 746 ( S. D. N. Y. 1974), aff'd on other grounds, 497 F.2d 1343 (2d Cir. 1974), for reasons already d i s c u s se d supra at [19-20], we conclude that ITC has failed to adduce evidence from which a reasonable jury could find that it had in fact formulated any such well-developed entry plan.

A cc or di ng ly, we conclude that the district court correctly dismissed ITC's false a d v e r t is i n g claim for lack of standing.

III. Conclusion To summarize, we conclude that: ( 1 ) as a matter of law, ITC abandoned its United States rights in its registered "Buk hara" mark for restaurant services and, therefore, cannot assert a successful claim for trademark infringement under section 32(1)(a) of the Lanham Act or state common law; nor c a n it continue to maintain the registered mark, which the district court correctly ordered c a n c e l le d ; ( 2 ) plaintiff cannot assert a successful federal claim for unfair competition because C o n g r e s s has not incorporated the substantive protections of the famous marks doctrine set forth in Paris Convention Article 6bis and TRIPs Article 16(2) into the relevant federal law, and this court cannot recognize the doctrine simply as a matter of sound policy; (3) with respect to ITC's state law claim of unfair competition, we defer our ruling o n this appeal pending the New York Court of Appeals' response to two questions: (a) w h e t h e r the famous marks doctrine is recognized under the state's common law of unfair c o m p e t i ti o n and, if so, (b) how famous a mark must be to qualify for such common law p r o t e c ti o n ; and ( 4 ) ITC lacks standing to assert a claim for false advertising under section 43(a)(1)(B) o f the Lanham Act against the defendants.

D ECISION AFFIRMED IN PART; RESERVED IN PART PENDING THE RESPONSE OF THE NEW Y ORK COURT OF APPEALS TO CERTIFIED QUESTIONS.

C ERTIFICATE U p o n further order of the court, the following questions will be certified to the New York Court of Appeals pursuant to Second Circuit Local Rule § 0.27 and N.Y. Comp. Codes R. & Regs. tit. 22, § 500.27(a), as ordered by the Court of Appeals for the Second Circuit: 1. Does New York common law permit the owner of a famous mark or trade d r e s s to assert property rights therein by virtue of the owner's prior use of the m ar k or dress in a foreign country? 2. I f so, how famous must a foreign mark be to permit a foreign mark owner to b r i n g a claim for unfair competition?

1 T h e Honorable James L. Oakes, who was a member of this panel, retired following o r a l argument. The remaining two panel members, who agree on the disposition, decide this appeal pursuant to Local Rule § 0.14(b).

2 A l t h o u g h the term "famous marks" is often used to describe marks that qualify for p r o t e c ti o n under the federal anti-dilution statute, see 15U.S.C. § 1125(c), the "famous mark s" doctrine is, in fact, a different and distinct "legal concept under which a trademark o r service mark is protected within a nation if it is well known in that nation even though the mark is not actually used or registered in that nation," 4 J. Thomas McCarthy, McCarthy on T r a d e m a r k s and Unfair Competition, § 29.2, at 29-164 (4th ed. 2002). Thus, the famous m a r k s doctrine might more aptly be described as the famous foreign marks doctrine. It is in this latter sense that we reference the famous marks doctrine on this appeal.

3 A l t h o u g h we affirm the district court's dismissal of all ITC's federal claims, we hes itate to dismiss ITC's state claim as merely pendent, see, e.g., Giordano v. City of New York , 274 F.3d 740, 754 (2d Cir. 2002), because it appears that we may have diversity j u r is d i c ti o n over that claim. Nevertheless, given our decision to certify questions of state law r e g ar d i n g that claim, ITC might well consider its interests better served by transfer of the state claim for all purposes to state court. We will defer formal certification following i s s u a n ce of this opinion to allow ITC ten days to communicate its wishes to the court. De fen dan ts are afforded ten days more to respond.

4 T h e record indicates that in 2002 and 2003, the New Delhi Bukhara was named one o f the world's fifty best restaurants by London-based "Restaurant" magazine.

