Sunday, October 17, 2010

International Marks: Priority and Sufficient Use in the United States for Protection in the United States

Hamdard Trust v. Ajit Newspaper Advertising, Marketing and Communications, Inc., 2010 WL 3749085 (2nd Cir.(N.Y.), (Sep 28, 2010) (NO. 09-4965-CV)

The Appeals court, applying de novo review, affirmed the District court’s order granting defendant’s motion for summary judgment. Plaintiff Sadhu Singh Hamdard Trust failed to prove that it “possessed a priority right to the use” of the mark in question because “meager trickle of business” in the United States was insufficient to “constitute[ ] the kind of bona fide use intended to afford a basis for trademark protection.” More specifically, Plaintiff failed to establish “deliberate” use of the mark in the United States; rather, its “sporadic” and “casual” use was insufficient to defeat the grant of summary judgment in favor of defendants as a matter of law. Id. As the district court observed, a trademark is “recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” Therefore, as the court found here, “foreign use is ineffectual to create trademark rights in the United States.”

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