IP Law Daily, TRADEMARK—TTAB: Owner of meat-products company in Venezuela successfully opposes U.S. company’s application for ‘la Montserratina’, (Jan 21, 2025)

By Karen Servidea, J.D.

The opposer established that the reputation of its Venezuelan brand extends to U.S. consumers and that the U.S. company’s actions hijacked it.

In a precedential decision, the Trademark Trial and Appeal Board has sustained an opposition filed by the owner of a Venezuelan company to a U.S. company’s application to register a mark with the words “la Montserratina” for various processed meat products and other food products. The Board determined that the owner, whose company, “La Montserratina, C.A.,” sells prepackaged meat products in Venezuela was statutorily entitled to oppose based on damage to its reputation in the United States. On the merits, the Board held that the owner successfully established a claim under Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3) (Plumrose Holding Ltd. v. USA Ham LLC, No. 91272970 (T.T.A.B. Jan. 17, 2025)).

Applicant USA Ham LLC sought registration on the Principal Register of a mark 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 International Class 29. The proposed mark featured the words “la Montserratina.” Plumrose Holding Ltd. filed a notice of opposition to the registration, alleging to be the sole owner of a company called La Montserratina, C.A., that sells pre-packaged meat products in Venezuela. The notice asserted that, in connection with such sales, the Venezuelan company has used the mark LA MONTSERRATINA since 1949 and, since 2011, has used a composite mark with the words “la Monteserratina.”

The owner asserted that the parties’ marks consist of identical words; that, in the case of the U.S. company’s composite mark, the parties’ marks use identical typefaces; and that the specimens submitted by the U.S. company showed a sausage product bearing a label that copies the owner’s labels. The owner alleged that, in violation of Section 14(3) of the Lanham Trademark Act, 15 U.S.C. § 1064(3), the U.S. company was using its mark to misrepresent source. The Board sustained the owner’s opposition.

Extension of reputation into the U.S. The Board began by explaining that, in every inter partes case, the plaintiff must establish that it is entitled to invoke the statute authorizing the proceeding it filed. Section 13 of the Trademark Act provides for the filing of an opposition by any person who believes that he would be damaged by the registration of a mark. An opposition plaintiff must demonstrate (1) an interest falling within the zone of interests protected by the opposition statute, and (2) proximate causation.

The parties disputed whether the owner established statutory entitlement to oppose based on the alleged extension of the reputation of the owner’s LA MONTSERRATINA brand to consumers in the United States. The Board considered the question to implicate the Federal Circuit’s decision in Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022). Like the current case, in Meenaxi, the plaintiff did not allege or prove lost sales in the United States. The Federal Circuit noted, however, that a plaintiff may demonstrate entitlement to cancel or oppose by establishing either lost sales in the U.S. or reputational injury in the U.S.

In Meenaxi, the evidence did not support a finding that the plaintiff’s reputation extended to a significant portion of Indian-American consumers. The Board found the current case to be materially different from Meenaxi in that respect, however. It pointed to evidence of U.S. consumers communicating with the owner through social media and text messages asking whether the owner’s products are available in the United States, as well as evidence that at least some U.S. consumers have been confused or mistaken as to whether LA MONTSERRATINA products seen in Florida (where the U.S. company sells products) are the owner’s products. It further noted evidence that one of the grocery stores to which the U.S. company sells recognized the brand as one for sausage products in Venezuela with which it was familiar.

The Board found that other circumstances amplified the significance of the instances of actual confusion. Noting that the U.S. company had been in the market for only about four years and sells only to a handful of stores, with total sales of only about $20,000 per year, the Board considered the fact that there were already five documented instances of actual confusion to take on greater significance. Thus, the Board concluded that the owner’s brand reputation for products under its mark extends to the United States.

The Board further found that the U.S. company’s copying of the owner’s mark capitalized on the owner’s brand reputation in the United States. Here, the Board recounted that the U.S. company’s general manager, who was born in Venezuela and lived there for over four decades, testified that he had seen the owner’s marks on sausages in Venezuela. The Board considered it to be significant that the U.S. company targeted stores that have Venezuelan-American customers and/or stock Venezuelan products. Comparing the applied-for mark with the owner’s marks, the Board found the similarities to be “striking.” The Board further found that, at one time, the U.S. company modified its logo in such a way that it became an “exact copy of the precise typeface and layout of the words in [the owner’s] logo.”

The Board thus concluded that “in the totality of the circumstances here, [the U.S. company’s] copying clearly reflects a calculated, multi-faceted attempt to capitalize on [the owner’s] reputation for its LA MONTSERRATINA-branded meat products with at least some U.S. consumers” and that such copying was “confirmatory evidence of [the owner’s] reputation within the U.S.”

Reputational injury. The Board rejected the U.S. company’s argument that there can be no reputational injury unless there is evidence that consumers have had negative experiences with its products and associate those experiences with the owner. It explained that one of the key assets the Trademark Act protects is the mark owner’s ability to control its reputation, noting that “[w]hen an unrelated party uses the mark so as to misrepresent or cause confusion or mistake as to source, that control is lost, leaving the original owner’s reputation to the whim of an unrelated third party, to the detriment of the mark owner.”

Also unsuccessful was U.S. company’s contention that the owner’s plans to enter the U.S. market were too “nebulous” for the owner to demonstrate statutory entitlement to oppose. The Board concluded that because the owner was alleging damage to its reputation in the U.S., and not lost sales, as the basis for its Section 14(3) claim, the details of its plans for commercial expansion into the United States were not required to show damage. Moreover, the Board noted, the evidence showed that the owner’s reputation extends into the United States. It explained that the extension of that reputation into the U.S. is not dependent on the owner’s intent-to-use applications or future business plans.

The Board acknowledged that cases discussing loss of control as a commercial harm by itself typically involve plaintiffs selling products in the U.S. market. It concluded, however, that the harm generated by loss of control over one’s reputation falls within the purview of the Lanham Act.

Suspension of applications. The Board went on to find that the owner was also statutorily entitled to oppose the registration on the basis of its own registration applications. The owner showed that its two applications received Office actions informing it that if the U.S. company received its registration, then the owner’s applications may be refused due to a likelihood of confusion. The Board determined that the owner’s commercial interest in its applications and the fact that the pendency of the U.S. company’s application had thwarted those applications show that the owner has a reasonable belief in damage proximately caused by the registration of the mark in the U.S. company’s application. Thus, in the Board’s view, the suspension of the owner’s applications independently entitled the owner to file the proceeding.

Merits. On the merits, the Board explained that two of the elements of the owner’s Section 14(3) claim—namely, specific acts or conduct by the U.S. company that were deliberately aimed at passing-off its goods as those of the owner and the nature of the injury to the owner as a result of the U.S. company’s deliberate conduct—coincided with the findings that the Board had already made concerning the owner’s entitlement to invoke the opposition statute to pursue its Section 14(3) claim. Since there was no dispute as to the remaining element of such a claim (present use of the challenged mark), the Board sustained the opposition.

The case is Opposition No. 91272970.

Judge: Casagrande, T.

Attorneys: Douglas A. Rettew (Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.) for Plumrose Holding Ltd. Felipe Rubio (Rubio & Associates PLLC) for USA Ham LLC.

Companies: Plumrose Holding Ltd.; USA Ham LLC

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