Anne Gilson LaLonde: Don't I Know You From Somewhere: Protection in the United States Of Foreign Trademarks That Are Well Known But Not Used There
In certain jurisdictions and under narrowly-defined circumstances, a trademark can be enforced in the United States when it has never been used there. Under the "well-known marks doctrine" (sometimes called the "famous marks doctrine"), the owners of well-known foreign marks can sometimes protect them from infringement in the United States even without using them in commerce or registering them there. No matter how strongly the equities line up, however, United States courts do not uniformly agree on how far the doctrine should be carried. In discussing the protection of foreign trademarks that are well known but not used in the United States, Anne Gilson LaLonde examines, among other things, federal case law, international agreements, and the Lanham Act. She writes:
Trademarks are, of course, treated separately under the laws of different countries. Ownership of a mark in one country rarely confers rights to use that mark in another country. In general, in order for a trademark owner to enforce its mark in the United States under the Lanham Act, it must have made actual use of its mark on products or for services in the United States. While a party may file an intent-to-use application based on a bona fide intention to use a mark in commerce in the future, it must make actual use of the mark in order to obtain a registration. Where a foreign company uses its mark in a foreign country and advertises and sells its goods or services under that mark only in the foreign country, it normally would have no trademark rights in the United States. (Note that, under Sections 44 and 66 of the Lanham Act, a foreign applicant may obtain a registration in the United States without having first used the mark in commerce in the U.S., although it must eventually use the mark to maintain the registration.) In fact, a business may be able to copy a mark used by another party in a foreign country, use that mark legally and register it in the United States to the exclusion of the foreign party, assuming the mark was not well known in the U.S. at the time.
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The Ninth Circuit is the only U.S. federal appeals court to date to hold that the well-known marks doctrine is an exception to the well-established principle of territoriality. In the Ninth Circuit’s Grupo Gigante case [2004 U.S. App. LEXIS 25958], the plaintiff was a large Mexican grocery store chain, with its GIGANTE stores open in Mexico since 1962. Almost thirty years after plaintiff opened its first store in Mexico, defendants opened a grocery store across the border in San Diego, California called GIGANTE MARKET. Then, several years later, plaintiff opened a GIGANTE store in the Los Angeles area. After defendants demanded that plaintiff stop using the GIGANTE mark in the United States, plaintiff sued for a declaratory judgment that it had superior U.S. rights because of its use in Mexico. Under a strict application of the territoriality principle, defendants would have had superior rights as the prior users of the mark in the United States. However, the Ninth Circuit explicitly recognized the well-known marks exception and found for the plaintiff: “[W]hen foreign use of a mark achieves a certain level of fame for that mark within the United States, the territoriality principle no longer serves to deny priority to the earlier foreign user.” The court vacated the lower court’s opinion and remanded for it to determine if the GIGANTE mark was sufficiently well known to merit protection under the doctrine.
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Article 6bis of the Paris Convention for the Protection of Industrial Property provides that each contracting state must refuse registration to and forbid the use of marks that are liable to create confusion with marks that are well known in that state. The well-known mark must be well known as already being the mark of another party entitled to the benefits of the Paris Convention, and the owner of the well-known mark must be using it for identical or similar goods. Under 6bis, qualifying marks that are well known in a country that is a member of the Paris Convention may be protected in that country even without use there. On its face, 6bis appears to cover the situation because the United States is a member of the Paris Convention, along with other contracting parties, from Albania to Zimbabwe.
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The well-known marks doctrine appears nowhere in the text of the Lanham Act as such. Even courts that have championed the doctrine fail to cite to statutory language that unambiguously overcomes case law requiring use for ownership or priority of a mark in the United States. If neither the Paris Convention nor the TRIPs Agreement is self-executing, as it appears they are not, has Congress implemented one or both through amendments to the Lanham Act? If not, then for the doctrine to be viable as federal law, it must be otherwise contained in the statute. Locating in the Lanham Act a well-known marks exception to the U.S. use requirement takes a combination of fancy footwork and wishful thinking.
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