Belmora LLC v. Bayer Consumer Care AG
819 F.3d 697
| 4th Cir. | 2016Background
- BCC (Bayer Consumer Care AG) owns the FLANAX mark and has sold naproxen sodium tablets in Mexico and Latin America since the 1970s; BHC (Bayer HealthCare LLC) is BCC’s U.S. sister company and sells ALEVE in the U.S.; BCC never sold FLANAX in the U.S.
- Belmora LLC began selling FLANAX in the U.S. in 2004 and registered the FLANAX mark in the U.S. in 2005; its packaging and promotional materials closely resembled BCC’s Mexican FLANAX and suggested the products were the same.
- BCC petitioned the TTAB to cancel Belmora’s U.S. registration under Lanham Act § 14(3) (deceptive use); the TTAB canceled Belmora’s registration after finding deliberate misrepresentation of source.
- BCC (and BHC) separately sued Belmora in district court under Lanham Act § 43(a) for false association and false advertising, alleging Belmora’s conduct diverted sales from BCC (including border consumers and Mexican-American purchasers).
- The district court consolidated the matters, reversed the TTAB cancellation, and dismissed the § 43(a) claims, reasoning that Lexmark required the plaintiff to have used the mark in U.S. commerce and that Bayer lacked standing.
- The Fourth Circuit vacated the district court: it held § 43(a) and § 14(3) do not require a plaintiff’s prior use of the mark in U.S. commerce, and Bayer adequately alleged zone-of-interests and proximate-cause injuries under Lexmark to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a § 43(a) plaintiff must have used the mark in U.S. commerce before suing for false association/false advertising | Bayer: § 43(a)’s text requires only that the defendant used a mark in commerce and that any person who believes they are or will be damaged may sue; no plaintiff-use requirement | Belmora: Lexmark and prior precedent require plaintiff have U.S. trademark rights/usage to assert Lanham Act claims | Held: No plaintiff-use prerequisite in § 43(a); district court erred in imposing one |
| Whether Bayer’s § 43(a) claims fall within the statute’s zone of interests (Lexmark) | Bayer: Alleged economic injury to reputation/sales from deception of border and U.S. Hispanic consumers fits § 45 purposes | Belmora: Bayer lacks protectable U.S. interest, so outside zone of interests | Held: Bayer sufficiently alleged injury to commercial reputation or sales; claims fall within zone of interests |
| Whether Bayer adequately pled proximate causation under Lexmark (i.e., economic injury proximately caused by deceptive conduct) | Bayer: Alleged diversion of cross-border and Mexican-American purchases and promotional investments near the border; deception by Belmora plausibly caused withheld trade | Belmora: Any foreign-only interest cannot show proximate U.S. injury; insufficient causal link | Held: Bayer plausibly alleged economic injury proximately caused by Belmora’s deception; pleadings survive dismissal |
| Whether § 14(3) cancellation requires petitioner to have used the mark in U.S. commerce | Bayer: § 14(3) mirrors § 43(a) language and permits any person who believes they will be damaged to petition; no U.S.-use precondition | Belmora/ district court: § 14(3) requires petitioner to have U.S. use/rights; otherwise no standing to cancel a U.S. registration | Held: § 14(3) does not impose a U.S.-use prerequisite; BCC adequately alleged zone-of-interests and proximate-cause injury, so TTAB cancellation should stand pending further proceedings |
Key Cases Cited
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014) (framework: zone of interests and proximate cause govern who may sue under § 43(a))
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (§ 43(a) extends beyond traditional trademark protection)
- Int’l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359 (4th Cir. 2003) (Lanham Act ‘‘commerce’’ includes foreign trade; broad commerce concept)
- Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010) (reverse-passing-off elements and § 43(a) scope)
- Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035 (D.C. Cir. 1989) (false-association relief even where mark may be generic; intent probative of confusion)
- Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111 (1938) (trademark law duties to inform public of source even when mark has generic aspects)