Case: 21-2209 Document: 34 Page: 1 Filed: 06/29/2022
United States Court of Appeals
for the Federal Circuit
______________________
MEENAXI ENTERPRISE, INC.,
Appellant
v.
COCA-COLA COMPANY,
Appellee
______________________
2021-2209
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
92063353, 92064398.
______________________
Decided: June 29, 2022
______________________
RICHARD MANDEL, Cowan, Liebowitz & Latman, PC,
New York, NY, argued for appellant.
HOLLY HAWKINS SAPORITO, Alston & Bird LLP, At-
lanta, GA, argued for appellee. Also represented by KIRK
T. BRADLEY, Charlotte, NC.
______________________
Before DYK, REYNA, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Case: 21-2209 Document: 34 Page: 2 Filed: 06/29/2022
2 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
Opinion concurring in the result filed by Circuit Judge
REYNA.
DYK, Circuit Judge.
The Coca-Cola Company (“Coca-Cola”) distributes a
Thums Up cola and Limca lemon-lime soda in India and
other foreign markets. Meenaxi Enterprise, Inc.
(“Meenaxi”) has distributed a Thums Up cola and a Limca
lemon-lime soda in the United States since 2008 and regis-
tered the THUMS UP and LIMCA marks in the United
States in 2012. Coca-Cola brought cancellation proceed-
ings under § 14(3) of the Lanham Act, 15 U.S.C. § 1064(3),
asserting that Meenaxi was using the marks to misrepre-
sent the source of its goods. The Trademark Trial and Ap-
peal Board (“Board”) held in Coca-Cola’s favor and
cancelled Meenaxi’s marks. Meenaxi appeals. Because we
conclude that Coca-Cola has not established a statutory
cause of action based on lost sales or reputational injury,
we reverse.
BACKGROUND
I
Coca-Cola began operating in India in 1950. Parle (Ex-
ports), Limited of Bombay, India (“Parle”) introduced the
Thums Up cola in India in 1977 and the Limca lemon-lime
soft drink in India in 1971. Coca-Cola purchased Parle in
1993 and acquired Parle’s Indian registrations of the
THUMS UP and LIMCA marks. Coca-Cola’s beverages are
available in over 2.6 million retail outlets throughout In-
dia. Thums Up cola is also sold in Bangladesh, Oman, Sin-
gapore, and the United Arab Emirates, and Limca soda is
also sold in Angola, Nigeria, Sri Lanka, Bhutan, Oman,
Singapore, and the United Arab Emirates. The Indian
High Court of Delhi found in 2014 that the THUMS UP
mark was “famous” and “well known” in India, J.A. 3165,
3174, and previously found in 2011 that the LIMCA mark
was “well known” in India, J.A. 3256, 3258.
Case: 21-2209 Document: 34 Page: 3 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 3
Coca-Cola claims that its Thums Up and Limca bever-
ages have been imported and sold in the United States by
third parties who purchased the products in India since at
least 2005. Michael Pittman, Marketing Director for Spar-
kling Brands Platform Innovation at Coca-Cola, stated
that authentic “Thums Up and Limca products are resold
by third parties in Indian grocery stores, restaurants, and
other retail outlets in the U.S.” J.A. 3590 ¶ 15. Shrenik
Dasani, Vice President for the Sparkling Category at Coca-
Cola India, stated, “It is my understanding that these
THUMS UP-branded and LIMCA-branded products are re-
sold in Indian grocery stores around the world, including
in the U.S., and that these brands are extremely popular
and well-received by consumers in the U.S. . . . .” J.A. 3055
¶ 39. Based primarily on the affidavits of Mr. Pittman and
Mr. Dasani, the Board found that there is “an interest in
[Coca-Cola’s] goods in the United States by Indian grocers,
restaurants and other retail outlets.” J.A. 37.
Meenaxi has been selling beverages to Indian grocers
in the United States since 2008 using the THUMS UP and
LIMCA marks. Prior to beginning use of the marks in
2008, Meenaxi claims to have searched for the mark in the
U.S. Patent and Trademark Office (“USPTO”) database
and in several Indian grocers in the United States. The
USPTO search revealed an application for the THUMS UP
mark was abandoned in 1987 and a registration for the
LIMCA mark expired in 1996.
In 2012, Meenaxi sought to register the THUMS UP
and LIMCA marks in the United States. It was granted
Registration No. 4,205,598 (“’598 Registration”) for the
THUMS UP standard character mark in International
Class 32 for “Colas; Concentrates, syrups or powders used
in the preparation of soft drinks; Soft drinks, namely, so-
das,” and Registration No. 4,205,597 (“’597 Registration”)
for the LIMCA standard character mark, also in Interna-
tional Class 32. J.A. 10.
Case: 21-2209 Document: 34 Page: 4 Filed: 06/29/2022
4 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
II
On March 8, 2016, Coca-Cola brought a claim under
§ 14(3) of the Lanham Act to cancel Meenaxi’s registrations
for misrepresentation of source. Section 14(3) provides:
A petition to cancel a registration of a mark, stating
the grounds relied upon, may . . . be filed as follows
by any person who believes that he is or will be
damaged . . . by the registration of a mark on the
principal register[:] . . .
(3) At any time . . . 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 ser-
vices on or in connection with which the mark is
used.
15 U.S.C. § 1064.
The Board first addressed Coca-Cola’s statutory enti-
tlement to bring a cancellation claim before reaching the
merits. Under the statute, Coca-Cola was required to es-
tablish that it “believes that [it] is or will be damaged . . .
by the registration of [the] mark.” Id. Under the Supreme
Court’s decision in Lexmark International, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 129, 132 (2014),
entitlement to a statutory cause of action under the Lan-
ham Act requires demonstrating (1) an interest falling
within the zone of interests protected by the Lanham Act
and (2) an injury proximately caused by a violation of the
Act.
