On February 27, 2017, the Supreme Court of the United States denied certiorari in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 737826 (U.S. Feb. 27, 2017) (No. 16-548). The denial leaves in place a holding from the United States Court of Appeals for the Fourth Circuit that a plaintiff who owns a trademark outside of the United States has standing to bring an unfair competition action under Lanham Act Sections 14(3) and 43(a) for the unauthorized use of a foreign brand that the plaintiff never used in the United States. Since the Fourth Circuit's decision stands, and until other circuits address these claims using the Supreme Court's analysis in Lexmark International, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014), foreign trademark owners may be able to plead standing to sue under the Lanham Act without proving ownership or use of a trademark in U.S. commerce, as long as they adequately plead injuries proximately caused by the deceptive conduct.
Background and Procedural History
Bayer has used the trademark "FLANAX" for naproxen sodium pain relievers in Mexico since the 1970s, marketing that same product as "ALEVE" in the United States. Bayer owns a registration in Mexico for FLANAX, but not in the United States. Belmora registered the mark FLANAX in the United States for "orally ingestible tablets of naproxen sodium for use as an analgesic" in 2005. Bayer petitioned for cancellation based on deceptive use of the mark in 2007 at the Trademark Trial and Appeal Board ("TTAB"), and the TTAB granted Bayer's petition to cancel. Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d 1623 (TTAB 2014).
Belmora appealed the cancellation to the U.S. District Court for the Eastern District of Virginia. The district court dismissed Bayer's claims and reversed the TTAB's decision. In particular, the court held that Bayer did not have a protectable interest in the United States and could not have economic loss for a mark it did not use in U.S. commerce; therefore, Bayer's claims were outside the Lanham Act's "zone of interests." Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490 (E.D. Va. 2015). Bayer appealed this decision to the United States Court of Appeals for the Fourth Circuit.
The Fourth Circuit held that the district court erred in requiring Bayer to use the trademark in U.S. commerce, concluding that "the Lanham Act's plain language contains no unstated requirement that [Bayer must] have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim." Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697, 710 (4th Cir. 2016). The court of appeals based this ruling on the Supreme...
