TTAB Upholds Reputation Outside of U.S. as Ground for Opposition

In the recent precedential decision Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 (January 17, 2025), the U.S. Trademark Trial and Appeal Board found that an Opposer had standing to challenge registration of a mark, even though it did not sell products under the asserted mark into the U.S.

The mark at issue, LA MONTSERRATINA, identified a popular meat brand sold in Venezuela since 1949. The Board found that the mark enjoyed a reputation amongst U.S. citizens who were from Venezuela, and that the applicant deliberately chose the mark in bad faith to trade on that reputation.

The Board considered this argument in light of the CAFC’s decision in the cancellation action Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022), that essentially involved the same question as here―”whether the foreign plaintiff can show reputational injury in the U.S.”  In the Meenaxi decision, the CAFC disagreed with applicant Meenaxi’s argument that Coca-Cola lacked a cause of action under the Lanham Act because of the territoriality principle. However, the court found the evidence insufficient to establish a U.S. reputation.

In this month’s decision, the Board first considered whether Opposer Plumrose established its statutory entitlement to oppose “based on the alleged extension of the reputation of Opposer’s LA MONTSERRATINA brand to consumers in the U.S.”  Noting that the Meenaxi decision established that U.S. trademark rights are not necessary to assert a claim under Section 14(3), the Board explained that the Opposer may demonstrate entitlement to cancel or oppose by establishing either lost sales in the U.S. or reputational injury in the U.S.

In this case, as in Meenaxi, there was no allegation or evidence of lost sales. Turning to the question of whether Plumrose could demonstrate reputational injury in the U.S., the Board examined evidence that the Applicant is using its marks to misrepresent the source. Noting the similarity of the design and display of the marks, the Board also found it significant that Applicant targeted stores that have Venezuelan-American customers or that feature other Venezuelan products. The Board found that “Applicant’s copying clearly reflects a calculated, multi-faceted attempt to capitalize on Opposer’s reputation for its LA MONTSERRATINA-branded meat products with at least some U.S. consumers. To reiterate, Opposer’s copying is confirmatory evidence of Opposer’s reputation within the U.S.”

Turning to the substance of the decision, the Board sustained the opposition, finding that Plumrose had demonstrated evidence of actual confusion, including communications from U.S. consumers asking Opposer about the availability of its products in the U.S.:

⁠[T]he evidence here shows that Opposer’s reputation as reflected in its LA MONTSERRATINA mark does indeed extend to the United States, unlike the reputation of the Indian brands asserted by the plaintiff in Meenaxi. In particular, its reputation here is reflected by evidence of U.S. consumers contacting Opposer about availability of its products here, the confusion exhibited by several U.S. consumers upon encountering Applicant’s LA MONTSERRATINA products and by at least two stores to whom Applicant sells, as well as the detailed acts of copying in which Applicant engaged, which, in the circumstances presented here, confirm that extension of reputation.

This case helps clarify a path forward for famous international brands who have not yet entered the U.S. market. As the economy grows ever more global in nature, and the internet and social media remove barriers to sharing information freely across international borders, this decision feels like a natural step for brands that enjoy an international reputation and want to defend it, but have not yet sold products or services to consumers in the U.S.