Belmora Seeks SCOTUS Review For The Second Time In Its Cross-Border Trademark Battle With Bayer Over FLANAX

• Published date: 18 October 2021
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Freeman Mathis & Gary
• Author: Caitlin M. Tubbesing

Belmora LLC has petitioned for writ of certiorari to the Supreme Court for a second time in a decades-long trademark dispute between Bayer Consumer Care AG (Bayer) and Belmora over their use of the FLANAX mark for over-the-counter pain relievers sold in Mexico and the United States. Should the Supreme Court grant Belmora's petition, it would resolve the current circuit splits on the issues of (i) whether the owner of a foreign trademark can purse claims under the Lanham Act ' 43(a) & 14(3); and (ii) what governs the timeliness of ' 43(a) claims.

Bayer is a Swiss corporation whose Mexican affiliate has sold pain relievers under the FLANAX mark in Latin America since the 1970s. Belmora, is a small Virginia-based pharmaceutical company. Bayer's Mexican FLANAX is a top-selling over-the-counter pain reliever in Mexico known to consumers in the US who are from or spend time in Latin America. Bayer registered the mark in Mexico but does not own an American registration for this mark and does not sell FLANAX to American consumers. Instead, Bayer's sister company Bayer Healthcare LLC sells pain relievers in the United States under the ALEVE name.

With this gap in the market and capitalizing on an economic opportunity, Belmora began selling pain relievers under the FLANAX name to American consumers in 2004 after it petitioned the United States Patent and Trademark Office (PTO) on October 6, 2003 to register the FLANAX mark. The PTO issued registration of the mark on February 1, 2005 despite Bayer filing a competing application on February 24, 2004, which it cancelled. Because Belmora's marketing of FLANAX targeted Hispanic-American consumers, associated the product with Bayer's Mexican FLANAX, and used similar packaging as Bayer's FLANAX, Bayer petitioned the Trademark Trial and Appeal Board ("TTAB") to cancel Belmora's registration as it violated ' 43(a) of the Lanham Act in 2007. After nearly seven years, on April 17, 2014, the TTAB granted Bayer's petition based upon evidence which "readily established blatant misuse of the FLANAX mark by Belmora in a manner calculated to trade in the US on the reputation and goodwill of Bayer's mark created by its use in Mexico." Since Belmora's registration was cancelled by the TTAB, civil litigation ensued and continues today.

In its August 9, 2021 Petition, Belmora is seeking review of two Fourth Circuit decisions and resolution of two specific issues: (1) Whether, in view of the principle of trademark territoriality, the...