Originally posted 2007-12-25 12:54:15. Republished by Blog Post Promoter
The TTABlog reports that the New York [State] Court of Appeals, on certification from the U.S. Court of Appeals for the Second Circuit (don’t confuse those two courts of appeals!), has put the kibosh on attempts to breathe much life into the “famous marks” doctrine as a matter of New York state law.
The Second Circuit had already rejected the suggestion, in the same case, that the federal Lanham Act include other countries’ trademark law and usage, and I commented tartly here regarding the sputtering outrage of grumpy trademark divinity J. Thomas McCarthy about it. The Circuit’s own decision only applied to interpretation of federal law, however, and lacking clear guidance as to New York state’s unfair competition law, the panel sent the love note to the top New York court to see if New York State’s jurisprudence had any interest in picking up this imported morsel.
No dice, at least not for most practical purposes — as John Welch explains, the evidentiary standard set out by the Court of Appeals on which a mark could be found protectible under the doctrine is lofty, and in this case well-nigh unreachable, and then some.