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.

 

Written by: Susan Neuberger Weller

It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.

As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.

Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.

So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.

 

 

On February 6, the United States District Court for the Eastern District of Virginia reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) holding that Article 6bis of the Paris Convention does not grant trademark rights that are protectable under Section 14(3) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act). Belmora LLC v, Bayer Consumer Care AG and Bayer Healthcare LLC, 1:14-cv-00847-GBL (EDVA Feb. 6, 2015).

Bayer Consumer Care AG filed a petition with the TTAB to cancel Belmora LLC’s U.S. trademark registration for FLANAX for a naproxen sodium based analgesic on grounds that it was confusingly similar to Bayer’s FLANAX brand of naproxen sodium analgesic products.  Ordinarily, a case involving identical marks used on virtually identical products is a slam dunk for the prior user. However,  in this case Bayer owned a Mexican, but not a US, trademark registration for FLANAX, and did not sell any FLANAX branded products in the US. Rather, the Bayer naproxen sodium analgesic product available in the US was sold under the trademark ALEVE. Nevertheless, Bayer claimed that Belmora’s actions in the US were misrepresentative and created confusion among US customers as to the source of the FLANAX products sold in the US. Continue Reading The Court’s Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache

Written By: Susan Neuberger Weller

Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act claims, like those brought by Pom, challenging food and beverage labels regulated by the FDCA. Continue Reading U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Written by: Susan Neuberger Weller

On Monday April 21, Pom Wonderful LLC, the maker of a line of POM WONDERFUL® pomegranate juice products, www.pomwonderful.com, and The Coca-Cola Company, which sells MINUTE MAID® juice products, www.minutemaid.com, battled it out before the U.S. Supreme Court on the issue of whether a private party can bring a claim under  Section 43(a) of the Lanham Act challenging a product label that is regulated under the Food, Drug, and Cosmetic Act. US Supreme Court Case  No. 12-761. In the proceedings below, the Ninth Circuit unanimously affirmed the district court’s grant of partial summary judgment to Coca-Cola ruling that Pom’s Lanham Act claim was barred by FDA regulations to the extent it challenged Coca-Cola’s label on its MINUTE MAID® Pomegranate Blueberry Flavored Blend of 5 Juices beverage product.

Continue Reading Pom Wonderful and Coke in a Juicy Battle at the U.S. Supreme Court