5 This product takes its name from a lentil dish served at the New Delhi Bukhara resta ura nt.

6 I T C ' s amended complaint also charged defendants with false designation of origin in violation of the Lanham Act, 15U.S.C. § 1125(a), and deceptive acts and practices in v i o l a ti o n of New York General Business Law § 349, but it appears to have abandoned those claim s in otherwise opposing defendants' motion for summary judgment. See ITC Ltd. v. P u n c h g i n i , Inc., 373 F. Supp. 2d at 278.

7 The statute states, in pertinent part: Any person who shall, without the consent of the registrant ( a ) use in commerce any reproduction, counterfeit, copy, or colorable imitation o f a registered mark in connection with the sale, offering for sale, distribution, o r advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15U.S.C. § 1114(1)(a).

8 While the Lanham Act permits a person who has a bona fide intention to use a mark in commerce to apply to register the mark before actually using it in commerce, see 15U.S.C. § 1051(b), the registrant must within six months file a verified statement that the mark has b e e n used in commerce for the registration to be effective, see id. § 1051(d); see also Wa rnerVisio n Entm't v. Empire of Carolina, 101 F.3d 259, 260 (2d Cir. 1996) (discussing reg istrati on of marks intended for use in commerce).

9 A l t h o u g h we have not previously stated specifically that a mark holder's intent to r e s u m e use of the mark must be formulated during the three-year period of non-use, we do s o now, noting that two other circuit courts have also reached this conclusion. See, e.g., I m p e r i a l Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1580-81 [Fed. Cir.] (expressly r e c o g n i zi n g that intent must be formulated during non-use period); Emergency One, Inc. v. A m e r i c a n FireEagle, Ltd., 228 F.3d at 537 [4th Cir.] (same). Indeed, we think this c o n c l u s io n follows naturally from the fact that an abandoned mark may be appropriated for u s e by other actors in the marketplace. An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party w h o has commenced use of a mark -- thereby acquiring priority rights in that mark -- after t h r e e years of non-use. We do not, however, foreclose the use of evidence arising after the releva nt three-year period to demonstrate an intent within that period to resume use. 10 T h e two factors identified in Silverman are not distinct but intertwined. A mark own er's reason for suspending use of a mark is relevant to abandonment analysis only as c i r c u m s ta n t i al evidence shedding possible light on his intent to resume future use within a reaso nable period of time. In short, not every "reasonable suspension" will necessarily rebut a presumption of abandonment. See Silverman v. CBS, Inc., 870 F.2d at 47 (observing that " h o w e v e r laudable one might think CBS's motives to be, such motives cannot overcome the u n d i s p u te d fact that CBS has not used its mark for more than 20 years and that, even now, it has no plans to resume [its] use in the reasonably foreseeable future," and further noting t h a t "we see nothing in the statute that makes the consequence of an intent not to resume use turn on the worthiness of the motive for holding such intent"). 12 I n d e e d , there is no reason to think plaintiffs could make such a showing with respect to the New York hospitality market, which experienced considerable growth during the p e r i o d 1997-2000. See John Holusha, "Commercial Property; An Up Cycle Just Keeps Ro lling ," The New York Times 11:1 (Sept. 24, 2000) (noting historically high occupancy r a t e s in city hotels with 13% growth in first half of year); cf. Marian Burros, "Waiter, Hold t h e Foie Gras: Slump Hits New York Dining," The New York Times A:1 (Sept. 4, 2001) (no ting , in 2001, first signs of decline in city's 10-year restaurant boom). 13 In its amended complaint, ITC also asserted an unfair competition claim under s e c t io n 44(h) of the Lanham Act. See 15U.S.C. § 1126(h). The district court did not explic itly pass on this claim in dismissing the entirety of ITC's complaint, and ITC does not p r e s s it on this appeal. Accordingly, we deem any such claim waived, see Burkybile v. Bd. o f Educ. of Hastings-on-Hudson Union, 411 F.3d 306, 308 n.1 (2d Cir. 2005), and we treat IT C's unfair competition claim as having been brought solely under section 43(a). 14 The "territoriality principle" stands in contrast to the so-called "universality prin ciple ," which posits that "if a trademark [is] lawfully affixed to merchandise in one co un try, the merchandise would carry that mark lawfully wherever it went and could not be d e e m e d an infringer although transported to another country where the exclusive right to the mark was held by someone other than the owner of the merchandise." Osawa & Co. v. B & H Photo, 589 F. Supp. at 1171. The universality principle has been rejected in American trademark law. See American Circuit Breaker Corp. v. Or. Breakers, Inc., 406 F.3d at 581 ( c i ti n g A. Bourjois & Co. v. Katzel, 260 U.S. 689 (1923)). 15 T h e reach of Article 6bis was extended to service marks by Article 16(2) of the A g r e e m e n t on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), see gene rally Uruguay Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994) ( c o d i f ie d as amended at scattered sections of the United States Code), which states that " A r t i c le 6bis of the Paris Convention shall apply, mutatis mutandis, to services." 16 "E ver ything that comes from the sea." 17 Article 10bis of the Paris Convention requires member states to "assure to nationals [ o f other member states] effective protection against unfair competition." Paris Convention, a r t . 10bis. 18 T h e Trademark Board's primary function is to determine whether trademarks are registrab le and to conduct opposition and cancellation proceedings by which interested p a r t ie s can dispute the claims of applicants and registrants. See 15U.S.C. §§ 1051, 1063-64. relating to trademarks, trade or commercial names, or the repression of unfair c o m p e t i ti o n , to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits o f this section under the conditions expressed herein to the extent necessary to g i v e effect to any provision of such convention, treaty or reciprocal law, in a d d i t io n to the rights to which any owner of a mark is otherwise entitled by this chapter.

