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Belmora LLC v. Bayer Consumer Care AG

United States Court of Appeals for the Fourth Circuit

October 27, 2015, Argued; March 23, 2016, Decided

No. 15-1335

Opinion

 [*701]  AGEE, Circuit Judge:

In this unfair competition case, we consider whether the Lanham Act permits the owner of a foreign trademark and its sister company to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG ("BCC") owns the trademark "FLANAX" in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico (and other parts of Latin America) since the 1970s. Belmora LLC owns the FLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen sodium pain relievers. BCC and its U.S. sister company Bayer HealthCare LLC [**3]  ("BHC," and collectively with BCC, "Bayer") contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American  [*702]  consumers into thinking they were purchasing BCC's product.

BCC successfully petitioned the U.S. Trademark Trial and Appeal Board ("TTAB") to cancel Belmora's registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB's decision to the district court. In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, 15 U.S.C. § 1125, and in conjunction with BHC, a claim for false advertising. After the two cases were consolidated, the district court reversed the TTAB's cancellation order and dismissed the false association and false advertising claims.

Bayer appeals those decisions. For the reasons outlined below, we vacate the judgment of the district court and remand this case for further proceedings consistent with this opinion.

I. Background

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819 F.3d 697 *; 2016 U.S. App. LEXIS 5380 **; 2016 WL 1135518

BELMORA LLC, Plaintiff - Appellee, v. BAYER CONSUMER CARE AG, a Swiss corporation; BAYER HEALTHCARE LLC, a Delaware Limited Liability Company, Defendants - Consolidated Plaintiffs - Appellants, v. BELMORA LLC, a Virginia Limited Liability Company; JAMIE BELCASTRO, an individual; DOES, 1-10, inclusive, Consolidated Defendants - Appellees, and MICHELLE K. LEE, Undersecretary for Intellectual Property and Director of the United States Patent and Trademark Office (Director), Intervenor.AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION, Amicus Curiae.

Subsequent History: US Supreme Court certiorari denied by Belmora LLC v. Bayer Consumer Care AG, 137 S. Ct. 1202, 197 L. Ed. 2d 246, 2017 U.S. LEXIS 1481, 2017 WL 737826 (U.S., Feb. 27, 2017)

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. (1:14-cv-00847-GBL-JFA). Gerald Bruce Lee, District Judge.

Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490, 2015 U.S. Dist. LEXIS 17481 (E.D. Va., Feb. 6, 2015)

Disposition: VACATED AND REMANDED.

CORE TERMS

Lanham Act, commerce, trademark, cancellation, false advertising, district court, unfair competition, registration, deceptive, zone, cause of action, misleading, consumers, misrepresent, brand, damaged, cases, marks, sales, registered, reputation, infringement, advertising, border, pled, distributors, proximately, packaging, believes, naproxen

Civil Procedure, Appeals, Standards of Review, De Novo Review, Judgments, Pretrial Judgments, Judgment on Pleadings, Defenses, Demurrers & Objections, Motions to Dismiss, Failure to State Claim, Business & Corporate Compliance, Unfair Competition, Federal Unfair Competition Law, False Advertising, False Designation of Origin, Lanham Act, Scope, False Advertising, Elements of False Advertising, False Designation of Origin, Elements of False Designation of Origin, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Trademark Law, Trademark Protection, Lanham Act, Governments, Legislation, Statutory Remedies & Rights, Trademark Law, Standing, Constitutional Law, Congressional Duties & Powers, Commerce Clause, Interpretation, Courts, Judicial Precedent, Reverse Palming Off, Particular Subject Matter, Names, Generic Names, Likelihood of Confusion, Factors for Determining Confusion, Intent of Defendant to Confuse, Palming Off, Remedies, US Trademark Trial & Appeal Board Proceedings, Cancellations, Grounds, Cancellations