Sovereign Immunity Meets Trademark Regulation -Trademark Lawyer


Logos could incorporate geographical phrases but when the USPTO determines {that a} trademark is “primarily geographic”, the trademark utility can be rejected. Based on the USPTO

To help a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that’s, that its major significance to the related customers in america be that of a geographic location.

FranceThus, in a dispute over rejection of the NEW YORK WAYS GALLERY trademark utility, the Federal Circuit Court docket was not persuaded that the time period “New York” referred to methods of life quite than the geographical location, thereby affirming the USPTO’s determination to refuse the applying. 

Disputes over geographical phrases might also come up with respect to domains, one other type of mental property. For instance, in 2019, we wrote a few dispute between a number of South American nations and Amazon, the corporate. When Amazon tried to buy the .Amazon top-level area title (TDL), Brazil and Peru protested, arguing that the area title — certainly, the time period “Amazon” — didn’t belong to an organization however comprised sovereign territory. Amazon tried to settle the matter by providing free Kindles (don’t giggle). Nonetheless, The Web Company for Assigned Names (ICANN) sided with Amazon, which now owns the TDL.

In one other dispute, the proprietor of France.com, Jean-Noel Frydman bought the area title France.com in 1994 for functions of working a business tourism enterprise. In 2014, he efficiently registered the FRANCE.COM trademark with the USPTO and the European Union trademark workplace. Apparently, the USPTO didn’t take into account FRANCE.COM, registered for journey associated companies, as primarily geographic. Maybe as a result of the highest degree area title (.com) suggests a spot on the Web and never a geographical place, or as a result of FRANCE.COM had acquired distinctiveness over the 20 years it had been in use earlier than Frydman registered it. (USPTO information don’t mirror the rationale why a trademark is registered.)

Life should have appeared straightforward to Frydman till 2016, when the Republic of France efficiently sued France.com in France for rights to the area title.  Now, if one navigates to France.com, you can be redirected to an official French tourism website. Clearly, Mr. Frydman was not completely happy and filed go well with towards the Republic of France in the usfederal courtroom in Virginia, alleging cybersquatting and trademark infringement. The district courtroom rejected France’s movement to dismiss the case on grounds of sovereign immunity, holding that the immunity query was finest addressed as soon as discovery was concluded.

On enchantment, France prevailed, with the U.S. Fourth Circuit Court docket of Appeals deciding that the query of sovereign immunity was a threshold subject and one by which France would win.  With out moving into the weeds of the Overseas Sovereign Immunities Act, France.com argued that France’s conduct fell throughout the scope of sure enumerated exceptions to the Act, most significantly, the “business exercise” exception which,

strips overseas states of immunity in instances “primarily based upon a business exercise carried on in america by the overseas state; or upon an act carried out in america in reference to a business exercise of the overseas state elsewhere; or upon an act outdoors the territory of america in reference to a business exercise of the overseas state elsewhere and that act causes a direct impact in america.

The Fourth Circuit Court docket held that the “seizure” of the area title didn’t represent “business exercise” and, subsequently, France was immune from go well with. Particulars of the courtroom’s reasoning might be reviewed right here.

Undeterred, France.com filed a petition for writ of certiorari with the U.S. Supreme Court docket, which was predictably denied. And that spelled the tip of the street for Mr. Frydman.

— Adam G. Garson, Esq.


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