## Facts

- ITC, an Indian company, operated well-known “Bukhara” restaurants abroad and claimed distinctive décor and trade dress associated with the name.
- Defendants, including former ITC employees, opened “Bukhara Grill” restaurants in Manhattan using the “Bukhara” name and allegedly similar décor, uniforms, and trade dress.
- ITC previously used the “Bukhara” mark for restaurant services in the United States but had not used it domestically for more than three years before filing suit.
- ITC contended its “Bukhara” mark was famous internationally and sought protection in the United States despite lack of current U.S. use.
- The district court granted summary judgment to defendants on ITC’s federal and state claims.
- In an earlier appeal, the Second Circuit held ITC had abandoned its U.S. trademark rights and rejected a federal unfair-competition theory premised on a “famous marks” doctrine; it also certified questions to the New York Court of Appeals about New York unfair-competition protection for foreign marks.
- The New York Court of Appeals stated New York unfair-competition law can protect a foreign business’s goodwill in New York from misappropriation but does not recognize a stand-alone famous-marks doctrine; it required proof of actual New York goodwill and that New York consumers primarily associate the mark with the foreign plaintiff.

## Issues

1. Whether the Lanham Act permits relief based on a “famous foreign marks” theory absent current use of the mark in U.S. commerce.
2. Whether New York common-law unfair competition protects a foreign mark based solely on foreign fame, or instead requires proof of actual goodwill in New York.
3. Whether ITC produced sufficient evidence that New York consumers primarily associated “Bukhara” with ITC to create a triable issue on misappropriation of New York goodwill.

## Decision

- The Second Circuit affirmed summary judgment for defendants on all claims.
- Federal trademark infringement failed because ITC had abandoned its U.S. rights in the “Bukhara” mark through prolonged nonuse.
- Federal unfair competition failed because the Lanham Act, as construed by the court, did not incorporate a famous-marks doctrine.
- New York unfair-competition relief was unavailable because ITC failed to raise a genuine issue that it possessed protectable goodwill in New York reflected in primary consumer association between “Bukhara” and ITC.

## Legal Principles

- Federal trademark protection generally requires use in U.S. commerce; abandonment through nonuse defeats federal infringement claims.
- The Lanham Act does not, without legislative adoption, provide a stand-alone cause of action for foreign famous marks that lack current U.S. use.
- New York common-law unfair competition centers on misappropriation of goodwill; a foreign plaintiff must show actual goodwill in New York capable of being appropriated.
- For a foreign mark to be protected under New York unfair-competition law, New York consumers must primarily associate the mark, as used in New York, with the foreign plaintiff; foreign reputation alone is insufficient.
- On summary judgment, a plaintiff must present evidence supporting New York-based consumer association (e.g., market presence, New York-directed goodwill indicators); absence of such proof warrants judgment for defendants.

## Conclusion

The Second Circuit held that ITC could not proceed under federal law after abandoning U.S. use of “Bukhara” and could not recover under New York unfair-competition law without evidence that New York consumers primarily associated the “Bukhara” mark with ITC, so defendants were entitled to summary judgment on all claims.


ITC Ltd. v. Punchgini, Inc., 518 F.3d 159 (2d Cir. 2008)