Considering the zone-of-interest prong of the statutory
entitlement inquiry, the Board found that Coca-Cola owns
registrations for the THUMS UP and LIMCA marks in In-
dia and other countries and that these marks are well
known in India, command a substantial market share in
India, and are imported and sold in the United States by
others. The Board further found that “the reputation of
[Coca-Cola’s] THUMS UP and LIMCA beverages would
Case: 21-2209 Document: 34 Page: 5 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 5
extend to the United States, at least among the significant
population of Indian-American consumers.” J.A. 26. This
was so because Coca-Cola’s THUMS UP and LIMCA marks
“likely would be familiar to much of the substantial Indian-
American population in the United States.” J.A. 37, 40–41.
The Board relied on evidence that the Indian-American
population in the United States was over 2.6 million in
2010 and had climbed to over 3.8 million by 2015.
Considering the proximate damage prong of the statu-
tory entitlement inquiry, the Board found that Coca-Cola
“reasonably believe[d] in damage proximately caused by
the continued registration by [Meenaxi] of THUMS UP and
LIMCA,” as Meenaxi’s use of the THUMS UP and LIMCA
marks could cause a harm “stemming from the upset ex-
pectations of consumers.” J.A. 30. The Board also noted
that Meenaxi had used its registrations to block importa-
tion of Coca-Cola’s Thums Up and Limca beverages by
third parties. Thus, based on these findings and the
Fourth Circuit’s decision in Belmora LLC v. Bayer Con-
sumer Care AG, 819 F.3d 697 (4th Cir. 2016), the Board
found the zone-of-interest and damage prongs of Lexmark
met.
On the merits, the Board reiterated that Coca-Cola’s
THUMS UP and LIMCA marks had reputations that
would be familiar to Indian Americans in the United
States. And the Board explained that Meenaxi had “admit-
ted knowledge of [Coca-Cola’s] marks,” J.A. 57, based on
evidence that (i) Meenaxi admitted it was aware that
“THUMS UP was used in India by an Indian company” in
the 1970s, J.A. 44 (citing J.A. 2508); (ii) Meenaxi founder
Kaushik Gandhi admitted he had tasted a Thums Up soda
in India in the 1980s, J.A. 42 (citing J.A. 2651); (iii) Mr.
Gandhi admitted he had “tried the Limca product at [his]
college’s canteen,” J.A. 48 (quoting J.A. 2652); (iv) Meenaxi
President Meenaxi Gandhi admitted she was aware of
Thums Up and Limca drinks in India, J.A. 42, 49 (citing
J.A. 2939–40); and (v) Meenaxi admitted it knew that
Case: 21-2209 Document: 34 Page: 6 Filed: 06/29/2022
6 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
“Coca-Cola entered the Indian soda market and purchased
THUMS UP sometime in the early 1990s,” J.A. 44 (citing
J.A. 2508). The Board found that Meenaxi had intention-
ally adopted logos and a slogan that were exact or nearly
exact replicas of those used by Coca-Cola and only changed
the logos once Coca-Cola objected. 1
Relying on these underlying findings, the Board held
that Meenaxi was attempting “to dupe consumers in the
United States who were familiar with [Coca-Cola’s]
THUMS UP cola from India into believing that [Meenaxi’s]
THUMS UP cola was the same drink,” J.A. 46, and that
these efforts to deceive satisfied the misrepresentation of
source claim. On June 28, 2021, the Board cancelled the
’597 and ’598 Registrations.
Meenaxi appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4).
1 The Board also found that Coca-Cola’s THUMS UP
and LIMCA marks were not the only Indian brands
Meenaxi reproduced in the United States as a part of its
business model of copying popular Indian brands and prod-
ucts to sell them to Indian-American consumers. Other
Meenaxi marks have been challenged in Board proceed-
ings, which have resulted in cancellation or abandonment.
See J.A. 3810–20 (Opposition No. 91210494 to Meenaxi’s
NUTRELA mark, which led to the denial of Meenaxi’s ap-
plication); J.A. 3753–65 (Cancellation No. 92057584 to
Meenaxi’s RASNA mark, which led to Meenaxi surrender-
ing its registration and the Board cancelling the mark);
J.A. 3821–36 (Opposition No. 91211285 to Meenaxi’s
REAL NAMKEEN mark, which led to Meenaxi abandoning
the mark).
Case: 21-2209 Document: 34 Page: 7 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 7
DISCUSSION
I
As a threshold matter, we must address whether Coca-
Cola has a statutory cause of action to challenge Meenaxi’s
trademark registrations for the THUMS UP and LIMCA
marks. See Austl. Therapeutic Supplies Pty. Ltd. v. Naked
TM, LLC, 965 F.3d 1370, 1373–74 (Fed. Cir. 2020), cert.
denied, 142 S. Ct. 82 (2021). Entitlement to a statutory
cause of action is a legal determination reviewed de novo.
Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed.
Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021). 2 Under § 14
of the Lanham Act, a cancellation challenge may be filed
“by any person who believes that he is or will be damaged
2 This appeal focuses on entitlement to a statutory
cause of action to cancel a trademark registration under 15
U.S.C. § 1064, not Article III standing. Corcamore, 978
F.3d at 1303. This is sometimes called statutory standing.
See Lexmark, 572 U.S. at 128 n.4.
“The appellant must also satisfy the requirements of
Article III.” Brooklyn Brewery Corp. v. Brooklyn Brew
Shop, 17 F.4th 129, 137 (Fed. Cir. 2021) (emphasis added).
“[A]lthough Article III standing is not necessarily a re-
quirement to appear before an administrative agency [such
as the TTAB], once a party seeks review in a federal court,
‘the constitutional requirement that it have standing kicks
in.’” Consumer Watchdog v. Wis. Alumni Rsch. Found., 753
F.3d 1258, 1261 (Fed. Cir. 2014) (quoting Sierra Club v.
EPA, 292 F.3d 895, 899 (D.C. Cir. 2002)). Meenaxi’s stand-
ing to appeal is not at issue because its trademark regis-
tration was cancelled, which it clearly has standing to
appeal. Since Coca-Cola is the appellee, the sole issue with
respect to Coca-Cola is whether it has a statutory cause of
action that permitted it to proceed before the Board.
