The Board’s Decision
In a significant precedential ruling, Plumrose Holding Ltd. v. USA Ham LLC, No. 91272970, 2025 WL 248763, at *1 (Jan. 17, 2025), the Trademark Trial and Appeal Board (“Board”) has expanded protection for foreign trademark owners, ruling that a company can successfully oppose a U.S. trademark application based solely on reputational harm, even without any U.S. sales or trademark registrations.
In Plumrose, USA Ham LLC (“USA Ham”) applied to register the mark LA MONTSERRATINA for “Ham; Meat; Pork; Cold cuts; Cold cuts, namely, mortadella, pork loin, ham, bologna, salami, chorizo; Pork tenderloin; Processed meat; Sausage meat; Smoked sausages; Snack food dips” in Class 29.[1] Plumrose Holding Ltd. (“Plumrose”), the owner of Venezuelan company La Montserratina, C.A., which sells pre-packaged meat products in Venezuela, opposed the application based on misrepresentation of source under Section 14(3) of the Lanham Act.[2] While Plumrose does not use its mark in the U.S., it alleged that it has been using the mark in Venezuela since 1949, and the mark is “well-known, famous, and ha[s] a reputation for superior quality in Venezuela and among Venezuelans living in the United States.”[3]
In support of its misrepresentation of source claim, Plumrose argued that USA Ham deliberately copied its trademark to capitalize on Plumrose’s reputation in the U.S. among Venezuelan-Americans, and that U.S. consumers had actually been confused as to the source of USA Ham’s products.[4] USA Ham argued that Plumrose lacked statutory standing to oppose its application because it does not use the mark in the U.S.[5]
In determining the issue of Plumrose’s standing to oppose USA Ham’s application, the Board discussed the Federal Circuit’s 2022 decision in Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022), which rejected similar claims from Coca-Cola regarding its trademarks registered in India.[6] In Meenaxi, Coca-Cola argued reputational injury in the U.S. stemming from Meenaxi’s use of its THUMBS UP and LIMICA marks, which were only registered in India and not used by Coca-Cola in the United States.[7] Coca-Cola argued that the reputation of these marks extended to Indian-Americans living in the U.S.[8] The Federal Circuit found that Coca-Cola’s claim of reputational injury lacked sufficient evidence.[9] For instance, Coca-Cola had not provided any evidence regarding the number of Indian-Americans that visited or lived in India.[10]...
