This little piggy went to market . . . just not in the United States (yet). The precedential decision of the Trademark Trial and Appeal Board (“TTAB”) in Plumrose Holding Ltd. v. USA Ham LLC establishes that a foreign plaintiff who is not yet using its mark in the U.S. may still have standing to oppose an application due to misrepresentation of source where an applicant blatantly copies plaintiff’s mark and capitalizes on plaintiff’s reputation—supported by sufficient evidence that U.S. consumers recognize plaintiff’s mark.
Opposer had been using its LA MONTSERRATINA word mark and composite mark (illustrated below) in connection with pre-packaged meat products sold in Venezuela since 1949 and 2011, respectively. Applicant applied to register its nearly identical LA MONTSERRATINA composite mark (also illustrated below) in connection with various meat products, and Opposer filed a Notice of Opposition alleging misrepresentation of source under Section 14(3) of the Lanham Act (among other grounds).
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Applicant USA Ham’s Mark
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Opposer Plumrose’s Mark
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As a threshold issue, Opposer had to demonstrate its entitlement to oppose Applicant’s application (i.e., standing) by demonstrating (1) an interest falling within the zone of interests protected by the opposition statute and (2) proximate causation. An opposer may demonstrate a real interest in opposing registration of a mark by asserting ownership of U.S. trademark rights. It can also demonstrate lost sales in the U.S. or reputational injury in the U.S. to establish a real interest.
This decision sheds some light on the type and amount of evidence needed to establish commercial injury to an opposer’s reputation in the U.S. In particular, the TTAB looked to the following types of evidence (among others) in determining that Opposer’s reputation for its LA MONTSERRATINA products extends to the U.S.:
- Consumer inquiries regarding the availability of Opposer’s products in the U.S.
- Five instances of actual confusion regarding the source of products bearing the LA MONTSERRATINA mark sold in Florida.
- Testimony from Applicant’s distributors indicating they recognized LA MONTSERRATINA as a brand they are familiar with and/or encountered in Venezuela.
- Consumer communications with Opposer informing Opposer of LA MONTSERRATINA-branded products sold in Florida.
- Unsolicited communication with Opposer requesting to serve as distributor of Opposer’s products in the U.S.
- Applicant’s testimony that it was aware of Opposer’s LA MONTSERRATINA-branded products available in Venezuela when adopting its own mark for use in the U.S.
The TTAB also determined that Applicant’s blatant attempts to copy, such as by copying the layout of labels on Opposer’s LA MONTSERRATINA products and by targeting stores with strong Venezuelan-American populations, further confirmed Opposer’s reputation in the U.S. Moreover, the TTAB reasoned, Applicant’s efforts to copy caused Opposer to lose control of that reputation, and therefore Opposer established it is statutorily entitled to oppose registration of Applicant’s mark.
Opposer also successfully proved all three elements of a misrepresentation of source claim:
- Present use of the challenged mark by the defendant;
- Specific acts or conduct by the defendant that are deliberately aimed at passing-off its goods as those of the plaintiff; and
- The nature of the injury to plaintiff as a result of defendant’s deliberate conduct (i.e., damage to reputation or lost sales).
In its trial brief, Applicant admitted that it has been selling its LA MONSERRATINA-branded meat products in the U.S. since the end of 2020, establishing the first factor under Section 14(3). In support of the second and third factors, the TTAB looked to the same evidence of (1) Applicant’s copying and (2) Opposer’s loss of control of its reputation in the U.S. that it relied on in finding Opposer’s entitlement to oppose. As a result, the TTAB sustained Opposer’s opposition, refusing registration of Applicant’s mark.
Take away: This case picks up where the Federal Circuit’s decision in Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022) left off in analyzing the types of U.S. commercial injury to reputation in the U.S. that would be sufficient to establish a Lanham Act cause of action. Where a foreign plaintiff is not yet using its mark in the U.S. and cannot demonstrate lost sales, it can still pursue a misrepresentation of source claim against a U.S. user where there is evidence of blatant copying and sufficient testimony from U.S. consumers demonstrating awareness of the plaintiff’s foreign reputation.