Case: 21-2209 Document: 34 Page: 8 Filed: 06/29/2022
8 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
. . . by the registration of a mark.” § 1064. Here, the al-
leged damage is that “the registered mark is being used by
. . . the registrant so as to misrepresent the source of the
goods.” § 1064(3). In Lexmark, the Supreme Court held
that such causes of action “extend[] only to plaintiffs whose
interests ‘fall within the zone of interests protected by the
law invoked.’” 572 U.S. at 129 (quoting Allen v. Wright,
468 U.S. 737, 751 (1984)). That in turn requires an allega-
tion of “injury to a commercial interest in reputation or
sales.” Id. at 132. While the zone-of-interest “test is not
especially demanding,” id. at 130 (internal quotations
omitted) (quoting Match-E-Be-Nash-She-Wish Band of Pot-
tawatomi Indians v. Patchak, 567 U.S. 209, 225 (2012)), it
nonetheless imposes a critical requirement.
Lexmark involved activities solely within the United
States. In that case, Static Control produced components
that remanufacturers could use to refurbish used toner car-
tridges for Lexmark printers. Id. at 121. Lexmark alleg-
edly sent letters to most remanufacturers claiming that “it
was illegal to use Static Control’s products to refurbish
[certain of Lexmark’s toner] cartridges,” which was an al-
leged misrepresentation of the legal status of Static Con-
trol’s products under § 43(a) of the Lanham Act. Id. at 122–
23. The Court held that Static Control’s injury flowing
from Lexmark’s claims about its products, including “lost
sales and damage to its business reputation,” were “inju-
ries to precisely the sorts of commercial interests the [Lan-
ham] Act protects” in the Court’s zone-of-interest analysis.
Id. at 137.
The language in § 43(a) at issue in Lexmark—estab-
lishing entitlement to a cause of action for “any person who
believes that he or she is or is likely to be damaged” by pro-
hibited conduct—is very similar to the language of § 14(3)
Case: 21-2209 Document: 34 Page: 9 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 9
that applies here. 3 Given the similar statutory language,
we have held that the same requirements as to the injury
apply to § 14(3) of the Lanham Act, 15 U.S.C. § 1064, as to
§ 43(a). Here, as in Corcamore, “[w]e . . . hold that the
Lexmark zone-of-interests and proximate-causation re-
quirements control the statutory cause of action analysis
under § 1064.” 978 F.3d at 1305.
Meenaxi argues that Coca-Cola lacks any cause of ac-
tion under the Lanham Act because of the territoriality
principle. Meenaxi is correct that the territoriality princi-
ple is well established in trademark law: “Under the terri-
toriality doctrine, a trademark is recognized as having a
separate existence in each sovereign territory in which it is
3 Section 43(a) prohibits using any mark in com-
merce that
(A) is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or as-
sociation of such person with another person, or as
to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by an-
other person, or
(B) in commercial advertising or promotion, mis-
represents the nature, characteristics, qualities, or
geographic origin of his or her or another person’s
goods, services, or commercial activities . . . .
15 U.S.C. § 1125(a). Section 43(a) is meant “to protect con-
sumers from deception caused by both trademark infringe-
ment and false advertising.” 5 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 27:25
(5th ed. 2021). Section 14(3) concerns similar conduct—
deception through misrepresentation of source—but it de-
scribes a narrower cause of action for cancelling the regis-
tration of a mark being used to misrepresent the source of
the goods. See § 1064.
Case: 21-2209 Document: 34 Page: 10 Filed: 06/29/2022
10 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
registered or legally recognized as a mark.” McCarthy on
Trademarks § 29:1. “The concept of territoriality is basic
to trademark law; trademark rights exist in each country
solely according to that country’s statutory scheme.” Per-
son’s Co. v. Christman, 900 F.2d 1565, 1568–69 (Fed. Cir.
1990). 4
Supreme Court cases from early in the last century, be-
fore the Lanham Act, recognized the territoriality principle
both with respect to differing sections of the United States
and with respect to foreign countries. Hanover Star Mill-
ing Co. v. Metcalf (Tea Rose Case), 240 U.S. 403, 413 (1916)
superseded by statute, Lanham Act, Pub. L. No. 79-489, 60
Stat. 435, as recognized in Park ’N Fly, Inc. v. Dollar Park
and Fly, Inc., 469 U.S. 189, 199–200 (1985), concerned the
TEA ROSE mark being used with respect to flour distrib-
uted from different mills in different parts of the United
States. The Supreme Court considered common law prin-
ciples and explained the scope of the mark’s function:
Into whatever markets the use of a trade-mark has
extended, or its meaning has become known, there
will the manufacturer or trader whose trade is pi-
rated by an infringing use, be entitled to protection
and redress. But this is not to say that the proprie-
tor of a trade-mark, good in the markets where it
has been employed, can monopolize markets that
his trade has never reached and where the mark
signifies not his goods but those of another. We
agree with the court below that “Since it is the:
trade, and not the mark, that is to be protected, a
4 See also ITC Ltd. v. Punchgini, Inc., 482 F.3d 135,
155 (2d Cir. 2007) (“The principle of territoriality is basic
to American trademark law.”); Am. Circuit Breaker Corp.
v. Or. Breakers Inc., 406 F.3d 577, 581 (9th Cir. 2005) (“It
is now generally agreed and understood that trademark
protection encompasses the notion of territoriality.”).
Case: 21-2209 Document: 34 Page: 11 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 11
trade-mark acknowledges no territorial boundaries
of municipalities or states or nations, but extends
to every market where the trader’s goods have be-
come known and identified by his use of the mark.
But the mark, of itself, cannot travel to markets
where there is no article to wear the badge and no
trader to offer the article.”
Id. at 415–16 (emphasis added) (internal citations omit-
ted). See United Drug Co. v. Theodore Rectanus Co., 248
U.S. 90, 97 (1918) (“There is no such thing as property in a
trade-mark except as a right appurtenant to an established
business or trade in connection with which the mark is em-
ployed. . . . [T]he right to a particular mark grows out of its
use, not its mere adoption . . . .”); see also Topps Co. v. Cad-
bury Stani S.A.I.C., 526 F.3d 63, 70 (2d Cir. 2008) (“The
principle of territoriality is fundamental to trademark law.
