## Facts

- Bayer Consumer Care AG sold naproxen sodium pain relievers under the mark FLANAX in Mexico and other countries since the 1970s and alleged the mark was well-known among Mexican and Mexican-American consumers.
- Belmora LLC obtained a U.S. registration for FLANAX in 2004 and sold naproxen sodium in the United States under that mark.
- Bayer alleged Belmora marketed its U.S. FLANAX to Mexican and Mexican-American consumers using packaging and advertising that suggested continuity or affiliation with Bayer’s longstanding Mexican FLANAX.
- Bayer alleged Belmora made misleading statements implying the U.S. FLANAX was the same as, or connected to, Bayer’s product, diverting sales and harming Bayer’s goodwill.
- Bayer sought (1) cancellation of Belmora’s U.S. registration under Lanham Act § 14(3) for misrepresentation of source and (2) relief under Lanham Act § 43(a) for false association and false advertising.
- The TTAB granted cancellation under § 14(3), finding Belmora used FLANAX to misrepresent source by trading on Bayer’s reputation and goodwill.
- The district court reversed the TTAB and dismissed Bayer’s § 43(a) claims, reasoning Bayer could not sue because it had not used the FLANAX mark in U.S. commerce.
- Bayer and the USPTO appealed.

## Issues

1. Whether Lanham Act § 43(a) requires a plaintiff to have used the mark in U.S. commerce to bring false association or false advertising claims.
2. Whether Bayer plausibly alleged injuries within § 43(a)’s zone of interests and proximately caused by Belmora’s conduct under Lexmark.
3. Whether Lanham Act § 14(3) requires a cancellation petitioner to own or use a U.S. mark when alleging the registrant used the mark to misrepresent the source of goods.

## Decision

- The Fourth Circuit vacated the dismissal of Bayer’s § 43(a) claims, vacated the district court’s reversal of the TTAB cancellation order, and remanded.
- The court held § 43(a) contains no unstated requirement that the plaintiff used a U.S. trademark in U.S. commerce; the Lexmark zone-of-interests and proximate-cause tests govern who may sue.
- The court held Bayer adequately pleaded § 43(a) false association by alleging Belmora’s use of FLANAX in U.S. commerce falsely suggested association with Bayer’s Mexican FLANAX, causing harm to goodwill and diversion of sales.
- The court held Bayer adequately pleaded § 43(a) false advertising based on alleged misleading statements about the product’s history and relationship to the Mexican FLANAX, with resulting economic injury.
- The court held § 14(3) likewise contains no requirement that the cancellation petitioner own or use a U.S. mark, and the district court erred by reading such a limitation into the statute.

## Legal Principles

- Lanham Act § 43(a) does not require the plaintiff to own, register, or use a trademark in U.S. commerce; the statute focuses on the defendant’s deceptive use in commerce.
- A § 43(a) plaintiff must plausibly allege an injury within the statute’s zone of interests and proximately caused by the defendant’s violation, as articulated in Lexmark.
- Harm to reputation and goodwill and diversion of sales resulting from misleading use of a mark in U.S. commerce can satisfy § 43(a)’s zone-of-interests and proximate-cause requirements even when the plaintiff’s mark is foreign.
- Lanham Act § 14(3) permits cancellation of a registration when the mark is used to misrepresent the source of goods, and the provision does not limit who may petition based on U.S. ownership or use.

## Conclusion

The Fourth Circuit reinstated Bayer’s Lanham Act claims and the TTAB cancellation ruling for further proceedings, holding that neither § 43(a) nor § 14(3) imposes a plaintiff-side U.S.-use requirement and that Lexmark supplies the controlling limits on who may sue for unfair competition based on deceptive conduct in U.S. commerce.


Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016)