Trademark Rights in A Global Economy:
Protection and Enforcement of Famous
and Well-Known Marks
For
American Bar Association
Hot Topics in IP Litigation - Chicago
June 8, 2012
Lisa M. Tittemore
Sunstein Kann Murphy & Timbers LLP
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Trademark Rights in A Global
Economy
Developments in Laws Protecting Famous
and Well-Known Marks
 Dilution
 Well-Known Marks Doctrine
Considering Global Implications of
Trademark Protection and Enforcement
Strategies
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Recent Developments in U.S.
Dilution Law
Dilution law precludes use of marks that
would result in “blurring” or “tarnishing” of
a famous mark
Federal Trademark Dilution Act went into
effect January 1996
Trademark Dilution Revision Act amended
FTDA in October 2006
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Recent TTAB Dilution Cases
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Coach v. Triumph Learning
Coach Services, Inc. v. Triumph Learning LLC, 2012 WL 540069
(Fed. Cir., Feb. 21, 2012) (Judges Newman, O’Malley and Reyna)
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Coach v. Triumph Learning
No Dilution: Failure to prove COACH mark
famous
 COACH mark “famous” for likelihood of confusion purposes
 Insufficient evidence to prove “household name” for
dilution; evidence of sales over $10 billion excluded
Triumph’s COACH mark had distinct commercial
impression of its own
Overreaching with respect to infringement claim
damaged plaintiff’s credibility?
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Rolex v. AFP Imaging
Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 101 USPQ.2d 1188,
2011 WL 6780738 (TTAB, Dec. 5, 2011)
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Rolex v. AFP Imaging
ROLEX mark is famous, but no dilution
 Registered in 1915, ROLEX is “coined and fanciful” (unlike
“Coach”)
 Marketed to general public not “fashion media targeted to
young women” (unlike “Coach”)
Insufficient association or proof that
distinctiveness of ROLEX mark would be
damaged
 Similar sound alone is not enough (42% of those surveyed
thought of ROLEX when heard ROLL-X)
 ROLL-X for x-ray table for medical and dental use
− ROLL connotation different from “ROL” and “X” suggests x-ray
− Also used DENT-X mark
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Dilution! The Crackberry Case
Research in Motion Ltd. v. Defining Presence Marketing Group,
Inc. et al., 102 USPQ.2d 1187, 2012 WL 893481 (TTAB, Feb.
27, 2012)
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RIM v. Defining Presence
BLACKBERRY mark famous: ground-breaking role of
device, widespread use
CRACKBERRY mark used for website relating to RIM
products
 Defendant “deliberately set out to create association”
 Blackberry accessories sold on site
Parody not a defense
 Not fair use when designation of source for own
goods/services
CRACK is bad – just say no!
 CRACKBERRY would blur distinctiveness of RIM’s mark
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Recent Federal Court
Dilution Cases
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Starbucks v. Wolfe’s Borough Coffee
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d
Cir. 2009)
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Starbucks v. Wolfe’s Borough Coffee
On remand, trial court says context matters
 CHARBUCKS mark not used as standalone term (Mr.,
Mister or Blend)
 Survey showing 30.5% of respondents associated
Charbucks with Starbucks, but did not measure how
consumers would respond to marks on actual packaging
Some association, but not enough to impair
distinctiveness of Starbuck’s famous mark
 STARBUCKS mark too famous to be diluted by this
defendant?
 Court sympathetic to small business sued by large
corporation?
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Louis Vuitton v. Hyundai
Louis Vuitton Malletier SA v. Hyundai Motor America, 2012 WL
1022247 (SDNY, March 22, 2012)
** Louis Vuitton is not affiliated with and did not sponsor this presentation; reference
to Louis Vuitton marks herein for educational reference purposes only
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Louis Vuitton v. Hyundai
Dilution found on summary judgment
 No dispute that Louis Vuitton “toile monogram” famous
Twitter messages cited for association …

“I think a Louis Vuitton basketball would be gangsta”
Hyundai argued, but could not prove fair
use/parody
 Deposition testimony hurt (“Hyundai brand is one with
significant deficiencies”; “definitely laddering and
borrowing equity from Louis Vuitton”)
 Unlike “Chewy Vuitton,” not an “over-the-top,
unmistakable parody”
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Practice Points
U.S. Dilution law: strict standard for
proving fame and for showing
association
 Fame must be proven!
