Patent Assignor Estoppel and Cancellation of Trademark Registrations Under Section 14(3)

Our weekly SoCal IP Institute meeting on Monday, July 19, 2021 will be a discussion of a Supreme Court case finding patent assignor estoppel may not apply when there are post-assignment amendments to claims and a TTAB case ordering cancellation of registrations under Section 14(3) due to registrants misrepresentation of source.

In Minerva Surgical, Inc., Petitioner v. Hologic, Inc., et al. (54 U.S. ____, June 29, 2021) (available here), Csaba Truckai and his company Novacept applied for a patent on a medical device and then sold the patent application.  Later, Truckai invented a new device that uses a different method to treat the same condition at his new company Minerva Surgical, Inc.  In the meantime, amendments were made to the patent application, and the patent subsequently issued.  Hologic, Inc, the current holder of the patent, sued Minerva Surgical, claiming that Truckai’s new device infringed the patent he had sold. Minerva Surgical argued that it did not infringe the claims of the original patent application and Hologic’s amended claims were invalid. In deciding this case in Minerva’s favor, the Supreme Court upheld a prior precedent to maintain the doctrine of assignor estoppel holding that the assignor of a patent is generally estopped from later challenging its validity, but asserted that this estoppel does not apply to grounds for invalidity that arose after the assignment.

In The Coca-Cola Company v. Meenaxi Enterprise, Inc. (TTAB June 28, 2021) (available here), Meenaxi, a seller of food products made in India and distributed to Indian grocers in the United States, obtained US trademark registrations for the marks THUMS UP and LIMCA for soft drinks. Coca-Cola sought to cancel the registrations, submitting evidence of its ownership of the well-known marks THUMS UP and LIMCA in India for soft drinks and asserting that Meenaxi registered the marks in a “blatant attempt to deceive United States consumers into believing that its soda products are the U.S. version of the THUMS UP and LIMCA products” sold by Coca-Cola in India. Section 14(3) of the Lanham Act provides that a registration is subject to cancellation if “the registered 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.”  The TTAB concluded that Meenaxi did use the marks to misrepresent the source of its soft drink products, and thus ordered cancellation of Meenaxi’s two registrations.

We will discuss these cases at our weekly SoCal IP Institute with any who wish to join us on a video conference on July 19, 2021 at 1:00 pm. Simply email elisham @ (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.