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Archived updates for Friday, May 01, 2009

U.S. TTAB: No Famous Marks Doctrine

In Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 6, 2009) [precedential], the U.S. Trademark Trial and Appeal Board held that their is no famous marks Doctrine in the U.S.
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Bayer alleged that its mark was "well-known" in this country prior to Belmora's filing date and that Belmora copied its mark and packaging for the FLANAX product.  The Board pointed out that the Paris Convention is not self-executing, and that "Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings." Nor does Section 44 of the Trademark Act "provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding.  According to the TTAB,

Turning next to petitioner’s claim under Article 6bis of the Paris Convention, “the Paris Convention is not selfexecuting. As such, Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings.” International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603 (TTAB 2002); see also, In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1175 (Fed. Cir. 2005) (“the Paris Convention is not a self-executing treaty and requires congressional implementation”), and Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir.1990); compare, British-American Tobacco Co. v. Philip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000) (denying motion to dismiss claim under Pan American Convention in part because Convention is self-executing).

Furthermore, while Section 44 was “generally intended” to implement elements of the Paris Convention, In re Rath, 402 F.3d at 1207, 74 USPQ2d at 1177, it does not, through subsections 44(b) or (h) or otherwise, provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding, absent use of the mark in the United States. See, ITC Ltd. V. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414, 1433 (2d Cir. 2007), cert. denied, 128 S.Ct. 288 (2007) (“Congress’s specificity in dealing with registered marks cautions against reading a famous marks exception into sections 44(b) and (h), which nowhere reference the doctrine, much less the circumstances under which it would appropriately apply despite the fact that the foreign mark was not used in this country.”).

We acknowledge that the Second Circuit in Punchgini discussed the possible recognition by this Board and by the U.S. Court of Appeals for the Ninth Circuit of a famous mark exception to the territoriality principle, the latter Court apparently recognizing the doctrine “as a matter of sound policy,” in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004). Punchgini, 82 USPQ2d at 1430. However, the Second Circuit also noted that neither the referenced Board cases, one of which addressed the possible exception only in dictum, nor the Grupo Gigante decision found the exception to arise in the context of an Article 6bis claim. Id. at 1429-30. And petitioner’s claim is, as noted, based on Article 6bis of the Paris Convention. fn4 For all of these reasons, respondent’s motion is GRANTED with respect to petitioner’s claim under Article 6bis of the Paris Convention, and the claim is hereby DISMISSED, WITH PREJUDICE.

fn4. In any event, respondent amply demonstrates that a famous mark exception, whatever its possible basis in law, is a minority view, and that most courts which have considered the issue find that there is no cause of action under such an exception where, as here, the plaintiff relies on foreign use alone. Respondent’s Motion to Dismiss at pp. 5-10. More importantly, in Grupo Gigante, the Ninth Circuit found that “the Paris Convention creates neither a federal cause of action nor additional substantive rights” beyond those in the Lanham Act. Id., 73 USPQ2d at 1266. And Board decisions discussing the possibility of a famous foreign mark exception in the common law do not hold to the contrary. See, First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 77 USPQ2d 1334 (TTAB 2005), rev’d on other grounds, 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007), The All England Lawn Tennis Club (Wimbledon) Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983) . . .

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