NEW YORK–LAWFUEL – Patent Law News –The intellectual property law firm Kenyon and Kenyon LLP announced today that its client, Punchgini, Inc., the proprietor of the BUKHARA GRILL restaurant chain, had prevailed on all federal claims at the United States Court of Appeals for the Second Circuit in a major decision regarding the “Famous Marks Doctrine” for owners of foreign trademarks. The Firm’s Managing Partner, Rich Gresalfi, said “this is a wonderful victory and adds to the long line of landmark decisions the Firm has obtained for its clients in the trademark area, going back to cases such as AOL v. AT&T (where the Firm defended its client AT&T in connection with the marks “You Have Mail,” “IM” and “Buddy List”) and Mead Data v. Toyota (where the Firm secured the right of its client Toyota to sell cars under the “LEXUS” name).
In a 65-page decision, which came down on March 28, 2007, the Second Circuit affirmed that Plaintiffs ITC Limited and ITC Hotels Limited (collectively “ITC”), the owners of a restaurant in India, had abandoned any rights they had to the name Bukhara in the United States, and rejected their argument that the decision should be overturned because it owned a foreign mark that it alleged to be “famous” in the United States. Plaintiffs ITC sued Kenyon & Kenyon clients’ Punchgini, Inc., Bukhara Grill II, Inc., and certain additionally named individuals associated with the businesses, in the United States District Court for the Southern District of New York in 2005, asserting that defendants’ use of the Bukhara mark and related trade dress constituted trademark infringement, unfair competition, and false advertising in violation of federal and state law. The Court of Appeals affirmed the dismissal of all federal claims by the District Court. Notably, the Court’s rejection of the “famous marks” doctrine as a basis for federal unfair competition claims by foreign trademark owners under the Lanham Act creates a split between the Second and Ninth Circuit Court of Appeals on the same issue of law.
“We are obviously thrilled for our clients that the Second Circuit saw the merits of our arguments and dismissed all federal claims against them,” said Michelle Mancino Marsh, the Kenyon & Kenyon partner who argued the case before the district court and the 2nd Circuit.
The Circuit Court found that “as a matter of law, ITC abandoned its United States rights in its registered “Bukhara” 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 can it continue to maintain the registered mark, which the district court correctly ordered cancelled.”
The decision also concluded that “plaintiff cannot assert a successful federal claim for unfair competition because Congress 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.”
Additionally, the Court also ruled that ITC “lacked standing to assert a claim for false advertising under section 43(a)(1)(B) of the Lanham Act against the defendants.”
The case may continue on one final claim for state unfair competition, as the Circuit Court deferred two questions of law for the New York State Court of Appeals.
About Kenyon & Kenyon LLP
With close to 200 lawyers devoted to intellectual property, Kenyon & Kenyon is consistently ranked by peers and in-house counsel as one of the top firms for IP. Since its founding in 1879, the firm has provided its worldwide clientele with litigation, prosecution, licensing and counseling services. Large and small enterprises and individuals choose Kenyon to design and implement intellectual property strategies when it matters most. The firm has offices in New York, Washington, DC and Silicon Valley.