Foreign Trademark Owner May Pursue Unfair Competition and Trademark Cancellation Claims Against Confusingly Similar Mark in U.S.

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).

flanax-naproxeno flanax-syntex

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Seventy-Year-Old Converse Trademark Invalidated in Landmark ITC Decision

In one of the most hotly-litigated trademark cases ever decided by the International Trade Commission, Converse’s “midsole” trademark covered by U.S. Registration No. 4398753 has been found invalid. As shown below, Converse’s trademark covered (1) the design of two stripes on the shoe’s midsole, (2) the design of the toe cap, (3) the design of the multi-layered toe bumper featuring diamonds and line patterns, and (4) the relative position of these elements to each other:

Converse Trademark

Converse had sought a general exclusion order barring the importation of shoes bearing the above design, initially naming over 30 respondents. Most respondents settled, but Walmart, Skechers, Highline, and New Balance took the case to trial.

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Healthbox for VC Services Not Confusing to Healthbox for Connected Fitness Products

The U.S. District Court for the District of Delaware recently handed firm client Under Armour a major victory in a trademark infringement and dilution action filed by Chicago-based healthcare consulting firm Healthbox Global Partners, LLC (“HGP”). Healthbox Global Partners, LLC v. Under Armour, Inc., No. 1:16-cv-00146, (D. Del. July 19, 2016).

HGP filed suit alleging trademark infringement, unfair competition, state dilution, and deceptive trade practice claims against Under Armour in March 2016, just two months after Under Armour launched its new connected-fitness offering under the Healthbox Blog ImageHEALTHBOX/UA HEALTHBOX mark. HGP is a VC and consulting firm offering advisory, incubation, and funding for start-ups and existing businesses in the healthcare industry and the owner of a 2013 registration for HEALTHBOX covering such services. Under Armour, on the other hand, is a sports product company targeting athletes and fitness-minded consumers. It uses the Healthbox Blog ImageHEALTHBOX/UA HEALTHBOX mark to identify a box containing a “connected fitness system” with various devices designed to measure aspects of one’s health for sale directly from Under Armour and national retailers, including Best Buy, Dick’s Sporting Goods, and Target.

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