Elgar Intellectual Property and Global Development series
Edited by Irene Calboli and Edward Lee
Chapter 11: Territoriality (mis)understood: enforcing well-known foreign marks in the United States
In 2007, the Second Circuit flatly denied the existence of federal protection for well-known foreign marks. It did so ñ unfortunately ñ by both overstating and underappreciating the significance and function of territoriality in United States trademark law. In 2004, on the other hand, the Ninth Circuit expressly held that well-known foreign marks are protected by federal law, although it, too, may not have adequately assessed territoriality or articulated the source of federal protection. Since 2007, the Trademark Trial and Appeal Board (ìT.T.A.B.î) has largely adopted the Second Circuit view, at least for a traditional likelihood of confusion claim.The divergence of authorities has muddied the water with respect to the availability of protection in the United States for well-known foreign marks neither registered nor used in U.S. commerce. This chapter, following a brief summary of the international obligations of the United States to protect well-known foreign marks, provides an account of U.S. judicial decisions related to the protection of well-known foreign marks. The focus then becomes the meaning and value of ìterritorialityî within trademark law ñ the issue ultimately driving the current split in the courts. ìTerritorialityî takes on different meanings and represents different interests depending on the context. In trademark law, this term can be a shorthand reference to the geographic or geopolitical areas where a mark is entitled to legal protection.
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