ITC Ltd. and ITC Hotels Ltd. v. Punchgini Inc. et al.

Kenyon helped the proprietors of the BUKHARA GRILL restaurant chain prevail on all state and federal claims of trademark and trade dress infringement, and unfair competition, at the US Court of Appeals for the Second Circuit in a series of decisions regarding the availability of the "Famous Marks Exception" for owners of foreign trademarks with no use of the marks in the United States. In March 28, 2007, the Second Circuit affirmed that Plaintiffs ITC Limited and ITC Hotels Limited (collectively "ITC"), the owners of a restaurant in India, had abandoned any rights they had to the name Bukhara in the US, and rejected their argument that the decision should be overturned because it owned a foreign mark that it alleged to be "famous" in the US. The Court's rejection of the "famous marks" doctrine as a basis for federal unfair competition claims by foreign trademark owners under the Lanham Act creates a split between the Second and Ninth Circuit Court of Appeals on the same issue of law. On February 26, 2008, the Second Circuit separately affirmed the dismissal of all state claims after referring two questions of state law to the New York Court of Appeals. The Supreme Court denied Plaintiffs' Petition for Certiorari. Case number 482 F.3d 135 (2007).