The Other Famous Marks Doctrine

17 Pages Posted: 24 Oct 2009 Last revised: 22 Feb 2010

See all articles by Xuan-Thao Nguyen

Xuan-Thao Nguyen

Indiana University Robert H. McKinney School of Law, Center for Intellectual Property & Innovation

Date Written: October 23, 2009

Abstract

Debates on protection for famous trademarks often center around state and federal antidilution laws. Both the old Federal Trademark Dilution Act of 1995 and the new Trademark Dilution Revision Act of 2006 have generated many law review articles and numerous symposia. The dilution law focuses on trademarks deemed famous within U.S. boundaries. A debate on protection for famous trademarks today is incomplete without a discussion of the other famous marks doctrine. The other famous marks doctrine recognizes marks famous in other countries without actual use in the country where a user adopts the trademark on similar goods and services.

In the age of globalization, both goods and people move across national borders. Moreover, in the age of the internet, people move in cyberspace, transcending physical borders; as people move, they carry with them knowledge about certain trademarks and the associated reputation embodied in those trademarks. A trademark famous outside the United States, but known only to a certain segment of the U.S. population due to peoples' movements across borders, prompts a discussion on whether the consuming public should be protected from the likelihood of confusion or fraud. Until now, U.S. courts never have recognized a famous marks doctrine because it is a doctrine that originates from international treaties, such as the Paris Convention for the Protection of Industrial Property ("Paris Convention") and the Agreement on Trade Related Aspects of Intellectual Property ("TRIPs"). Although the United States is a signatory to both, these treaties are not self-executing and so do not automatically become a part of U.S. domestic law. This Article will focus on U.S. courts' treatment of the famous marks doctrine, particularly the recent split between the Second and Ninth Circuits on this issue. The split epitomizes two opposite views on fame: use and territoriality. On the one hand, the Second Circuit's approach ignores the fame a foreign mark has attained outside the United States and recognizes trademark rights only if the mark is in use in the United States. On the other hand, the Ninth Circuit embraces the possibility that the fame a foreign mark attains outside the United States may be known by the relevant consumer within the United States, and hence recognizes that trademark rights may exist to protect the consumer from confusion. Neither approach leads to satisfactory results. The bright-line rejection of the famous marks doctrine by the Second Circuit because of the treaty-based nature of the doctrine places the United States in a position contrary to other countries. However, the Ninth Circuit's public-policy-based embrace of the doctrine for the purpose of protecting consumers may open doors to a new uncertainty in the requirement of the foreign marks' fame. This Article ultimately concludes that courts should not act as legislative bodies concerning the law on the famous marks doctrine, instead leaving the issue to Congress.

Keywords: trademark, famous trademark, dilution, anti-dilution, extraterritorial, paris convention, TRIPS, TRIP

Suggested Citation

Nguyen, Xuan-Thao, The Other Famous Marks Doctrine (October 23, 2009). Transnational Law & Contemporary Problems, Vol. 17, pp. 757-773, Fall 2008. Available at SSRN: https://ssrn.com/abstract=1493486

Xuan-Thao Nguyen (Contact Author)

Indiana University Robert H. McKinney School of Law, Center for Intellectual Property & Innovation ( email )

530 West New York Street
Indianapolis, IN 46202
United States
317-274-8146 (Phone)

HOME PAGE: http://mckinneylaw.iu.edu/faculty-staff/profile.cfm?Id=582

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