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.
`
`

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`2
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`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.
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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.
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`“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
`28 U.S.C. § 1295(a)(4).
`
`jurisdiction under
`
`
`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).
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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.
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`. . . 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)
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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.
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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.”).
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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
`
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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.”).
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`13
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`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
`
`
`In Empresa Cubana Del Tabaco v. General Cigar
`6
`
`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.”
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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”).
`
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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).
`
`

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`Case: 21-2209 Document: 34 Page: 16 Filed: 06/29/2022
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`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.
`
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`Case: 21-2209 Document: 34 Page: 17 Filed: 06/29/2022
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`MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
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`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 [