A trademark has a separate legal existence under each
country’s laws, and trademark rights exist in each country
solely according to that nation’s laws.” (first citing Punch-
gini, 482 F.3d at 155; and then citing Person’s, 900 F.2d at
1568–69)). While the territoriality principle with respect
to use of marks in different sections of the United States
has been changed by the Lanham Act, the territoriality
principle still applies with respect to use of marks in differ-
ent countries. 5 With respect to international usage, a
5 See McCarthy on Trademarks § 29:2 (“Priority of
trademark rights in the United States depends solely upon
priority of use in the United States, not on priority of use
anywhere in the world. Prior use in a foreign nation does
not establish priority of use in America.”); see also id.
§ 26:32 (“[R]egistration under the federal act of 1905, for
purposes of territorial protection, did not confer any
greater rights than exist at common law, under the TEA
ROSE-Rectanus doctrine. However, the 1946 federal
Case: 21-2209 Document: 34 Page: 12 Filed: 06/29/2022
12 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
trademark right generally extends only to countries in
which the mark is used.
We recognized the territoriality principle in Person’s.
Person’s was a well-known retailer in Japan. Person’s, 900
F.2d at 1567. Christman, a U.S. citizen, began producing
goods bearing the Person’s mark in the United States and
subsequently registered the mark in the United States. Id.
Thereafter, the Japanese owner of the PERSON’S mark in
Japan began to expand its brand into the U.S. market, dis-
covered consumer confusion with Christman’s products
bearing the same mark, and filed a claim for cancellation
of Christman’s registration, claiming priority. Id. The
Board granted summary judgment for Christman, and this
court affirmed. Id. at 1568.
The court noted there was “no evidence to suggest that
the ‘PERSON’S’ mark had acquired any notoriety in this
country at the time of its adoption by Christman” such that
Person’s “had no reputation or goodwill upon which Christ-
man could have intended to trade.” Id. at 1567. And the
court confirmed that “when Christman initiated use of the
mark,” Person’s “had not yet entered U.S. commerce,” “had
no goodwill in the United States[,] and the ‘PERSON’S’
mark had no reputation here.” Id. at 1569–70. Thus, this
court held that reliance by Person’s on its foreign use in
Japan could not support its priority claim because foreign
Lanham Act changed all this.”); id. § 26:52 (“Many cases of
infringements of federally unregistered marks are asserted
in federal court under Lanham Act § 43(a). In such cases,
territorial rights should be determined by reference to fed-
eral common law. Federal common law on territorial rights
is undoubtedly the rule of the Tea Rose-Rectanus cases and
their progeny.”).
Case: 21-2209 Document: 34 Page: 13 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 13
use had “no effect on U.S. commerce and cannot form the
basis for a holding that [Person’s] has priority here.” Id. 6
II
The principle that trademark rights are geographically
limited does not govern here. Coca-Cola does not claim to
have U.S. trademark rights to the THUMS UP or LIMCA
brands. Rather it argues that § 14(3), like § 43(a) of the
Lanham Act (at issue in Lexmark), is not limited to the pro-
tection of trademark rights. In this respect, we agree with
Coca-Cola.
In Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23, 28–29 (2003), the Supreme Court explained,
“While much of the Lanham Act addresses the registration,
use, and infringement of trademarks and related marks,
§ 43(a), 15 U.S.C. § 1125(a) is one of the few provisions that
goes beyond trademark protection.” Both § 43(a) and
§ 14(3) extend to the improper use of marks that cause com-
mercial injury even if the injured party is not itself a trade-
mark holder. The Fourth Circuit clarified in Belmora that
both § 43(a) and § 14(3) extend beyond trademark protec-
tion, as the “the plain language of § 43(a) does not require
that a plaintiff possess or have used a trademark in U.S.
commerce as an element of the cause of action.” 819 F.3d
at 706. In this respect, the court noted the similar basis
and interests of § 14(3) and § 43(a) claims: “To determine if
6 In Empresa Cubana Del Tabaco v. General Cigar
Co., 753 F.3d 1270, 1275 (Fed. Cir. 2014), we held a foreign
brand (Cubatabaco) had “a legitimate commercial interest
in the COHIBA mark” but only because Cubatabaco’s
pending application had “been refused registration based
on a likelihood of confusion with a registered mark,” and
that was “sufficient to show that the petitioner seeking to
cancel the registered mark is the type of party Congress
authorized under 15 U.S.C. § 1064.”
Case: 21-2209 Document: 34 Page: 14 Filed: 06/29/2022
14 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
a petitioner falls within the protected zone of interests, we
note that § 14(3) pertains to the same conduct targeted by
§ 43(a) false association actions—using marks so as to mis-
represent the source of goods.” Id. at 714–15.
It remains unclear the extent to which the territoriality
principle applies to aspects of the Lanham Act in § 14(3)
and § 43(a) that are not concerned with the protection of
trademark rights. While Belmora suggests that the Lan-
ham Act applies to foreign commerce and, accordingly, that
commercial injury to a company’s sales in a foreign country
qualifies as damage for purposes of § 14(3) and § 43(a), this
view has been much criticized in the academic literature. 7
Apart from Belmora, there is limited authority that di-
rectly addresses whether claims under § 14(3) or § 43(a)
may be based on lost sales or reputational injury occurring
7 See McCarthy on Trademarks § 29:1 (stating the
“Belmora decision ignored the territoriality principle”);
Connie D.P. Nichols, Article 6bis of the Paris Convention
for Well-Known Marks: Does it Require Use or a Likelihood
of Consumer Confusion for Protection? Did Belmora LLC v.
Bayer Consumer Care AG. Resolve This Question?, 30 Ind.
