When Will I Be Famous?: Protecting Well-Known Foreign Marks In The United States

• Published date: 17 May 2020
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Lewis Roca Rothgerber Christie LLP
• Author: Mr Michael J. McCue and Cindy A. Villanueva

A split among US circuit courts and an administrative court on the application of the well-known marks doctrine makes registration in the United States more important than ever. But famous marks will always attract greater protection

Foreign companies seeking to enforce their trademarks against junior users in the United States often rely on establishing that their marks are well known or famous in the United States. Foreign marks that are well known in the United States may be protected even though they are not actually used or registered there. In addition, if the foreign marks qualify as 'famous' under federal trademark dilution laws (which require a much higher level of fame), they are entitled to even broader protection. However, foreign companies relying on these doctrines to enforce their marks in the United States face challenges and uncertainty.

Well-known marks doctrine

The well-known marks doctrine, established under Article 6bis of the Paris Convention, ensures that a mark that is well known in a country is protected even if it is not used or registered there (5 J Thomas McCarthy, McCarthy on Trademarks and Unfair Competition '29:61 (4th ed 2010)). However, Congress has not amended US trademark laws to expressly incorporate the doctrine. As a result, there is disagreement in US civil courts and the TTAB (the administrative tribunal that decides opposition and cancellation proceedings) as to whether the well-known marks doctrine applies.

In Grupo Gigante v Dallo (391 F3d 1088, 1108,9th Cir 2004), a Mexican grocery store chain trading under the GIGANTE mark sued a grocery store using the GIGANTE mark in San Diego. The US Court of Appeals for the Ninth Circuit (which covers California and other western states) recognised the territoriality principle - that priority of rights in the United States is based on priority of use in the United States, not priority in other countries. However, the court also acknowledged that the well-known marks doctrine is an exception to that principle. Applying this, the court found that, even though the foreign user did not actually use the mark in the United States until after the domestic user, given that consumers in the United States recognised the foreign user's mark as having achieved a certain level of fame, the territoriality principle did not deny priority to the foreign user. The court reasoned that applying the territoriality principle in an absolute manner would promote consumer confusion and fraud...