Other Legal Authority - Foreign Well-Known Mark Doctrine



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  • To the extent the "well known mark" doctrine is recognized at all, pleading only use of such a mark outside the United States without any pleading of widespread recognition of the mark within the United States as signifying a particular source of goods, even if such source is anonymous, is an nsufficient basis for a claim of dilution.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Furthermore, to the extent the "well known mark" doctrine is recognized at all, as discussed herein, pleading only use of such a mark outside the United States without any pleading of widespread recognition of the mark within the United States as signifying a particular source of goods, even if such source is anonymous, is an nsufficient basis for a claim of dilution.
  • The "well known mark" doctrine is a minority view which provides no independent federal cause of action and no additional substantive rights beyond those found in the Lanham Act.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • However, as the Board noted recently in Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1592 n.4 (TTAB 2009), the "well known mark" doctrine is a minority view which provides no independent federal cause of action and no additional substantive rights beyond those found in the Lanham Act.
  • Congress has enacted no specific implementing legislation with respect to Article 16(2) of TRIPs which relates to "well known marks," and that nowhere in the Lanham Act itself is the "well known mark" doctrine specified.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Moreover, courts have observed that Congress has enacted no specific implementing legislation with respect to Article 16(2) of TRIPs which relates to "well known marks," and that nowhere in the Lanham Act itself is the "well known mark" doctrine specified. ITC Ltd. v. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414, 1431-1432 (2d Cir. 2007) (finding no right to protection for "well known marks" under Sections 44(b) and 44(h) of the Lanham Act), citing Almacenes Exito S.A. v. El Gallo Meat Mkt., 381 F.Supp.2d 324, 326-27 (S.D.N.Y. 2005). See also Bayer, 90 USPQ2d at 1591 (absent use in the United States, Sections 44(b) or (h) do not provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding).
  • Where is no question but that Congress generally intended section 44 of the Lanham Act to implement the Paris Convention, this does not mean that Congress intended to do so in every respect or that it actually accomplished that objective in all respects or that it correctly understood the requirements of the Paris Convention in enacting section 44.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Our primary reviewing court has noted that while "[t]here is no question but that Congress generally intended section 44 of the Lanham Act to implement the Paris Convention . . . this does not mean that Congress intended to do so in every respect or that it actually accomplished that objective in all respects or that it correctly understood the requirements of the Paris Convention in enacting section 44." In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1177 (Fed. Cir. 2005) citing Lanham Act § 45, 15 U.S.C. § 1127 (2000) and H.R. Rep. No. 78-603, at 4 (1943).
  • Under the "well known mark" doctrine, also known as the "foreign famous mark" doctrine, a party asserts that its mark, while as yet unused in the United States, has become so well known here that it may not be registered by another.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Under the "well known mark" doctrine, also known as the "foreign famous mark" doctrine, a party asserts that its mark, while as yet unused in the United States, has become so well known here that it may not be registered by another. Franpovi SA v. Wessin, 89 USPQ2d 1637, 1638 n.3 (TTAB 2009).
Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010) Grand Total
Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) 1 1
Franpovi SA v. Wessin, 89 USPQ2d 1637 (TTAB 2009) 1
ITC Ltd. v. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414 (2d Cir. 2007) 1
In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) 1
Almacenes Exito S.A. v. El Gallo Meat Mkt., 381 F.Supp.2d 324 (S.D.N.Y. 2005) 1
Grand Total 6 6
No Statutes Listed

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