Int’l & Comp. L. Rev. 235, 248 (2020) (stating the Belmora
decision “starkly breaks from the principles of territoriality
and unfair competition cases”); Christine H. Farley, No
Trademark, No Problem, 23 B.U. J. Sci. & Tech. L. 304, 313
(2017) (stating the Belmora decision “failed to acknowledge
that its ruling challenged fundamental principles of trade-
mark law”); Mark P. McKenna & Shelby Niemann, 2016
Trademark Year in Review, 92 Notre Dame L. Rev. Online
112, 122 (2016) (stating the Belmora decision “is especially
notable . . . [in] its failure to recognize the implications of
its decision for the territoriality of trademark rights”).
Case: 21-2209 Document: 34 Page: 15 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 15
solely outside the United States. 8 In any event, the extent
to which the Lanham Act applies to activities outside the
United States is not a question implicated here. Coca-Cola
bases its claim entirely on alleged injury occurring in the
United States.
In this respect, Meenaxi contends that Coca-Cola lacks
a statutory cause of action under Lexmark because, as a
result of Meenaxi’s activity, (1) there were no lost sales in
the United States and (2) there was no reputational injury
in the United States.
A
As to lost sales, we agree with Meenaxi. Coca-Cola
does not identify any lost sales in the United States but
instead relies on testimony from Mr. Dasani that “THUMS
UP-branded and LIMCA-branded products are resold in
8 See Punchgini, 428 F.3d at 171 (considering argu-
ment that defendant’s Bukhara Grill in New York would
cause reputational injury by discouraging disappointed
customers from visiting the plaintiff’s Bukhara restau-
rants in India); Int’l Bancorp, LLC v. Societe des Bains de
Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359,
366 (4th Cir. 2003) (finding that the unregistered “Casino
de Monte Carlo” service mark was “used in commerce be-
cause United States citizens purchase casino services sold
[in Monaco] by a subject of a foreign nation,” that those
“purchases constitute trade with a foreign nation that Con-
gress may regulate under the Commerce Clause,” and that
the casino’s promotions in the United States use the mark
in “advertising of [these] services . . . rendered in com-
merce”); Havana Club Holding, S.A. v. Galleon S.A., 203
F.3d 116, 131–32 (2d Cir. 2000) (addressing argument that
commercial injury was based on lost sales in Cuba but up-
holding finding that evidence did not demonstrate the like-
lihood of such lost sales).
Case: 21-2209 Document: 34 Page: 16 Filed: 06/29/2022
16 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
Indian grocery stores around the world, including in the
U.S.,” and from Mr. Pittman that third-parties import “au-
thentic Thums Up and Limca beverage products from coun-
tries outside of the U.S. for subsequent resale in the U.S.”
J.A. 28 (first quoting J.A. 3055 ¶ 39; and then quoting
J.A. 3590 ¶ 13). As additional support, Coca-Cola provided
evidence showing one instance of importation, websites of
past and present sellers of the Thums Up and Limca bev-
erages, and availability on Amazon. But these sales gen-
erated by third parties who are not authorized U.S.
distributors do nothing to establish lost sales by Coca-Cola
in the United States. 9
In terms of Coca-Cola’s own activity, Coca-Cola pre-
sented no evidence that it sells the Limca soda in the
United States. 10 As to Thums Up, Coca-Cola established
only that Thums Up cola is “available for purchase as an
individual beverage or as part of a tasting tray” at “World
of Coca-Cola” and “Coca-Cola Store” locations in Atlanta
and Orlando. J.A. 3591 ¶ 18. Coca-Cola did not quantify
the amount of Thums Up cola it distributes at World of
Coca-Cola and does not claim that it is more than de mini-
mis. Nor did Coca-Cola show that it has lost any U.S. sales
as a result of Meenaxi’s activities. Coca-Cola did present
statements regarding future plans to market Thums Up
9 Although affidavits by Mr. Dasani and Mr. Pittman
claim that these distributors or importers are “authorized,”
J.A. 3055 ¶ 40; J.A. 3593 ¶ 31, the evidence that Coca-Cola
relies on is a distribution agreement with M/S Jay Ambe
Agencies that by its own terms allows distribution “only in
and throughout the ‘Primary Service Area’” explicitly de-
fined as “Vashi, Navi Mumbai,” J.A. 3521, 3535.
10 The Board referenced Mr. Pittman’s affidavit not-
ing that imports of Coca-Cola’s Thums Up and Limca bev-
erages were blocked by U.S. Customs. But these imports
were by third parties, not by Coca-Cola itself.
Case: 21-2209 Document: 34 Page: 17 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 17
and Limca beverages more broadly in the United States,
but nebulous future plans for U.S. sales cannot be the basis
for a Lanham Act claim. Compare Brooklyn Brewery, 17
F.4th at 139 (finding that “hypothetical future possible in-
jury is insufficient to establish Article III standing” where
the plaintiff “did not provide any details of a concrete plan
for . . . expansion of its business”); JTEKT Corp. v. GKN
Auto. Ltd., 898 F.3d 1217, 1221 (Fed. Cir. 2018) (‘‘[W]here
the party relies on potential infringement liability as a ba-
sis for injury in fact, but is not currently engaging in in-
fringing activity, it must establish that it has concrete
plans for future activity that creates a substantial risk of
future infringement or [would] likely cause the patentee to
assert a claim of infringement.’’). Coca-Cola did not estab-
lish damage from lost sales.
B
This leads us to the question of reputational injury.
Courts disagree regarding whether famous marks are en-
titled to protection from reputational injury in the United
States even though the marks were used solely outside of
this country. See Grupo Gigante S.A. de C.V. v. Dallo &
Co., 391 F.3d 1088, 1094 (9th Cir. 2004) (recognizing excep-
tion to territoriality principle for famous marks); see also
Person’s, 900 F.2d at 1570 (recognizing some case law re-
lated to a famous-mark exception). But see Punchgini, 482
F.3d at 163–65 (rejecting exception for famous marks). But
Coca-Cola does not rely on a famous-marks exception. It
maintains only that it experienced reputational injury in
the United States because (1) members of the Indian-
American community in the United States were aware of
the THUMS UP and LIMCA marks and (2) Meenaxi traded
on Coca-Cola’s goodwill with Indian-American consumers
in those marks by misleading them into thinking that
Meenaxi’s beverages were the same as those sold by Coca-
Cola in India. The Board agreed: “The evidentiary record
. . . also shows that the reputation of [Coca-Cola’s] THUMS
UP and LIMCA beverages would extend to the United
Case: 21-2209 Document: 34 Page: 18 Filed: 06/29/2022
18 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
States, at least among the significant population of Indian-
American consumers.” J.A. 26.
