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You May Enforce Your Trademark Right Across Border After All

September 20, 2016
Post by Xiaohong Liu, Ph.D.

Bayer owns and uses the FLANAX trademark in Mexico to sell a pain reliever product. Neither Bayer nor its sister company in the US registered the FLANAX trademark in the US, but rather use another trademark, ALEVE, to sell the same product here. In 2004 Belmora registered FLANAX in the US for sales of a substantially same product.

Bayer successfully cancelled Belmora's trademark in TTAB under §14(3) of the Lanham Act, because of Belmora had used the FLANAX mark "to misrepresent the source of the good … [on] which the mark is used."However, in a later filed civil action with two §43(a) of Lanham Act claims (false associating and false advertising) in the Eastern District of Virginia, the district court dismissed Bayer's claims for lack of standing and reversed the cancellation of the mark, because the owner of a foreign mark that is not registered and never used in the US cannot assert priority right over a mark that is registered and used in the US by another party.

The 4th Circuit Court of Appeal reversed the district court's ruling, in Belmora LLC, v. Bayer Consumer Care AG and Bayer Healthcare LLC, holding that Bayer does have standing under §43(a), (a) because the cause of action under §43(a) does not require that Bayer possess a protectable interest in the mark, instead that the defendant must have "use[d] in commerce"the offending "word, term, name, [or] symbol,"but the plaintiff needs only "believe[] that he or she is or is likely to be damaged by such act."The Court of Appeal emphasized that Bayer's case is an unfair competition case, not a trademark infringement case under §32. The Court of Appeal also held that Bayer is entitled to bring its cancellation claim under §14(3), for the similar reasons.

In a similar dispute involving trademark usage outside the US, the 9th Court of Appeal reversed another district court's decision to dismiss Trader Joe's federal claims for lack of subject matter jurisdiction and its conclusion that the Lanham Act did not apply to the defendant's conduct in Canada.

Belmora LLC v. Bayer Consumer Care AG,4th Circuit Court of Appeals, No. 15-1335, Decided: March 23, 2016.

Trader Joe's Co. v. Michael Norman Hallatt and DBA Pirate Joe's, AKA Transilvania Trading, 9th Circuit Court of Appeals, No. 14-35035, Decided: August 26, 2016.


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