Itc Limited v. Punchgini, Inc.

482 F.3d 135 (2nd Cir. 2007)

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Nature of the Case

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Facts

P owns and operates the Maurya Sheraton & Towers, a five-star hotel in New Delhi, India. One of the restaurants in the Maurya Sheraton complex is 'Bukhara.' Bukhara offers a cuisine and decor inspired by the northwest frontier region of India. The New Delhi Bukhara has remained in continuous operation since 1977, acquiring a measure of international renown. P has opened or, through franchise agreements, authorized Bukhara restaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, Kathmandu, Ajman, New York, and Chicago. As of May 2004, Bukhara restaurants were in operation only in New Delhi, Singapore, Kathmandu, and Ajman. In 1986, P operated a Bukhara restaurant in Manhattan. In 1987, it had a franchise in Chicago. P sought to register the Bukhara mark. On October 13, 1987, it obtained registration in connection with 'restaurant services. The Manhattan restaurant closed on December 17, 1991. On August 28, 1997, after a decade in business, P canceled its Chicago franchise. P concedes that it has not owned, operated, or licensed any restaurant in the United States using the Bukhara mark since terminating the Chicago restaurant franchise. In 2001 P filed an application to register a 'Dal Bukhara' mark in connection with packaged, ready-to-serve foods. In May 2003, P sold packaged Dal Bukhara food products to two distributors, one in California and the other in New Jersey. One month later, in June 2003, ITC exhibited Dal Bukhara products at the International Fancy Foods Show in New York City. In 1999, D, some of who used to work at Bukhara in NYC, opened 'Bukhara Grill.' Ds' restaurants mimic the P's logos, decor, staff uniforms, wood-slab menus, and red-checkered customer bibs. The press stated that the New York Bukhara Grill restaurant 'is quite like Delhi's Bukhara.' It was successful and they opened a second restaurant. P sued D and D defended claiming that P had abandoned its mark. Ds moved for summary judgment. The district court ruled that P had abandoned its mark in the United States and under the famous marks doctrine, P had failed to adduce sufficient evidence to permit a reasonable jury to conclude that the name or trade dress of its foreign restaurants had attained the requisite level of United States recognition to trigger the doctrine. P appealed.