The World in U.S. Courts: Spring 2015 - Intellectual Property (Copyright and Trademark)
Bayer entities sued to cancel a U.S. trademark for FLANAX, owned by Belmora, on grounds that it was confusingly similar to an identical trademark owned by Bayer in Mexico for decades. Bayer claimed that it was losing sales it otherwise would have made to Mexican immigrants into the U.S. who were misled by FLANAX's name and trade dress into thinking that Belmora's FLANAX was the same as the U.S. product ALEVE, which Bayer sells under the FLANAX mark in Mexico. The District Court in Virginia dismissed Bayer's claims, finding that the company lacked standing to sue for either trademark infringement or false advertising under the Lanham Act.
The case involved many legal claims and tests. The District Court described its work as follows: "The issues in this case can be distilled into a single question: Does the Lanham Act allow the owner of a foreign [non-U.S.] mark that is not registered in the United States and further has never used the mark in United States commerce to assert priority rights over a mark that is registered in the United States by another party and used in United States commerce? The answer is no."
In reaching this conclusion, the District Court relied upon, and explained, the 2014 Lexmark decision of the U.S. Supreme Court, which held that a plaintiff has standing to sue under the Lanham Act where two conditions are met: The plaintiff's interests are within the "zone of interests" protected by the statute, and the plaintiff can allege economic or reputational injury flowing directly from the alleged violation. The District Court concluded that the Lanham Act's "zone of interests" did not embrace Bayer's interest as a holder of a non-U.S. trademark that had not used its mark in U.S. commerce. It concluded that Belmora's conduct similarly did not injure an economic interest that the Lanham Act was intended to protect.