Foreign Mark Owner Who Never Used Mark in the United States Cannot Sue Under the Lanham Act

Author: Morgan E. Smith

The Eastern District of Virginia recently opined on the issue of standing to sue under Sections 14(3) and 43(a) of the Lanham Act and reversed the TTAB’s decision cancelling Belmora’s FLANAX mark. Belmora began using its FLANAX mark in the United States for pain relievers in 2004 and obtained a federal registration in 2005. Bayer had sold similar pain relievers in Mexico under its Mexican-registered FLANAX mark since the 1970s, but had not used the FLANAX mark in the United States. Bayer successfully petitioned to cancel Belmora’s FLANAX registration in April 2014 pursuant to Section 14(3) of the Lanham Act, which prohibits misrepresentation as to source. Bayer then brought suit against Belmora under Section 43(a), which was consolidated with Belmora’s appeal of the TTAB decision.

The court found that Bayer lacked standing to sue under Section 43(a)(1)(A) of the Lanham Act because its interests did not fall within the “zone of interests” Congress intended to protect. While Section 43(a)(1)(A) was designed to protect “qualifying” unregistered marks, even the unregistered mark must be used in commerce in the United States in order to establish standing. Because Bayer had not used its FLANAX mark in United States commerce, it lacked standing to sue for false designation of origin. Alternatively, Bayer’s claim failed because it failed to plead facts showing that Belmora’s acts proximately caused it economic or reputational injury. Without a showing of injury to reputation or sales, Bayer’s Section 43(a)(1)(B) claim also failed.

Using similar logic, the court concluded Bayer also lacked standing under Section 14(3). Even though Section 14(3) does not contain a use requirement on its face, the court determined that, consistent with case law and other Lanham Act provisions like Section 43(a), Section 14(3) requires use of the mark in the United States in order to establish standing.

Bayer also could not petition to cancel Belmora’s FLANAX mark under Article 6bis of the Paris Convention. Article 6bis grants certain protections for “well-known” or “famous” marks that have not been adopted in the United States. Because the Paris Convention is not self-executing and Sections 44(b) and (h) of the Lanham Act do not incorporate Article 6bis into U.S. law, an independent cause of action under Article 6bis does not exist.


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