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

(Excerpt) In this Article, I argue that the United States does, in fact, provide the required protection under the Lanham Act. Although the implementation is not a model of clarity, current federal law provides protection for well-known foreign marks, allowing owners of well-known foreign marks to seek redress in the United States for infringing acts that occur in the United States. Part II of the Article explains the sources and content of the U.S. treaty obligations to protect well-known foreign marks. Part III sets out a brief account of U.S. judicial decisions related to the protection of well-known marks. Part IV of the Article explains how and why section 43(a) of the Lanham Act provides the well-known foreign mark protection required by U.S. treaty obligations. Key to this analysis is the issue of territoriality within trademark law. The Second Circuit decision acknowledges territoriality as fundamental to international trademark law. But it misapplies an oversimplified domestic rule of thumb to the complex issue presented in lieu of conducting a deeper analysis of the plain statutory language and U.S. international obligations. I also provide some limited guidance on how protection for well-known foreign marks should be applied and explain how that protection fits quite naturally within the traditional model of trademark protection in the United States. In so doing, I urge courts to integrate the internationally agreed principles related to well-known marks within the broad scope of the unfair competition provision of section 43(a). As a whole, this Article gives practitioners and courts a roadmap for providing owners of well-known foreign marks the protection that the United States has agreed to give to them and that both the owners and the consuming public deserve