FLYNN THIEL  BLOG POST
  • Eugene J. Rath III

PROTECTING A FOREIGN TRADEMARK IN THE U.S. (ESPECIALLY IF IT’S BIG COLA . . . C-O-L-A, COLA)

Is it possible in the United States to protect a trademark that is not used directly and not registered in the States? The short answer is “yes.” However, you better have a trademark that is very well-known in at least one foreign jurisdiction and the notoriety causes it to have a reputation that extends to the United States.

Meenaxi Enterprises, Inc. (“Meenaxi”) received U.S. trademark registrations on THUMS UP and LIMCA, both generally for soft drinks. The Coca-Cola Company (“Coca-Cola”) filed petitions to cancel both registrations with the Trademark Trial and Appeal Board (TTAB) of the USPTO. What makes this case interesting is that Coca-Cola had no direct use of the THUMS UP or LIMCA (or similar marks) in the U.S. and has no federal registrations for those marks. Instead, Coca-Cola based its cancellation petitions on a portion of 15 U.S.C. § 1064(3), which prohibits the misrepresentation of the source of goods on which marks are used.


Specifically, Coca-Cola based its case on the fact that it owns the rights to THUMS UP and LIMCA in India and other foreign jurisdictions, including owning and maintaining multiple registrations on both marks. Both marks are used by Coca-Cola with beverages, THUMS UP for cola and LIMCA for a lemon-lime soda. The marks have been used in India since the 1970s, and the sales are significant (THUMS UP very well may be Coca-Cola’s next billion dollar product). THUMS UP enjoys 80% of the cola market share in India and LIMCA is one of the best selling lemon-lime sodas in India. The TTAB also found that the reputation of both brands extends to the U.S., primarily to the Indian-American population.


The TTAB analyzed whether Coca-Cola had statutory entitlement to bring a cause of action. Noting that this is a low threshold, the TTAB held that Coca-Cola did have such an entitlement due to Coca-Cola having a “real interest” because the reputation of the marks at issue extends to the U.S. and that Coca-Cola had plans to market the THUMS UP and LIMCA beverages more widely in the United States.


The TTAB next considered the allegation of misrepresentation of source. To be successful for such an allegation, there must be a deliberate passing off of goods as those of another. There must be a blatant misuse of the mark in a manner calculated to trade on the goodwill and reputation of the petitioner. Willful use of a confusingly similar mark is not enough.


The TTAB noted Coca-Cola’s (and its predecessor’s) continuous use of the marks in India and elsewhere for nearly 50 years, the market share of the beverages sold under the marks, and India court cases indicating that the marks at issue are well-known in India. These, among other facts, caused the TTAB to hold that the marks have achieved reputation beyond India, including in the United States. But the actions of Meenaxi were just as, if not more, significant for the TTAB’s ultimate holding. Meenaxi’s business primarily is a distributor of food products manufactured in India and sold to Indian grocers in the United States. The principals of Meenaxi testified they had been familiar with the THUMS UP and LIMCA beverages in India before they moved to the United States. Meenaxi used the same tagline (“Taste the Thunder”) for THUMS UP as Coca-Cola used for its product in India. The Board also found that the logo used on Meenaxi’s THUMS UP product was essentially identical to Coca-Cola’s logos for THUMS UP. The Board did not mince words about this:


Respondent’s adoption of logos essentially identical to both the older and updated versions of Petitioner’s logo reflects an effort to dupe consumers in the United States who were familiar with Petitioner’s THUMS UP cola from India into believing that Respondent’s THUMS UP cola was the same drink.


The Board found that Meenaxi’s LIMCA logo “strongly resembles” Coca-Cola’s, and that there had been a pattern of allegations against Meenaxi for adopting third parties’ marks.


Given these facts, the TTAB, unsurprisingly, found there was a misrepresentation of source and cancelled Meenaxi’s registrations, noting “Respondent’s behavioral pattern reinforces our finding that Respondent deliberately misrepresented the source of its goods under the THUMS UP and LIMCA marks” and calling Meenaxi’s actions a “blatant misuse of marks.”


The bottom line is that if you wish to protect a mark that is not used or registered in the United States, and someone else is trying to “squat” the rights for that mark, you need to show some reputation for the mark that extends to the United States and have evidence that the squatter has intentionally attempted to trade on the goodwill of those marks. It is not easy to do, but can be done in the right circumstances.