## Facts

- ITC Limited and ITC Hotels Limited (Indian companies) owned and operated the “Bukhara” restaurant at a luxury hotel in New Delhi, which gained international recognition.
- ITC previously operated or licensed “Bukhara” restaurants in the United States, including Manhattan (opened 1986; closed 1991) and Chicago (franchise terminated 1997).
- ITC obtained a U.S. registration for the BUKHARA service mark in 1987 but had not owned, operated, or licensed a U.S. restaurant using the mark since at least 1997.
- In 1999, former employees associated with ITC’s Bukhara restaurants formed Punchgini and opened “Bukhara Grill” in midtown Manhattan, allegedly choosing the name because no “Bukhara” restaurant then operated in New York.
- ITC sued Punchgini in federal court asserting Lanham Act trademark infringement and unfair competition, New York common-law unfair competition, and Lanham Act false advertising.
- The district court granted summary judgment for defendants on all claims, concluding ITC abandoned U.S. trademark rights and lacked standing for false advertising.

## Issues

1. Whether ITC abandoned U.S. trademark rights in the BUKHARA mark for restaurant services through nonuse and lack of intent to resume use.
2. Whether federal trademark law recognizes a “famous marks” doctrine that protects a foreign mark well known in the United States despite no current U.S. use.
3. Whether ITC had standing to bring a Lanham Act false advertising claim absent ongoing U.S. commercial operations under the mark.
4. Whether New York common-law unfair competition recognizes a “famous marks” doctrine allowing relief without use of the mark in New York, and if so what level of fame is required.

## Decision

- The Second Circuit affirmed summary judgment for defendants on Lanham Act trademark infringement and federal unfair competition because ITC abandoned the BUKHARA mark in U.S. commerce.
- The Second Circuit held Congress had not incorporated a “famous marks” doctrine into the Lanham Act; foreign use and reputation could not substitute for U.S. use or revive abandoned U.S. rights.
- The Second Circuit affirmed dismissal of the Lanham Act false advertising claim for lack of standing.
- The Second Circuit certified to the New York Court of Appeals questions concerning whether New York common law recognizes a famous-marks theory for unfair competition.
- The New York Court of Appeals answered that New York recognizes common-law unfair competition but does not recognize the “famous marks” doctrine as an independent basis for liability absent New York use.
- After certification, the remaining New York common-law claims were resolved against ITC, leaving the defendants’ summary judgment intact in full.

## Legal Principles

- Trademark rights under the Lanham Act are use-based; a prolonged period of nonuse triggers a presumption of abandonment that must be rebutted by evidence of intent to resume use in U.S. commerce.
- Continued foreign use and international reputation, without concrete steps to resume U.S. use, do not rebut abandonment of U.S. trademark rights.
- Federal courts will not create a “famous marks” doctrine under the Lanham Act absent congressional adoption; treaty provisions invoked to support such a doctrine do not themselves create broader domestic trademark rights.
- Lanham Act false advertising requires a showing of commercial injury within the statute’s zone of interests; a plaintiff lacking ongoing U.S. market participation tied to the mark may lack standing.
- New York common-law unfair competition targets misappropriation and bad-faith exploitation of another’s commercial advantage, but it does not confer protection on a mark solely because it is well known from foreign use without New York use or protectable in-state goodwill.

## Conclusion

The courts held that ITC’s cessation of U.S. use of the BUKHARA mark resulted in abandonment, that neither federal law nor New York common law provides a free-standing “famous marks” cause of action based solely on foreign fame, and that ITC lacked standing for Lanham Act false advertising, resulting in judgment for Punchgini.


ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007)