Treaties such as the Paris Convention and the TRIPS Agreement protect well-known marks around the world, but there is currently uncertainty as to whether these marks can be protected in the United States. While a signatory to those treaties, recent decisions in the Second and Ninth Circuits leave the circuits split on whether foreign well-known marks are protectable within the United States. Without a circuit harmonization, the United States remains in a hypocritical position, demanding treaty compliance from other nations while failing to meet its treaty obligations. The uncertainty is efficiently and effectively resolved with a statutory amendment to section 44 of the Lanham Act. Amending this section to explicitly provide for the protection of well-known marks brings the United States into compliance with its treaty obligations and furthers U.S. international intellectual property policy.
Andrew M. Cook, Do As We Say, Not As We Do: A Study of the Well-Known Marks Doctrine in the United States, 8 J. Marshall Rev. Intell. Prop. L. 412 (2009)