15U.S.C. § 1126(b). S e c t i o n 44(h) states: A n y person designated in subsection (b) of this section as entitled to the bene fits and subject to the provisions of this chapter shall be entitled to e f f e c t iv e protection against unfair competition, and the remedies provided in this chapter for infringement of marks shall be available so far as they may be app rop riate in repressing acts of unfair competition. Id. § 1126(h). 26 B e c a u s e territoriality is the bedrock principle of trademark law, we understand the r e f e r e n ce to "use in commerce" in the Lanham Act to contemplate use that, at some point in the transaction, implicates the United States. 27 A s recently as 2002, Congress amended the Lanham Act to bring United States law into compliance with the Madrid Protocol, another international agreement. See Madrid P r o t o c o l Implementation Act, Pub. L. No. 107-273, § 13402, 116 Stat. 1758, 1913 (2002) ( c o d i f ie d at 15U.S.C. § 1141) (providing mechanism to register marks in several nations). 28 S e e , e.g., Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d at 1095; Buti v. I m p r e s s a Perosa, S.R.L., 139 F.3d at 104; Person's Co. v. Christman, 900 F.2d at 1570; A l m a c e n e s Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F. Supp. 2d at 328; De Beers LV T radem ark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005 U.S. Dist. LEXIS 9307 at *21-22. 29 S e e , e.g., 4 McCarthy, supra, § 29:4, at 29-12; Graeme B. Dinwoodie et al., I n t e rn a t i o n al Intellectual Property Law and Policy 108 (2001). 30 In formulating both certified questions, we do not intend to limit the Court of A p p e a l s ' analysis or its response. That court may expand or modify the certified questions a s it deems appropriate to indicate whether state common law recognizes the famous marks doc trine and the scope of that recognition. 31 N e w York could, of course, conclude that a "secondary meaning plus" standard also a p p l i ed to a foreign mark or dress that had previously been used in the United States where, a s in this case, such domestic use had been abandoned. 32 I T C pursues a false advertising claim exclusively under federal law, not state law.

ITC Limited v. Punchgini, Inc. (2nd Cir. 2007)

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