 Association must result in likelihood of dilution: harm to
distinctive nature of famous mark
− No room for “death by 1000 cuts” theory?
 Parody is a limited defense
 Consider State Law claims
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Well-Known Marks Doctrine
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Well-Known Marks Doctrine -Exception to Territoriality
Protection for marks with reputation
(but not use) that crosses jurisdictional
boundaries if there is likelihood of
confusion
Nomenclature issues
 Also referred to as “famous marks doctrine,” but
different fame than dilution fame!
 Term “well-known marks” used in other contexts, e.g.,
used in other countries in relation to dilution-type
theories and/or natural expansion-type theories
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The BUKHARA Restaurant Case
ITC Limited v. Punchgini, 482 F.3d 135 (2d Cir., March 2007)
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The BUKHARA Restaurant Case
Well-known marks doctrine invoked by
plaintiff
 Plaintiff used mark in India and past use in U.S., but unable to show
current use
 Doctrine originates in Article 6bis of the Paris Convention -- treaty
obligations?
Second Circuit affirmed summary judgment
against plaintiff on most claims
 Congress did not incorporate well known marks doctrine in federal law
 Only 9th Circuit has recognized doctrine as matter of fed. law
 Certified state law questions to New York Court of Appeals – state
court held that although do not recognize doctrine, common law unfair
competition law may protect renown marks
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The BUKHARA Restaurant Case
But plaintiff did not prove BUKHARA was
“well-known” enough in NYC anyway?
 ITC’s proffered evidence of goodwill derived entirely
from foreign media reports and sources
 No evidence supporting inference the goodwill reached
relevant market in NYC
 Record devoid of evidence of actual overlap in customers
 Numerous “Bukhara” restaurants in U.S. and around the
world
Result not inconsistent with treaty
obligations after all!?
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Grupo Gigante: The 9th Circuit’s
earlier contrasting view
Groupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir.
2004)
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Grupo Gigante
Chain of Mexican grocery stores, wellknown to Mexican-Americans in Southern
California
Absolute territorial rule would result in
consumer confusion and fraud
 “Commerce crosses borders. In this nation of
immigrants, so do people.”
Holds U.S. law provides well-known marks
exception to territoriality principle
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Legislative Action?
In March 2011, INTA Board of Directors
recommended amendment of U.S.
trademark law
Explicit statutory basis for well-known
marks doctrine needed?
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Transborder Reputation in other
Jurisdictions
India: transborder reputation alone can be enough – use
in India not required (Blender’s Pride whiskey)
Korea and Japan: reputation from outside country can be
taken into account, if bad faith exists
Philippines: transborder reputation can be enough (wellknown internationally and in the Philippines even if not
registered or used in Philippines), esp. if bad faith by other
party can be shown
CONTRAST with China: court may consider evidence
from outside China, but typically only as supplemental to
use and registration of mark in China
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Practice Points
Well-Know Marks Doctrine should be
considered
 Keep in mind nomenclature Issues: Aka Famous Marks
Doctrine -- “Famous” or “Well-Known” has different
meanings depending on context
 Different facts lead to different results with respect to
recognition by U.S. Federal Courts?
 Other jurisdictions handle differently; can be a valuable
tool, particularly where can allege other party adopted
mark in bad faith
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Practice Points
Global Assessment Key to
Enforcement Strategy
 Which are the key markets of interest?
Who has priority, and where?



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Research key markets
Cancelation for non-use?
Dilution?
Transborder reputation?
File suit to clear path?
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Practice Points
Identify client goals clearly
Find points of leverage
Think creatively, and globally
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Thank you!
Lisa M. Tittemore
617-443-9292
www.sunsteinlaw.com
© 2012 Lisa M. Tittemore
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