In one of the few appeals court cases addressing the extraterritorial reach of the Lanham Act, the Fourth Circuit has held that a foreign trademark owner who has not used his trademark in the U.S. may pursue a false association, false advertising, and trademark cancellation claim against the owner of the same mark in the United States.
Bayer Consumer Care AG (“BCC”) owns the trademark FLANAX in Mexico and has sold pain relievers there under that mark since the 1970s. BCC’s FLANAX brand is well known in Mexico, but BCC has never marketed or sold its FLANAX products in the United States.
Belmora LLC owns the FLANAX mark for pain relievers in the United States and has used it here since 2004. Belmora’s packaging (left) closely mimicked BCC’s Mexican packaging (right).