Finnegan Secures Precedential Trademark Victory for Plumrose Holding Ltd.

FOR IMMEDIATE RELEASE
February 3, 2025

WASHINGTON, DC—Finnegan secured a significant victory at the Trademark Trial and Appeal Board (TTAB) on behalf of client Plumrose Holding Ltd. (Plumrose). In a precedential victory, and after a full trial on the merits, Plumrose proved a claim of misrepresentation of source under Section 14(3) of the Lanham Act.

Plumrose—the owner of the popular and iconic 75-year-old LA MONTSERRATINA brand of BBQ products in Venezuela—sought to protect its trademark from misappropriation after USA Ham LLC filed an application to register the same mark and use it for the same goods in Florida, home to a significant Venezuelan population. To avoid losing  control of its brand and reputation, Plumrose opposed USA Ham’s application. Based on social media evidence of U.S. consumers reaching out to Plumrose to find LA MONTSERRATINA products in the United States, multiple instances of actual consumer confusion, and evidence that USA Ham intentionally copied Plumrose’s trademark, logo, and packaging, the TTAB agreed that Plumrose satisfied the high burden of proof to show that its LA MONTSERRATINA brand was known in the United States, even absent actual sales here.

This ruling sets an important precedent for the protection of foreign trademarks in the U.S. market. The TTAB’s decision clarified whether a trademark owner must have clear and immediate plans to enter the U.S. market to bring a misrepresentation-of-source claim. The TTAB said no. If a trademark owner can establish that its mark has a reputation in the United States and that the unauthorized use and registration of its mark would damage that reputation, plans for commercial expansion into the United States are not required to show damage or entitlement to a statutory cause of action for misrepresentation of source.

The case is Plumrose Holding Ltd. v USA Ham LLC and was handled by Doug (Chip) Rettew and Lisa London.