Do As We Say, Not As We Do: A Study of the Well-Known Marks Doctrine in the United States, 8 J. Marshall Rev. Intell. Prop. L. 412 (2009)

Authors

Andrew M. Cook

Citations to This Work

• Robert W. Emerson & Catherine R. Willis, International Franchise Trademark Registration: Legal Regimes, Costs, and Consequences, 52 Wake Forest L. Rev. 1 (2017)

Abstract

Treaties such as the Paris Convention and the TRIPS Agreement protect well-known marks around the world, but there is currently uncertainty as to whether these marks can be protected in the United States. While a signatory to those treaties, recent decisions in the Second and Ninth Circuits leave the circuits split on whether foreign well-known marks are protectable within the United States. Without a circuit harmonization, the United States remains in a hypocritical position, demanding treaty compliance from other nations while failing to meet its treaty obligations. The uncertainty is efficiently and effectively resolved with a statutory amendment to section 44 of the Lanham Act. Amending this section to explicitly provide for the protection of well-known marks brings the United States into compliance with its treaty obligations and furthers U.S. international intellectual property policy.

Recommended Citation

Andrew M. Cook, Do As We Say, Not As We Do: A Study of the Well-Known Marks Doctrine in the United States, 8 J. Marshall Rev. Intell. Prop. L. 412 (2009)