TTAB decision to cancel soda-related marks as requested by Coca-Cola reversed

Meenaxi Enterprise, Inc. v. Coca-Cola Company

Docket No. 2021-2209 (https://cafc.uscourts.gov/opinions-orders/21-2209.OPINION.6-29-2022_1971328.pdf)

DYK, REYNA (C), STOLL

June 29, 2022

Brief Summary:   TTAB cancellation Meenaxi’s soda-related marks reversed.

Summary:  Meenaxi appealed TTAB (“Board”) decision in Coca-Cola’s favor regarding Meenaxi’s Thums Up cola and Limca lemon-lime soda that it has sold in the US since 2008 and registered as trademarks in the US in 2012 (cancelled with the Board’s decision).  Coca-Cola brought cancellation proceedings against Meenaxi under section 14(3) of the Lanham Act, arguing that “Meenaxi was using the marks to misrepresent the source of its goods.”   This opinion explains that Coca-Cola purchased the owner (“Parle”) of the Thums Up and Limca drinks as well as the Indian THUMS UP and LIMCA marks in 1993.  The Indian High Court found both marks to be “famous” and “well known” in 2014 and 2011, respectively.  Coca-Cola argued that these brands “are resold in Indian grocery stores around the world”, including the US, and the Board therefore found Coca-Cola has “an interest in [Coca-Cola’s] goods in the United States by Indian grocers, restaurants and other retail outlets.”  Meenaxi has been selling drinks under the disputed marks since 2008, found the marks had been abandoned or expired, and registered its own marks for these names for soft drinks in 2012.  The FC panel opinion explained that under Lexmark (US 2014), under section 43(a) (“very similar to the language of [section] 14(3) that applies here”) “entitlement to a statutory cause of action under the Lanham Act requires demonstrating (1) an interest falling within the zone of interests protected by the Lanham Act and (2) an injury proximately caused by a violation of the Act”.  The Board found that “the reputation of [Coca-Cola’s] THUMS UP and LIMCA beverages would extend to the United States, at least among the significant population of Indian-American consumers”, “likely familiar” to those people, and “found the zone-of-interest and damage prongs of Lexmark met.”  The Board then concluded “that Meenaxi was attempting “to dupe consumers in the United States who were familiar with [Coca-Cola’s] THUMS UP cola from India into believing that [Meenaxi’s] THUMS UP cola was the same drink…and that these efforts to deceive satisfied the misrepresentation of source claim” and cancelled both marks.  Meenaxi argued in this appeal “that Coca-Cola lacks any cause of action under the Lanham Act because of the territoriality principle” and the FC panel agreed, explaining that SCOTUS has recognized that “[t]he principle that trademark rights are geographically limited” (Hanover, US 1916; Lanham Act; Park N’ Fly, US 1985; United Drug, US 1918) but also found that it “does not govern here” as “[b]oth § 43(a) and § 14(3) extend to the improper use of marks that cause commercial injury even if the injured party is not itself a trademark holder” (Dastar, US 2003).  The FC panel agreed that Coca-Cola did not “not identify any lost sales” (or “future plans to market” it).  It also found the Board based its reputational findings on Coca-Cola’s “reputation in India” and assumptions that that reputation could extend to the US, and the FC panel therefore reversed the decision.  Judge Reyna concurred but believes “this case is governed by the territoriality principle”.