ITC Ltd. v. Punchgini, Inc.

Summary

The United States Court of Appeals for the Second Circuit reviewed summary judgment against ITC Limited and ITC Hotels Limited in a trademark dispute involving the Bukhara mark and Bukhara Grill restaurants. The court held that ITC had abandoned its United States trademark rights for restaurant services and that the federal famous-marks doctrine had not been incorporated into federal trademark law. It affirmed summary judgment on the infringement, federal unfair competition, and false advertising claims, while certifying questions concerning New York common-law unfair competition to the New York Court of Appeals.

Holdings

1. ITC abandoned its United States rights in the Bukhara mark for restaurant services because it ceased using the mark for more than three years and failed to produce evidence from which a reasonable jury could infer that, during the nonuse period, it intended to resume use in the United States within the reasonably foreseeable future.
2. The three-year nonuse presumption shifts only the burden of production to the mark owner; the ultimate burden of persuasion remains with the party asserting abandonment.
3. The mark owner's intent to resume use must have existed during the relevant three-year period of nonuse, although evidence arising after that period may be used to demonstrate that such intent existed during the period.
4. The famous marks doctrine does not presently provide an independent federal basis for a foreign mark owner to obtain priority or unfair competition protection in the United States when the mark has not been used domestically.
5. Because authoritative New York appellate precedent did not resolve whether New York recognizes the famous marks doctrine or how famous a foreign mark must be, the questions should be certified to the New York Court of Appeals and the Second Circuit should reserve decision on the state-law claim.
6. ITC lacked standing to pursue its Lanham Act false advertising claim because it failed to show a reasonable basis for believing that defendants' restaurant advertising was likely to injure ITC's packaged-food business, foreign restaurants, or a sufficiently developed plan to reenter the United States restaurant market.

Questions Presented

1. Whether ITC abandoned its registered Bukhara mark for United States restaurant services.
2. What evidence is required to rebut the Lanham Act's presumption of abandonment after three consecutive years of nonuse.
3. Whether the famous marks doctrine gives a foreign mark owner federal priority or unfair competition rights in the United States despite nonuse of the mark domestically.
4. Whether ITC's New York common-law unfair competition claim should be resolved by the Second Circuit or certified to the New York Court of Appeals.
5. Whether ITC had standing to pursue a Lanham Act false advertising claim.

Disposition

other