Belmora LLC v. Bayer Consumer Care AG

Under the Lanham Act, the owner of a foreign mark that is not registered in the United States and has never been used in United States commerce may not assert priority rights over a mark that is registered and used in the United States.

OPINION (Lee): Belmora, a Virginia LLC, sells over-the-counter pain relief products under the FLANAX brand name, which is trademarked and sold in the United States. Bayer Consumer Care AG (Bayer), a Swiss corporation, has sold analgesics in Mexico under the Mexican-registered trademark FLANAX since the 1970s. Following a complaint filed by Bayer, the Trademark Trial and Appeal Board (TTAB) had ordered cancellation of Belmora's registration for the mark FLANAX under Section 14(3) of the Lanham Act, finding that Belmora had used the mark to misrepresent the source of its naproxen sodium pain reliever "in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico."

The Court dismissed Bayer's Section 43(a) counterclaims because Bayer "fails the zone-of-interests test and fails to meet the proximate cause requirement under Lexmark." Consequently, Bayer lacked standing to sue under Section 43(a). The Court also reviewed the case law and legal commentary on Section 6bis (the well known marks provision) of the Paris Convention and affirmed the TTAB's earlier dismissal of Bayer's claim under Article 6bis. "[T]he Paris Convention is not self-executing and Sections 44(b) and (h) of the Lanham Act ... do not render Article 6bis of the Paris Convention a ground for contesting trademark registration."

The Court reversed the TTAB's holding that Bayer had standing to seek cancellation of Belmora's registration under Section 14(3). Again, the court found that "Bayer's interests do not fall within the zone of interests Congress intended to protect under Section 14(3) and Bayer did not sufficiently plead economic injury or an injury to business reputation proximately caused by Belmora's use of the FLANAX mark." Accordingly, the TTAB's decision canceling the registration of Belmora's FLANAX mark is REVERSED and Belmora's Motion to Dismiss Complaint, Motion to Dismiss Bayer's Counterclaim, and Motion for Judgment on the Pleadings were GRANTED.