Coca-Cola failed to explain how its supposed reputa-
tional injury adversely affected its commercial interests
other than to speculate that a consumer dissatisfied with
Meenaxi’s products might blame Coca-Cola. The Supreme
Court in Lexmark explained that a cognizable “economic
and reputational injury” generally “occurs when deception
of consumers causes them to withhold trade from the plain-
tiff.” 572 U.S. at 133. The authorities on which Lexmark
relied (authorities contemporaneous with the passage of
the Lanham Act), see id. at 131, explained that the tort of
passing off “imposes liability upon one who diverts custom
from another to himself by fraudulent misrepresentation”
and thus “divert[s] to the actor the benefit of a reputation
associated with the other.” Restatement (First) of Torts ch.
35, intro. note (1938); see also Edward S. Rogers, Book Re-
view: The Law of Unfair Competition and Trade Marks, 39
Yale L. J. 297, 299 (1929) (“The right of a business man is
to have full benefit of the reputation he has established, a
part of which is the trade that, without interference, would
normally flow to him . . . .”). As we have discussed earlier,
Coca-Cola alleges no lost U.S. sales as a result of the
claimed reputational injury in the Indian-American com-
munity.
We need not decide what other types of U.S. commer-
cial injury to reputation among U.S. consumers would be
sufficient to establish a Lanham Act cause of action be-
cause substantial evidence does not support the Board’s
finding that the Indian-American community is aware of
the THUMS UP and LIMCA marks.
Case: 21-2209 Document: 34 Page: 19 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 19
The Board’s findings are primarily related to Coca-
Cola’s activity and reputation in India, 11 but that does not
establish reputation within the Indian-American commu-
nity in the United States. Here, for U.S. reputational in-
jury, Coca-Cola relies on the Board’s finding that the
reputation of the THUMS UP and LIMCA marks “would
extend to the United States, at least among the significant
population of Indian-American consumers.” J.A. 26. Sub-
stantial evidence does not support that finding.
The Board’s conclusion that reputation of the THUMS
UP and LIMCA marks would extend to the millions of In-
dian Americans appears to rest in part on an assumption
that Indian Americans would necessarily be aware of the
marks’ reputations in India. There is no basis to assume
that an American of Indian descent is aware of brands in
India. The Board did not consider what portion of Indian
Americans had spent time in India, i.e., how many had
11 For example, the Board noted that the Indian High
Court of Delhi had determined that both the THUMS UP
and LIMCA marks were “well known” in India. The Board
also noted that Coca-Cola “commands a substantial market
share for such goods in India” and that it “sells and pro-
motes THUMS UP and LIMCA sodas outside of India, in
numerous other countries.” J.A. 26. And Meenaxi admit-
ted in response to an interrogatory that it was aware that
“THUMS UP was used in India by an Indian company” in
the 1970s. J.A. 2508. Meenaxi founder Kaushik Gandhi
and president Meenaxi Gandhi admitted they were aware
of the Thums Up and Limca beverages in India. Meenaxi’s
corporate witness testified that Meenaxi was aware of a
customer commenting that a “mark Meenaxi used for its
own Thums Up jeera masala [beverage], is a mark they had
seen in use in India.” J.A. 2861. But this evidence demon-
strates only the reputation of the marks in India and other
foreign countries.
Case: 21-2209 Document: 34 Page: 20 Filed: 06/29/2022
20 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
visited India or lived in India. The Board’s conclusion re-
lies at least in part on stereotyped speculation.
The limited U.S. sales of Coca-Cola’s Indian product by
third parties are not sufficient to establish that the product
had a reputation in the United States, nor did the Board
find that they did. Coca-Cola has not presented any survey
evidence showing awareness of either mark in the United
States. Instead, to show U.S. reputation, Coca-Cola sub-
mitted affidavits by Mr. Dasani and Mr. Pittman stating
their “understanding” that the THUMS UP and LIMCA
branded beverages were “extremely popular and well-re-
ceived by consumers in the U.S.” J.A. 3055 ¶ 39; J.A. 3592
¶ 21. But these statements of understanding are made
without support. This would be insufficient under the Fed-
eral Rules of Evidence, Rule 602 (“A witness may testify to
a matter only if evidence is introduced sufficient to support
a finding that the witness has personal knowledge of the
matter.”), and the Federal Rules of Evidence generally ap-
ply to Board proceedings, 37 C.F.R. § 42.62(a). The failure
to provide any basis for their statements of understanding
deprives this testimony of evidentiary weight. 12
12 For summary judgment, the Federal Rules of Civil
Procedure state, “An affidavit or declaration used to sup-
port or oppose a motion must be made on personal
knowledge, set out facts that would be admissible in evi-
dence, and show that the affiant or declarant is competent
to testify on the matters stated.” Fed. R. Civ. P. 56(c)(4)
(emphasis added). In this context also, statements of belief
and understanding have been found insufficient. See Pace
v. Capobianco, 283 F.3d 1275, 1278–79 (11th Cir. 2002)
(“[A]n affidavit stating only that the affiant ‘believes’ a cer-
tain fact exists is insufficient to . . . creat[e] a genuine issue
of fact about the existence of that certain fact.”); Doff v.
