Wednesday, December 29, 2004

9th Circuit Officially Blesses "Famous Mark" Doctrine for Foreign Markholders

The 9th Circuit recently held that foreign mark owners can avail themselves of "famous" or "well-known" mark doctrine to assert rights in the United States even where they don't "use" the mark here.

In Grupo Gigante S.A. de C.V. v. Dallo & Co., No. 00-57118, the plaintiff GIGANTE was a Mexican grocery store chain of over 100 stores throughout Mexico, including 2 in Tijuana. The defendant was a San Diego company that began operating GIGANTE Market after the plaintiff's mark became known in the San Diego area.

The district court applied "famous mark doctrine" and held that the plaintiff's mark qualified for protection in San Diego because it had established secondary meaning there before the defendant opened up its first store. The 9th Circuit surveyed the sparse case law concerning the famous mark doctrine (including the eponymous MAXIM'S case, Vaudable v. Monmartre, Inc.) (sorry, can't find a link), and concluded that the famous mark doctrine was a sound corollary of the Supreme Court's venerable Tea Rose-Rectanus territoriality cases.

The 9th Circuit went on to hold that the famous or well-known mark doctrine applies when (1) the plaintiff can show secondary meaning in the contested geographic area and (2) that a substantial percentage of consumers in that market are familiar with its mark. The court suggested that intentional copying and actual confusion are relevant factors in determining whether the second element of this test is met.

The 9th Circuit seemed to think that there was no circuit court authority on famous or well-known mark doctrine, apparently ignoring two Depression-era cases involving the mark HUDSON BAY, in which both the 9th Circuit itself and the 5th Circuit approved and applied the doctrine.

The Court also went on to discuss the issue of laches in some detail.

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