The International Trademark Association (INTA) has filed an Amicus Brief (here) in support of the petition for writ of certiorari seeking Supreme Court review of the Fourth Circuit's FLANAX decision, Belmora LLC v Bayer Consumer Care AG, et al., 819 F.3d 697 (4th Cir. 2016) (4th Cir. 2016). The appellate court vacated the ruling of the U.S. District Court for the Eastern District of Virginia (here) dismissing Bayer's claims on the ground that it lacked standing, and it remanded the case to the district court for further proceedings.
According to the INTA brief:
The Court should grant Certiorari because this case presents a timely opportunity to provide clarity and guidance on an issue of great importance to trademark owners, namely: can the owner of a foreign trademark establish standing to pursue claims under Sections 14(3) or 43(a) of the Lanham Act against the owner of the same mark in the United States, and if so, under what circumstances may a foreign trademark owner establish such standing?
The INTA brief points out that the circuit courts of appeals have rendered inconsistent and conflicting decisions on the issue. The Ninth Circuit in Grupo Gigante held that a famous mark exception to the territoriality principle exists. However, the Federal Circuit (in Person's) and the Second Circuit (in Punchgini) have invoked the territoriality principle to reject claims by foreign trademark owners. The Fourth Circuit’s FLANAX decision represents a third approach to trademark territoriality in ruling that Lanham Act Sections 14(3) and 43(a) do not require that the plaintiff own a U.S. trademark as a precondition to asserting a claim. Instead, the Fourth Circuit, relying on Lexmark, focused on the defendant’s conduct, asking whether the defendant has caused injury to the plaintiff and ignoring the territoriality principle.