Brunswick Corp., 372 F.2d 801, 804 n.1 (9th Cir. 1966)
Case: 21-2209 Document: 34 Page: 21 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 21
At oral argument, counsel for Coca-Cola admitted that
Meenaxi’s admission of a single instance of U.S. consumer
awareness was the only evidence in the record showing
U.S. consumer awareness of Coca-Cola’s THUMS UP
mark. That evidence consists of an admission by Meenaxi’s
corporate witness that Meenaxi had received a U.S. cus-
tomer comment recognizing the THUMS UP mark, but not
the LIMCA mark, as one he or she had seen in India. 13
This is plainly insufficient. In a related context in Person’s,
the awareness of a U.S. citizen as a result of travel to Japan
was not sufficient to establish awareness by U.S. consum-
ers generally. 900 F.2d at 1567, 1569–70.
Finally, the Board relied on the evidence that Meenaxi
copied Coca-Cola’s marks and slogan for products in the
(rejecting affidavit that stated affiant’s “understanding”
because it did “not contain ‘specific facts’ based on ‘personal
knowledge’” (quoting Fed. R. Civ. P. 56(e)).
13 The testimony is as follows:
Q. Okay. Miss Sundarraj, has Meenaxi Enterprise
ever had any customer comment that the mark --
that any mark Meenaxi used for its own Thums Up
jeera masala lemon masala, is a mark they had
seen in use in India?
MR. RANNELLS: Objection as to form.
A. Yes.
Q. Are you aware of any customer ever comment-
ing to Meenaxi Enterprise that the mark, any mark
Meenaxi used for its Limca lemon masala soda,
looked similar to the mark that the customer had
seen in India?
A. No.
J.A. 2861.
Case: 21-2209 Document: 34 Page: 22 Filed: 06/29/2022
22 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
U.S. as evidence of awareness of the marks by U.S. con-
sumers. On appeal, Coca-Cola does not rely on this finding
to establish a U.S. reputation. Nor could it. The copying
of a U.S. mark has been held to support a finding of second-
ary meaning, Converse, Inc. v. ITC, 909 F.3d 1110, 1120
(Fed. Cir. 2018), or likelihood of confusion, Perfect Fit In-
dus., Inc. v. Acme Quilting Co., 618 F.2d 950, 954 (2d Cir.
1980), in the United States. But Coca-Cola has cited no
cases holding that copying of a foreign mark is evidence of
U.S. reputation, and our decision in Person’s held the con-
trary. 900 F.2d at 1569–70.
We hold that substantial evidence does not support the
Board’s finding that the reputations of Coca-Cola’s
THUMS UP and LIMCA marks extend to the United
States. Without such evidence, Coca-Cola has not estab-
lished reputational injury in the United States, or a cause
of action under § 14(3) of the Lanham Act.
CONCLUSION
The Board’s decision cancelling the ’597 Registration
and the ’598 Registration cannot stand because Coca-Cola
has not established that it has a cause of action under
§ 14(3) of the Lanham Act.
REVERSED
COSTS
Costs to Meenaxi.
Case: 21-2209 Document: 34 Page: 23 Filed: 06/29/2022
United States Court of Appeals
for the Federal Circuit
______________________
MEENAXI ENTERPRISE, INC.,
Appellant
v.
COCA-COLA COMPANY,
Appellee
______________________
2021-2209
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
92063353, 92064398.
______________________
REYNA, Circuit Judge, concurring.
I concur with the majority’s decision to reverse the
Trademark Trial and Appeal Board’s cancellation of U.S.
Trademark Registration Nos. 4,205,597 and 4,205,598. I
agree that Coca-Cola failed to establish statutory standing
to bring its petition for cancellation under § 14(3) of the
Lanham Act. I also agree with my colleagues that the
Board’s findings regarding the recognition of Coca-Cola’s
Indian trademarks among U.S. consumers are unsup-
ported by substantial evidence, though I believe that issue
was waived by Coca-Cola.
I write separately to express my belief that this case is
governed by the territoriality principle. The majority bases
its decision exclusively on two factual inquiries—
Case: 21-2209 Document: 34 Page: 24 Filed: 06/29/2022
2 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
(1) whether Coca-Cola proved lost sales in the United
States, and (2) whether Coca-Cola proved reputational in-
jury among U.S. consumers. In my view, these inquiries
are directly reflective of the territoriality principle and the
well-known mark exception.
I
I agree that Coca-Cola failed to establish use of its In-
dian trademarks in the United States. See Maj. Op. 16
(holding that Coca-Cola failed to establish statutory stand-
ing because it “presented no evidence that it sells the Limca
soda in the United States” and “did not quantify the
amount of Thums Up cola it distributes [in the United
States] and does not claim that it is more than de mini-
mis”). I therefore conclude that, under the territoriality
principle, Coca-Cola failed to show the requisite damage to
establish statutory standing to bring its petition.
“The concept of territoriality is basic to trademark law;
trademark rights exist in each country solely according to
that country’s statutory scheme.” Person’s Co., Ltd. v.
Christman, 900 F.2d 1565, 1568–69 (Fed. Cir. 1990) (citing
Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki
Kaisha, 754 F.2d 591, 599 (5th Cir. 1985); Ingenohl v. Wal-
ter E. Olsen & Co., 273 U.S. 541, 544 (1927)); see also In re
Bayer Aktiengesellschaft, 488 F.3d 960, 969 (Fed. Cir.
2007) (“Evidence of registration in other countries is not
legally or factually relevant to potential customer percep-
tion of Bayer’s analgesic goods in the United States.”). This
means that “priority of trademark rights in the United
States depends solely upon priority of use in the United
States, not on priority of use anywhere in the world” be-
cause “[e]arlier use in another country usually just does not
count.” Grupo Gigante SA De CV v. Dallo & Co., Inc.,
391 F.3d 1088, 1093 (9th Cir. 2004) (citations omitted).
The territoriality principle reflects the limits of Con-
gress’s constitutional lawmaking authority to enact the
Lanham Act—here, the Commerce Clause. See Person’s,
Case: 21-2209 Document: 34 Page: 25 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 3
900 F.2d at 1568 (“No specific Constitutional language
gives Congress power to regulate trademarks, so the power
of the federal government to provide for trademark regis-
tration comes only under its commerce power.”). In Per-
son’s, we recognized that foreign use of a Japanese
trademark “has no effect on U.S. commerce and cannot
form the basis for a holding that [the foreign producer] has
priority here” in the United States. Id. Thus, we concluded
in Person’s that the owner of a foreign trademark had no
claim for priority against a copycat junior user if the for-
eign producer was not the first to use the mark in the
United States. Id. at 1571–72. This principle extends to
all cancellation provisions in the Lanham Act, which nec-
essarily implicate Congress’ authority to govern the regis-
tration of U.S. trademarks.
