An opposition plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the opposition statute; and (ii) proximate causation. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir. 2020) (citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 120-37 (2014)). A plaintiff “must allege an injury to a commercial interest in reputation or sales.” Lexmark, 572 U.S. at 131-32; Curtin v. United Trademark Holdings, Inc., No. 91241083, 2023 WL 3271038, at *4 (TTAB 2023) (quoting Lexmark). Demonstrating a real interest in opposing registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the registration of a mark establishes the proximate causation requirement. Corcamore, 978 F.3d at 1305-06.
If there are no sales in the U.S., then a foreign plaintiff would need to show reputational injury in the U.S. in order to show a real interest for entitlement to oppose a U.S. trademark application. See Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067, 1075 (Fed. Cir. 2022) (holding that a plaintiff may demonstrate entitlement to cancel or oppose by establishing either lost sales in the U.S. or reputational injury in the U.S.).
This issue recently arose in Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 (TTAB Jan. 7, 2025) regarding whether Opposer Plumrose was entitled to file a statutory opposition proceeding against a trademark application for the mark LA MONTSERRATINA for “Ham” and other processed meats in Class 29. Opposer is the sole owner of a company called La Montserratina, C.A. that sells a wide range of pre-packaged meat products in Venezuela that has used the mark LA MONTSERRATINA since 1949. Opposer alleged that its LA MONTSERRATINA marks are well-known, famous, and have a reputation for superior quality in Venezuela and among Venezuelans living in the United States, and was planning to enter the U.S. market.
The record included evidence not only of multiple U.S. consumers communicating through social media and text messages asking whether Opposer's products are available in the U.S., but also that at least some U.S. consumers have been confused or mistaken as to whether LA MONTSERRATINA products they have seen in Florida, where Applicant sells the product, are Opposer's products. “[T]hese confused individuals recognized Opposer's trademark and, by that, its reputation, because that is an essential part of what a trademark symbolizes.”
Evidence of copying is not necessarily evidence of awareness of the marks by U.S. consumers. See Meenaxi, 38 F.4th at 1079; Person's Co. v. Christman, 900 F.2d 1565, 1570 (Fed. Cir. 1990) (holding that, while the defendant there knew that the PERSON'S mark was used in Japan and copied it, “mere knowledge of prior use” did not amount to culpable, bad-faith behavior). But where there is evidence that U.S consumers are aware of the foreign mark, “copying is confirmatory evidence of Opposer's reputation within the U.S.”
Here, Applicant had knowledge of Opposer's LA MONTSERRATINA mark, and “targeted stores that have Venezuelan-American customers and/or stock other Venezuelan products.” The TTAB also noted that the similarities between the stylized marks and logos were “inescapable and could not be considered coincidental.”
In sum, it beggars belief to view the copying here as having nothing to do with Opposer's reputation within the U.S. We find instead that, in the totality of the circumstances here, 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.
The TTAB also noted that “one of the key assets the [Lanham] Act protects is the mark owner's ability to control its reputation, which is uniquely symbolized by the mark.”
When an unrelated party uses the mark so as to misrepresent or cause confusion or mistake as to source, that control is lost, leaving the original owner's reputation to the whim of an unrelated third party, to the detriment of the mark owner. See, e.g., Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995, 1006-07 (9th Cir. 2023) (loss of control is a type of irreparable harm protected by the Lanham Act), cert. denied, 144 S. Ct. 824 (2024); Lorillard Tobacco Co. v. Amouri's Grand Foods, Inc., 453 F.3d 377, 382 (6th Cir. 2006) (“the harm [from confusion as to source] stems not from the actual quality of the goods (which is legally irrelevant) but rather from Lorillard's loss of control over the quality of goods that bear its marks”) (citation omitted); Int'l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1091 (7th Cir. 1988) (“the owner of a mark is damaged by a later use of a similar mark which place[s] the owner's reputation beyond its control, though no loss in business is shown.”); Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, No. 92051006, 2014 WL 1390528, at *26 (TTAB 2014) (actual confusion reflects damage in several forms, including “loss of control over reputation”).
Also, the extension of a foreign Opposer's reputation to the U.S. is not dependent on its intent-to-use applications or future business plans. And having a foreign Opposer's intent-to-use application blocked by the opposed trademark application “independently statutorily entitles” an opposition proceeding.
The TTAB found that the Opposer satisfied the three elements for statutory entitlement to a Section 14(3) claim, namely: (1) present use of the challenged mark by the defendant; (2) specific acts or conduct by the defendant that are deliberately aimed at passing-off its goods as those of the plaintiff; and (3) the nature of the injury to plaintiff as a result of defendant's deliberate conduct (i.e. damage to reputation or lost sales).
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