On Monday, July 25, 2022, Chris Kopitzke will lead the discussion about a recent Federal Circuit decision rejecting Coca-Cola’s attempt to cancel a competing distributor’s U.S. trademark registrations for two marks used and registered by Coca-Cola outside the U.S. She will also explain the requirements and offer practice tips for filing a timely and successful Letter of Protest with the USPTO.
In Meenaxi Enterprise, Inc. v. Coca-Cola Company, No. 21-2209 (Fed. Cir. 2022), available here, the Federal Circuit reversed a decision of the Trademark Trial and Appeal Board cancelling Meenaxi’s trademark registrations for the marks THUMS UP and LIMCA. These marks are used by Coca-Cola for cola and soda distributed in India and other foreign markets. Meenaxi has used these marks for cola and soda distributed in the United States since 2012. Coca-Cola sought to cancel Meenaxi’s registrations under Section 14(3) of the Lanham Act, claiming that Meenaxi was using the marks to misrepresent the source of its goods. The Federal Circuit held that Coca-Cola had not established a statutory cause of action based on lost sales or reputational injury. In a concurring opinion, Judge Reyna asserted that the case should have been decided based on the territoriality principle, and that Coca-Cola had waived reliance on the “well-known mark exception” to that principle.
Letters of Protest: Procedure and Practice Tips. Letters of Protest are a useful tool to bring clear-cut evidence against registration of a mark to the attention of an Examining Attorney early in the application process. Given the current backlog at the Trademark Office, a successful Letter of Protest may block registration of a competitor’s infringing mark long before it would be published for opposition. The procedure and requirements for Letters of Protest are set out in TMEP §1715, linked here; the PTO has also published a related practice guide, linked here.
All are welcome to attend the program at noon Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.