Under § 14 of the Lanham Act, “any person who be-
lieves that he is or will be damaged . . . by the registration
of a mark” may file a petition for cancellation subject to the
filing deadlines of § 14(1)–(6). 15 U.S.C. § 1064 (emphasis
added). Relevant here, § 14(3) provides that a petition may
be filed “[a]t any time if . . . the registered mark is being
used by . . . 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 injury require-
ment for establishing statutory standing to bring a cancel-
lation under § 14(3)—belief that one is or will be
damaged—is not subject to a different territoriality princi-
ple than the rest of § 14. Rather, our precedent and funda-
mental principles of constitutional law compel the
conclusion that damage to a foreign trademark right (i.e.,
damage to the commercial goodwill associated with foreign
use of a mark) cannot constitute “damage[]” for purposes of
15 U.S.C. § 1064, even though it may be a cognizable in-
jury-in-fact and even if the petition is brought under sub-
section (3). See Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 131–32 (2014) (explaining
that not every cognizable injury-in-fact results in statutory
Case: 21-2209 Document: 34 Page: 26 Filed: 06/29/2022
4 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
standing under the Lanham Act). As a default rule, the
Lanham Act does not reach so far as to vindicate that ex-
traterritorial injury.
On that basis, I concur with the majority’s conclusion
that Coca-Cola failed to establish statutory standing to
bring its petition for cancellation. As the majority acknowl-
edges, Coca-Cola failed to establish any damage to goodwill
associated with its use of the marks in U.S. commerce. And
to the extent Coca-Cola relies on damage to its foreign
trademark rights to establish statutory standing, the terri-
toriality principle mandates that such an injury does not
fall within the “zone of interests” that Congress intended
to protect by enacting § 14 of the Lanham Act.
II
I also agree with the majority’s conclusion that Coca-
Cola failed to show statutory standing because it failed to
prove damage to its reputation among U.S. consumers. I
note, however, that this issue goes to the application of the
“well-known mark” exception to the territoriality rule—an
issue that, as I noted above, was waived by Coca-Cola.
There is a distinction in the case law regarding how the
territoriality principle limits the reach of the Lanham Act,
depending on where the parties are situated. For instance,
when a domestic party seeks to assert rights against activ-
ity occurring abroad, courts may apply the Lanham Act ex-
traterritorially if the accused activity substantially affects
U.S. commerce. See, e.g., Steele v. Bulova Watch Co.,
334 U.S. 280 (1952); Wells Fargo & Co. v. Wells Fargo Exp.
Co., 556 F.2d 406 (9th Cir. 1977); Sterling Drug, Inc.
v. Bayer AG, 14 F.3d 733 (2d Cir. 1994); McBee v. Delica
Co., Ltd., 417 F.3d 107 (1st Cir. 2005). But when a foreign
party seeks to assert foreign rights against activity in the
United States, as is the case here, the territoriality
Case: 21-2209 Document: 34 Page: 27 Filed: 06/29/2022
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY 5
principle precludes recovery via the Lanham Act for rea-
sons already discussed. 1 See Person’s, 900 F.2d at 1568–
69.
Because the presumption against extraterritoriality
can sometimes lead to seemingly harsh or unfair results,
the Ninth Circuit adopted an exception to the rule for for-
eign marks that are well-known among U.S. consumers.
See Grupo Gigante, 391 F.3d at 1094. The majority cor-
rectly notes that not every court accepts the well-known
mark exception to the presumption against extraterritori-
ality. See ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 163–65
(2d Cir. 2007). It remains an open question whether such
an exception could apply in this circuit, but the present
facts are not unlike the facts from Grupo Gigante.
In Grupo Gigante, a U.S. producer sold copycat prod-
ucts near the U.S.-Mexico border using a well-known Mex-
ican brand. 391 F.3d at 1091–92. Because Mexican
nationals living on the U.S. side of the border were likely
to think the knock-off products were genuine products from
Mexico, the Ninth Circuit permitted the Mexican producer
to assert its Mexican trademark rights against a domestic
user who would have otherwise enjoyed priority in the
United States under the territoriality principle. Id.
at 1094. The Ninth Circuit explained:
[T]here is a famous mark exception to the territori-
ality principle. While the territoriality principle is
a long-standing and important doctrine within
1 Indeed, even the majority implicitly acknowledges
that the issue of territoriality permeates its second ques-
tion of reputational injury. See Maj. Op. 18 (“As we have
discussed earlier, Coca-Cola alleges no lost U.S. sales as a
result of the claimed reputational injury in the Indian-
American community.” (emphasis added)).
Case: 21-2209 Document: 34 Page: 28 Filed: 06/29/2022
6 MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
trademark law, it cannot be absolute. An absolute
territoriality rule without a famous-mark excep-
tion would promote consumer confusion and fraud.
Commerce crosses borders. In this nation of immi-
grants, so do people. Trademark is, at its core,
about protecting against consumer confusion and
‘palming off.’ There can be no justification for using
trademark law to fool immigrants into thinking
that they are buying from the store they liked back
home.
Id.
Here, I agree with the majority that the Board’s find-
ings regarding recognition among U.S. consumers are un-
supported by substantial evidence, but I believe the issue
is immaterial because Coca-Cola unambiguously dis-
claimed reliance on the well-known mark exception, which
is essentially the same inquiry. I also note that the major-
ity’s opinion could be reasonably read to imply that Coca-
Cola could have established statutory standing if it proved
that U.S. consumers were aware of its Indian brands. But
if that were the case, I would still reverse because the ter-
ritoriality doctrine governs, and Coca-Cola waived reliance
on the well-known mark exception thereto.