.png)
By Wei Wei Jeang
U.S. trademark law (generally referred to as The Lanham Act) states that anyone who believes they will be damaged by a registered trademark to file a petition to cancel that registration if the mark is being used to "misrepresent the source" of the goods or services associated with it. This principle is again affirmed in a recent case before the Trademark Trial and Appeal Board (TTAB).
Plumrose Holdings is a Venezuelan company that makes and sells processed meat products like ham and sausage under the trademark LA MONTSERRATINA in Venezuela. Plumrose, who does not do business in the U.S., opposed the application filed by USA Ham seeking to register the essentially identical trademark in the U.S.
Plumrose has used the LA MONTSERRATINA trademark in Venezuelat since 1949. Plumrose petitioned the Board in an opposition proceeding against the USA Ham's trademark application under Section 14(3) of the Lanham Act, which governs the cancelation proceeding (filed against a registered trademark) not opposition proceeding (filed during pendency of a trademark application).
Plumrose argued that its trademark is well known among Venezuelans living in the U.S. even though it does not export or sell its meat products in the U.S. Plumrose accused that USA Ham is seeking to benefit from tits good will and reputation, and to allow USA Ham to register the mark would misrepresent to the consumers the true source of the meat products and cause damage to its reputation. Evidence of confusion among the consumers were presented during the opposition proceeding.
The TTAB found that:
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 Board also decided that Plumrose's reputation can suffer damage without evidence that consumers had "negative experiences" with USA Ham's products. The Board pointed out 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."
Ultimately, the Board sustained Plumrose's opposition because it satisfied all three elements of a Section 14(3) claim:
(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).
As a result, Plumrose successfully prevented USA Ham in registering the LA MONTSERRATINA trademark based primarily on its well-established reputation in Venezuela.
Comments