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Honoring International Obligations in U.S. Trademark Law: How the Lanham Act Protects Well-Known Foreign Marks (and Why the Second Circuit Was Wrong)

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Abstract

Although the United States has obligated itself to protect foreign “well-known” marks under the terms of Article 6bis of the Paris Convention and elsewhere, the extent to which that obligation is practically available to foreign mark owners in U.S. courts has yet to be clearly established under domestic law. In particular, two federal appellate courts have diverged sharply on whether the Lanham Act provides a remedy for an owner of a mark that has not been used in commerce in the United States, even if that mark is well known to U.S. consumers (or a subset thereof). This article explores the international obligation to protect well-known marks and then demonstrates how the Lanham Act does, in fact, provide for protection of marks well known to U.S. consumers, even if the mark has not been used in commerce here. The article addresses in detail the issue of standing to bring a claim under section 43(a) of the Lanham Act and its connection to section 44. It also thoroughly considers a number of concerns related to the territorial nature of trademark law and trademark goodwill and explains the consistency of protecting well-known foreign marks with the principles of territoriality.

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This paper reexamines the current legal landscape regarding the protection of trade marks and other industrial property rights in signs on the Internet. It is based on a comparative analysis of EU and national laws, in particular, German, U.S., and U.K. law. It starts with a short restatement of the principles governing trade mark conflicts that occur within a particular jurisdiction (part 2) and proceeds to the regulation of transnational disputes (part 3). This juxtaposition yields two basic approaches. Whereas trade mark conflicts within closed legal systems are generally adjudicated according to a binary either/or logic, transnational disputes are and should indeed be solved in a way that leads to a fair coexistence of conflicting trade mark laws and rights under multiple laws. This paper explains how geolocation technologies can alleviate the implementation of the principle of fair coexistence in concrete cases.