IP Law Daily, TOP STORY—TTAB: Coca-Cola succeeds in cancelling THUMS UP and LIMCA trademark registrations, (Jul 12, 2021)

By Brian Craig, J.D.

The registrant engaged in blatant misuse and attempted to deceive consumers that its soda products are the U.S. versions of Coca-Cola’s famous Indian products.

The Trademark Trial and Appeal Board has granted The Coca-Cola Company’s petition to cancel registrations for the marks THUMS UP and LIMCA issued to Meenaxi Enterprise, Inc. ("Meenaxi") based on misrepresentation of source. In a precedential opinion, the Board concluded that Meenaxi engaged in blatant misuse in a manner calculated to trade on the goodwill and reputation of Coca-Cola in an attempt to confuse consumers in the United States that its THUMS UP and LIMCA marks were licensed or produced by the source of the same types of cola and lemon-lime soda sold under these marks for decades in India. The Board also rejected Meenaxi’s laches affirmative defense for failure to show prejudice (The Coca-Cola Co. v. Meenaxi Enterprise, Inc., June 28, 2021, Lynch, C.).

The Coca-Cola Company filed a petition to cancel registrations owned by Meenaxi for the marks THUMS UP and LIMCA, in standard characters, both used in connection with colas and soft drinks. While the petition included numerous grounds for cancellation, Coca-Cola only asserted misrepresentation of source at trial. Meenaxi filed an answer denying the allegations and included many affirmative defenses, many of which the Board concluded were not true affirmative defenses. The Board only addressed the laches affirmative defense.

Laches. The Board concluded that the defense of laches failed because Meenaxi did not prove that it suffered prejudice. To establish laches, the respondent must show that the petitioner delayed unreasonably in asserting its rights, resulting in prejudice to the respondent from the delay. The parties agreed that the period of delay at issue here was three-and-a-half years. Coca-Cola offered no explanation for its delay but insisted that the delay was neither unreasonable nor prejudicial. Meenaxi pointed to no evidentiary support for its alleged prejudice. Because Meenaxi failed to prove that it suffered prejudice as a result of the delay, the defense of laches failed.

Misrepresentation of source. The Board granted the petition to cancel both registrations based on misrepresentation of source. Under Trademark Act Section 14(3), a registration is subject to cancellation if the mark "is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used." 15 U.S.C. § 1064(3). The misrepresentation of source must involve a respondent deliberately passing off its goods as those of another. The respondent’s use must be a blatant misuse of the mark in a manner calculated to trade on the goodwill and reputation of petitioner.

The Board found that in India, Coca-Cola’s THUMS UP mark has been used since 1977 for a cola product and is well known. Thums Up is currently the top selling sparkling beverage in India and is one of the world’s best-selling beverages. Likewise, Coca-Cola’s LIMCA brand of lemon-lime soft drink, introduced in India in 1971 by Coca-Cola’s predecessor-in-interest, is among one of the top best-selling carbonated beverages in India.

The Board determined that Meenaxi’s adoption of logos that were essentially identical to both the older and updated versions of Coca-Cola’s logos reflected an effort to dupe consumers in the United States who were familiar with Coca-Cola’s THUMS UP cola from India into believing that its THUMS UP cola was the same drink. The Board also found it significant that Meenaxi’s activities in connection with THUMS UP and LIMCA were not isolated instances, but instead formed part of a broader pattern of copying the word marks and logos of others, particularly brands from India. The Board concluded that Meenaxi engaged in conduct with an intent to cause consumers exposed to the THUMS UP and LIMCA marks to draw the logical conclusion that its products in the United States were licensed or produced by the source of the same types of cola and lemon-lime soda sold under these marks for decades in India. Here, the evidence established that Meenaxi engaged in blatant misuse of the marks in a manner calculated to trade on the goodwill and reputation of Coca-Cola. Accordingly, the Board granted the petition to cancel the registrations for both marks.

The case is Cancellation Nos. 92063353 & 92064398.

Attorneys: Holly Hawkins Saporito (Alston & Bird LLP) for Coca-Cola Co. John M. Rannells (Baker and Rannells, PA) for Meenaxi Enterprise, Inc.

Companies: Coca-Cola Co.; Meenaxi Enterprise, Inc.

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