Grupo Gigante SA de CV v. Dallo & Co., Inc.
United States Court of Appeals for the Ninth Circuit
391 F.3d 1008 (2004)
Grupo Gigante (GG) (plaintiff) ran a well-known Mexican grocery chain under the "Gigante" mark, registered in Mexico since 1963 and expanded to over 100 stores by 1991, including near the U.S. border. Dallo & Co. (defendant) opened a "Gigante Market" in San Diego in 1991; GG learned of it in 1995 but did not act until 1998, after which both parties registered "Gigante" in California and GG expanded into Los Angeles in 1999, prompting Dallo to send a cease-and-desist letter and GG to sue. The district court found GG's mark had secondary meaning in San Diego (protecting it there) but that laches barred GG from stopping Dallo's existing stores; GG appealed.
Whether a foreign trademark holder that has acquired sufficient fame within the United States gains priority of trademark rights there, despite the general territoriality principle.