Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 91 PTCJ 561, 01/01/2016. Copy-
right 姝2016 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
The authors analyze a case now before the Fourth Circuit on the scope of protection un-
der the Lanham Act for a company that used a drug trademark only in a foreign country but
whose mark was copied by a competitor selling the same drug in the U.S.
Belmora v. Bayer: Does the Lanham Act Protect An Owner of a Well-Known
Foreign Mark From Intentional Misuse of the Mark in the U.S.?
BYVINITA FERRERA,BOHAN AND BECKY A.
WHITFIELD InBelmora LLC v. Bayer Consumer Care AG,
1
the
U.S. Court of Appeals for the Fourth Circuit is faced
with novel issues about the reach of the Lanham Act.
The case arose from Bayer’s filing of a petition to can-
cel Belmora’s registered trademark FLANAX on the
grounds that Belmora’s use of that mark deceives con-
sumers into believing that its FLANAX pain relief prod-
uct is from the same source as the FLANAX product
that Bayer has sold in Mexico for over four decades.
In April 2014, after a trial on the merits, the Trade-
mark Trial and Appeal Board cancelled Belmora’s
trademark registration pursuant to Section 14(3) of the
Lanham Act, which permits cancellation of a registra-
tion if, among other reasons, ‘‘the registered mark is be-
ing used by . . . the registrant so as to misrepresent the
source of the goods . . . [on] which the mark is being
1
Belmora LLC. v. Bayer Consumer Care AG, 84 F. Supp.3d
490, 115 U.S.P.Q.2d 1032 (E.D. Va. 2015) (‘‘District Court De-
cision’’).
Vinita Ferrera is a partner in WilmerHale’s
Boston office and focuses her practice on com-
plex commercial litigation of patent, trade-
mark, trade dress, copyright and trade secret
disputes.
Bo Han is a senior associate in WilmerHale’s
Boston office and focuses her practice on pat-
ent prosecution, counseling and intellectual
property litigation in the biotechnology
and life sciences fields.
Becky A. Whitfield, PhD, is an associate in
WilmerHale’s Boston office focused on U.S.
and foreign patent prosecution, due diligence,
prior art and patentability search, and free-
dom to operate analysis.
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