Trademarks

ITC v. Punchgini: The Second Circuit Refuses to Find a Famous-Marks Doctrine in Federal Law

The Second Circuit holds that Congress has not incorporated the famous-marks doctrine into the Lanham Act, then certifies the state-law question to New York's high court.

September 22, 2025
Plated Indian restaurant dishes served on a dining table
ITC v. Punchgini turned on a famous Indian restaurant brand and a New York imitator. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv (2d Cir. Mar. 28, 2007), the U.S. Court of Appeals for the Second Circuit reached the opposite conclusion from the Ninth Circuit on the central question of international trademark law: whether American federal law protects a foreign mark famous in the United States but not used here. Argued November 18, 2005, and decided March 28, 2007, the opinion—written by Circuit Judge Raggi and reported at 482 F.3d 135—held that Congress has not incorporated the famous-marks doctrine into the Lanham Act. Rather than end the matter, the panel certified the surviving state-law questions to the New York Court of Appeals, which answered them later that year, producing one of the most analytically complete treatments of the well-known-marks problem in U.S. case law.

At a glance

  • Case: ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv
  • Court: U.S. Court of Appeals for the Second Circuit
  • Argued / Decided: November 18, 2005 / March 28, 2007
  • Reported: 482 F.3d 135
  • Opinion: Raggi, Circuit Judge
  • Holdings: (1) ITC abandoned its U.S. “Bukhara” mark for restaurant services; (2) Congress has not incorporated the famous-marks doctrine into federal trademark law; (3) certified two questions on the New York common-law claim to the New York Court of Appeals.
  • State-court answer: ITC Ltd. v. Punchgini, Inc., No. 165 (N.Y. Dec. 13, 2007) (Read, J.): New York does not recognize a freestanding famous-marks doctrine but protects against misappropriation of foreign goodwill where consumers primarily associate the mark with the foreign plaintiff.

ITC operated the renowned “Bukhara” restaurant in New Delhi and, for a time, in the United States: it opened a Bukhara in Manhattan in 1986 and franchised one in Chicago in 1987, obtaining a U.S. registration for the Bukhara mark for restaurant services on October 13, 1987. But ITC closed the Manhattan location in 1991 and terminated the Chicago franchise in 1997. In 1999, the defendants formed Punchgini, Inc. and opened “Bukhara Grill” in midtown Manhattan, borrowing not only the name but elements of the trade dress and even the “Dal Bukhara” menu concept. ITC sued for infringement and unfair competition, invoking the fame of its Indian restaurant. The district court granted summary judgment to the defendants, and ITC appealed.

Abandonment came first

Before reaching the headline question, the Second Circuit disposed of ITC’s registration-based infringement claim on abandonment grounds. Having closed its U.S. restaurants and ceased domestic use for years, ITC was found to have abandoned the Bukhara mark for restaurant services in the United States, with no sufficient evidence of intent to resume use within the statutory window. That holding is a reminder that a famous-marks theory typically becomes necessary precisely because the foreign owner lacks—or has lost—ordinary U.S. trademark rights. Abandonment cleared away the registered-mark claim and left ITC to argue that its foreign fame alone could support relief.

No famous-marks doctrine in the Lanham Act

On the federal unfair-competition claim under § 43(a), the court confronted the famous-marks doctrine directly and declined to adopt it as a matter of federal law. The reasoning was avowedly textual and institutional. The Lanham Act protects marks used in U.S. commerce; it does not, by its terms, create a cause of action for the owner of a foreign mark that is well known here but unused here. The court acknowledged the international pedigree of the well-known-marks concept—reflected in Article 6bis of the Paris Convention and related TRIPS provisions—but held that those treaty obligations are not self-executing and had not been transposed into the operative text of the Lanham Act by Congress.

This was a pointed methodological rebuke to the policy-driven approach of Grupo Gigante. Where the Ninth Circuit derived a famous-marks exception from the purposes and structure of trademark law and the spirit of the Paris Convention, the Second Circuit insisted that incorporating an international doctrine into domestic law is Congress’s job, not the judiciary’s. Absent a statutory hook, the court would not read the doctrine into § 43(a). The result is a clean and acknowledged circuit split on whether federal law protects famous foreign marks.

Certification and the New York answer

The court was not prepared, however, to declare that no protection could exist under state law. Recognizing that New York unfair-competition law might independently reach the misappropriation of foreign goodwill, the panel certified two questions to the New York Court of Appeals: whether New York common law permits the owner of a mark used abroad to assert rights here based on that foreign use, and, if so, how famous the foreign mark must be.

The New York Court of Appeals answered on December 13, 2007, in an opinion by Judge Read. Its response was characteristically precise. New York, the court explained, does not recognize a “famous marks doctrine” as such. But New York’s long-standing law of unfair competition does protect against the misappropriation of goodwill: when a foreign business has built goodwill that amounts to a protectable commercial advantage in New York, a competitor may not appropriate it. The operative test is whether consumers in the relevant market “primarily associate the mark with the foreign plaintiff.” The court identified probative factors—evidence that the defendant deliberately copied the foreign mark or trade dress, consumer survey data, and overlap between the defendant’s actual customers and the foreign plaintiff’s clientele. The doctrine, in other words, lives in New York not as an import of Article 6bis but as an application of the state’s own misappropriation tradition.

Open questions

  • Will Congress act? The Second Circuit invited a legislative fix; without one, the federal split persists and protection for famous foreign marks depends on jurisdiction.
  • How does state misappropriation interact with federal abandonment? A foreign owner who has abandoned its U.S. registration may still pursue a New York misappropriation theory—an awkward divergence between federal and state results.
  • What proof shows “primary association”? The New York test is fact-intensive; the weight to be given surveys, deliberate copying, and customer overlap remains to be developed case by case.
  • Does treaty law supply any self-executing protection? The court treated Article 6bis as non-self-executing; whether any treaty provision could independently support a claim stays unresolved.

Implications

  • Federal protection for unused famous foreign marks is unavailable in the Second Circuit. Owners must rely on actual U.S. use, registration, or state-law theories.
  • State misappropriation law is the fallback. New York protects foreign goodwill where consumers primarily associate the mark with the foreign owner—an avenue independent of the Lanham Act.
  • Maintain U.S. use to avoid abandonment. ITC’s loss began with its exit from the U.S. market; continuous use or a documented intent to resume is essential.
  • Jurisdiction shapes strategy. With the Ninth and Second Circuits split, choice of forum and the availability of state-law claims can determine whether a famous foreign mark is protectable at all.

Frequently asked questions

Did the Second Circuit recognize the famous-marks doctrine? No. It held that Congress has not incorporated the famous-marks doctrine into federal trademark law, declining to read it into § 43(a) of the Lanham Act and creating a split with the Ninth Circuit’s Grupo Gigante decision.

Why did ITC lose its registered trademark claim? Because it had abandoned the Bukhara mark in the United States. ITC closed its U.S. restaurants and ceased domestic use for years without sufficient evidence of an intent to resume, which extinguished its registration-based rights.

Can a famous foreign mark get any protection in New York? Yes, but not under a “famous marks doctrine.” New York’s unfair-competition law protects against misappropriation of foreign goodwill when consumers in the relevant market primarily associate the mark with the foreign plaintiff, considering factors like deliberate copying, surveys, and customer overlap.

Authorities and sources