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New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine

By John L. Welch

In its March 28, 2007 decision, the United States Court of Appeals for the Second Circuit held that the Lanham Act cannot be read to include a "famous marks" exception. (TTABlogged here). The court certified to the New York State Court of Appeals the question of whether New York common law recognizes the doctrine. The New York court has now ruled that "New York recognizes common law unfair competition claims, but not the 'famous' or 'well-known' marks doctrine." ITC Ltd. v. Punchgini, Inc.,___ N.E.2d ___, 2007 WL 4334177 (N.Y.) (New York Court of Appeals Dec. 13, 2002).BUKHARA GRILL: New York CityThe federal court was unable to find authoritative law on the issue of whether New York's common law recognizes the famous marks doctrine. Consequently, the court certified two questions to the New York Court of Appeals: (1) Does New York Recognize the Famous Marks Doctrine? and (2) How Famous Must a Mark Be to Come Within the Famous Marks Doctrine?The New York court's answer to the first question was rather self-contradictory: "while we answer 'Yes' to the first certified question, we are not thereby recognizing the famous or well-known marks doctrine, or any other new theory of liability under the New York law of unfair competition...continue to full post

Full post as published by The TTABlog on December 24, 2007 (boomark / email).