Under United States trade mark law, trade mark rights are territorial. Therefore, owners of well-known foreign trade marks which are not in use in the United States may face the dilemma of what enforcement options may be available to prevent a US company that has sought to take advantage of the renown of a foreign mark by offering goods and services in the United States under the well known foreign mark without authorization of the trade mark owner.

Owners of foreign trade marks have typically tried to rely on what is commonly known as the "famous marks doctrine" as a means of enforcement. The famous marks doctrine, if applied, holds that there would be a likelihood of confusion among US customers between a mark used only outside of the United States but which is well known in the United States and a junior user in the United States. However, the United States courts have not consistently or uniformly applied the "famous marks doctrine" to grant common law trade mark protection for marks which are not in use in the United States.

Recent case law has indicated that owners of well-known foreign trade marks may have alternative enforcement option available. For example, the New York Court of Appeals recently held that one who owns trade mark rights outside of the United States may bring an action for unfair competition against a junior user for misappropriation of a property right, namely, the foreign trade mark owner's goodwill in the mark. The theory behind this holding is that a business that is well known possesses goodwill constituting a property or commercial advantage that is protected from misappropriation by junior trade mark users.

A successful claim of unfair competition requires that the junior user deliberately copied the well-known foreign mark and that consumers of the goods or services at issue under the mark must primarily associate the mark with the foreign trade mark owner. Whether consumers primarily associate the mark with the foreign trade mark owner is, however, an issue determined based on the particular facts at issue.

It is recommended that foreign trade mark owners confer with US trade mark counsel with respect to their enforcement options prior to taking any action against a junior user of their well-known mark.

Karen Artz Ash and Bret J Danow

Katten Muchin Rosenman LLP
575 Madison Avenue
New York
New York 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com