Battle for Stoli Trademark Can Continue

A New York federal court has allowed Lanham Act claims for the Stolichnaya
trademark to proceed in a long-running case between a Russian state-chartered
company and several international beverage companies. Fed. Treasury
Enter. Sojuzplodoimport v. SPI Spirits Ltd., No. 14-712 (U.S. Dist. Ct., S.D.N.Y.,
order entered August 25, 2014). Federal Treasury Enterprise Sojuzplodoimport
(FTE), owned by the Russian Federation, alleges that it owns the Stolichnaya
trademarks, but SPI Spirits purports to be the private successor to the
state-owned company that owned the trademarks before the Soviet Union
dissolved and several public entities became private companies. The Second
Circuit previously held that FTE lacked standing because it was neither an
assign nor legal representative under the Lanham Act. Since that ruling, the
Russian Federation assigned its rights to the Stolichnaya trademark to FTE,
and the New York federal court has found that the assignment cures FTE’s
previous lack of standing issue. The court found that several of FTE’s claims
are barred by res judicata—including its unfair competition claims and state
trademark claims, which could have been brought earlier but were only just
introduced—but because FTE alleged new facts with its new assignment, the
Lanham Act claims can proceed. Additional information on the Second Circuit
ruling appears in Issue 494 of this Update.

Issue 536