Requiring Proof of National Fame in Trademark Law

By Xuan-Thao Nguyen*

*Professor of Law, SMU Dedman School of Law; Former IP Associate, Fried Frank Harris Shriver & Jacobson (NYC) and Pryor Cashman Sherman & Flynn (NYC).

Excerpt from Requiring Proof of National Fame in Trademark Law, 33 Cardozo L. Rev. 89 (October, 2011)

Introduction
 
Is NYC Triathlon ¹ a name with fame status entitling it to special protection under trademark law? How many consumers in the United States recognize the AMERICA'S TEAM ² or 5-HOUR ENERGY ³ trademarks? Has CHEM-DRY ⁴ achieved the requisite level of fame for broad protection? Where is KU or KANSAS UNIVERSITY ⁵ in the spectrum of fame? Have these trademarks attained enough fame to be deemed sufficiently famous for broad nationwide protection? How many people in the general consuming public actually recognize any of these trademarks? ⁶

Fame is defined as "the condition of being known or talked about by many people, [especially] on account of notable achievement." ⁷ The public has always been infatuated with fame, as images of and headlines about famous movie stars, super models, athletes, politicians, and celebrity chefs appear in online and offline media at any given time. ⁸ The public knows well that fame is not eternal. ⁹ Fame fades with time and requires much effort to forestall it from fading. ¹⁰ Trademarks with fame share the same problems as celebrities, as many once well-known trademarks have either declined or disappeared from the public view. ¹¹

Similarly, trademark law has a long history of infatuation with fame. ¹² The idea of protecting famous trademarks has been in existence for many years. ¹³ Internationally, the concept of protection for well-known ¹⁴ trademarks is evident in the old and influential Paris Convention for the Protection of Industrial Property. ¹⁵

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