Belmora Takes Its FLANAX Headache to the U.S. Supreme Court

Well, a lot has happened since we last reported on the District Court's decision in the FLANAX trademark dispute.  As you may recall, the Trademark Trial and Appeal Board granted Bayer's Petition and cancelled the FLANAX registration although Bayer, a German company, did not use the mark FLANAX in the US. The U.S. District Court for the Eastern District of Virginia dismissed Bayer's  subsequent Complaint and reversed the TTAB, finding that Bayer had no standing to challenge the FLANAX mark under the Lanham Act since it had no rights in the mark in the US. Bayer appealed this to the Fourth Circuit which then reversed the District Court. The Fourth Circuit concluded that Bayer did have the right under Section 43(a) of the Lanham Act to assert claims for false association and false advertising and to pursue a cancellation claim under Section 14(3). The Court held that nothing in the Lanham Act or the law mandated that Bayer have used the FLANAX mark in the US "as a condition precedent" to its claims. On October 20, 2016, Belmora, the owner of the US trademark registration for FLANAX, filed with the U.S. Supreme Court a Petition for a Writ of Certiorari seeking resolution of a  split among the circuit courts on the application of territorial provisions to certain trademark claims in the US. The specific question presented to the Court by Belmora is as follows:

"Whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner's use of its U.S. mark."

Bayer can file a brief in opposition within 30 days if it decides to do so.

We will keep you posted on all further developments.

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