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Section 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a), goes beyond trademark protection. For example, a plaintiff whose mark has become generic — and therefore not protectable — may plead an unfair competition claim against a competitor that uses that generic name and fails adequately to identify itself as distinct from the first organization such that the name causes confusion or a likelihood of confusion. Likewise, in a "reverse passing off" case, the plaintiff need not have used a mark in commerce to bring a § 43(a) action. A reverse-passing-off plaintiff must prove four elements: (1) that the work at issue originated with the plaintiff; (2) that origin of the work was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant's false designation of origin. Thus, the plaintiff in a reverse passing off case must plead and prove only that the work originated with him -- not that he used the work (which may or may not be associated with a mark) in U.S. commerce. The generic mark and reverse passing off cases illustrate that § 43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in United States commerce.
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 ("BHC," and collectively with BCC, "Bayer") contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American 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 appealed those decisions.
Did the Lanham Act permit 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, absent the use of the said mark in U.S. commerce?
The court held that the owner of a foreign trademark was not required to have used the mark in U.S. commerce as a prerequisite for bringing unfair competition claims under the Lanham Act, 15 U.S.C.S. § 1125(a), against a pharmaceutical company that registered and used the same mark in the U.S. The owner sufficiently alleged a § 1125(a) false association claim for purposes of the zone of interests prong by alleging that the company's misleading association with the owner's naproxen sodium pain relievers had caused customers to buy the company's products in the U.S. instead of purchasing the owner's products in Mexico. The owner alleged injuries that were proximately caused by the company's violations of the false association statute. The owner stated a false advertising claim based on the company's implication that its products were the same as consumers purchased in Mexico.