IP Topics
By
Michelle Mancino Marsh
- August 2005
In ITC Ltd., et al. v. Punchgini, Inc., [1] Indian corporation ITC alleged trademark and trade dress infringement, false advertising, and unfair competition with respect to its restaurant “Bukhara,” located in New Delhi, India. The alleged infringer, Punchgini, operated two Manhattan restaurants named “Bukhara Grill.” Punchgini, with Kenyon & Kenyon as its counsel, won summary judgment dismissing ITC's complaint and granting cancellation of ITC's trademark registration. Punchgini's defense to infringement was that plaintiffs had abandoned the “Bukhara” mark. It was largely uncontested that ITC had not used the mark for a U.S.-located restaurant since 1997. The nonuse triggered the statutory presumption of abandonment under the Lanham Act. In rebuttal to this presumption, ITC failed to provide sufficient evidence of plans to resume use or excusable non-use during the relevant time period. Thus the “Bukhara” mark was deemed abandoned in the United States.
ITC challenged that, despite the court's finding on abandonment, it was entitled to protection from alleged acts of unfair competition by virtue of the “famous marks” doctrine. This doctrine excepts “famous” marks from the requirement that trademark owners must use a mark in the U.S. in order to receive protection. ITC urged secondary meaning as a test for the requisite fame.
The court agreed that without secondary meaning, or a consumer-perceived link between the mark and the source of the product, ITC's mark would not be sufficiently famous to merit protection. It then determined that there was no probative evidence that ITC's foreign “Bukhara” restaurant had achieved secondary meaning among New York restaurant-goers. In other words, Defendants' customers did not associate the mark with ITC. The court thus dismissed ITC's claim for unfair competition on the basis of the “famous marks” doctrine.
Before arriving at the conclusion that ITC had not established secondary meaning, however, the court shared some insight on the “famous marks” doctrine. The Court discussed the recent Ninth Circuit decision of Grupo Gigante S.A. de C.V. v. Dallo & Co.,[2] which required that a foreign mark user availing itself of the “famous marks” doctrine must establish not only secondary meaning but also that a substantial percentage of the relevant U.S. consumers are familiar with the mark. Judge Lynch held that, in light of an absence of even secondary meaning, it was not necessary to accept or reject the Ninth Circuit's holding.
The court's discussion on the higher standard for foreign mark users may foreshadow future adherence to that standard in the Southern District of New York, and perhaps in the Second Circuit. The ITC case is presently on appeal to the Second Circuit.
Citations:
[1] 74 U.S.P.Q. 2d 1239 (S.D.N.Y. 2005).
[2] 391 F.3d 1088 [ 73 USPQ2d 1258] (9th Cir. 2004).