Tuesday, March 04, 2008

Second Circuit Affirms Summary Judgment Award re Buhkara State Unfair Competition Claim

After receiving the response of the New York Court of Appeals on its certified questions regarding the "famous marks" doctrine (TTABlogged here), the U.S. Court of Appeals for the Second Circuit affirmed the district court's award of summary judgment to Defendants on Plaintiffs' state unfair competition claim. ITC Limited v. Punchgini, Inc., Docket No. 05-0933-cv (2nd Cir. February 26, 2008).


The New York high court stated that, although it did not recognize the famous marks doctrine as an independent theory of liability, state law did permit the owner of a "federal mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country." However, the owner would have a heavy burden:

"ITC would have to show first, as an independent prerequisite, that defendants appropriated (i.e., deliberately copied), ITC's Bukhara mark or dress for their New York restaurants. If they successfully make this showing, defendants would then have to establish that the relevant consumer market for New York's Bukhara restaurant primarily associates the Bukhara mark or dress with those Bukhara restaurants owned and operated by ITC."

Both the district court and the 2nd Circuit concluded that ITC had "adduced sufficient evidence of deliberate copying to satisfy that element of this claim." However, as to the existence of "secondary meaning" in the New York market, ITC failed to proffer "evidence sufficient to create a genuine issue of material fact on the question of whether the Bukhara mark, when used in New York, calls to mind for defendants' potential customers ITC's goodwill, or that defendants' customers primarily associate the Bukhara mark with ITC."

And so, the 2nd Circuit affirmed the grant of summary judgment on this claim and in all respects.

TTABlog note: In a lengthy discussion of this case, the Las Vegas Trademark Attorney blog opines (here) that the conflict between the 2nd Circuit and the 9th Circuit (in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004)) with regard to the "famous marks" doctrine makes the matter ripe for Supreme Court review. The TTABlog suggested the same here.

Text Copyright John L. Welch 2008.


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