Bayer, the maker of ALEVE brand naproxen sodium pain reliever in the U.S., sells the same product in Mexico under the mark FLANAX. Bayer does use the FLANAX mark in the U.S., and does not have a U.S. trademark application or registration for the mark. Belmora began selling FLANAX products in the U.S. several years after Bayer began selling FLANAX in Mexico, and Belmora obtained a U.S. registration for FLANAX in 2005. Bayer petitioned the Trademark Trial and Appeal Board to cancel Belmora LLC’s U.S. registration for FLANAX on several grounds, but succeeded on the ground that Belmora had misrepresented the source of its product under Section 14(3) of the Trademark Act.
Belmora challenged Bayer’s standing because it does not use the FLANAX mark in the U.S. The Board found that Bayer established standing by showing that it has an interest in protecting its Mexican FLANAX mark, and that if Belmora is using the mark to suggest that its products are associated with Bayer then Bayer loses the ability to control its reputation and suffers damage.
To show misrepresentation of source, Bayer had to establish “blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner.” The Board found the evidence “readily establishes” misrepresentation of source by Belmora.
The Board found sufficient evidence to establish that Bayer’s FLANAX is the top-selling pain reliever in Mexico and that Belmora was aware of Bayer’s use of FLANAX in Mexico when it adopted the mark in the U.S. The Board also found that the owner of Belmora fabricated evidence prior to his deposition and testified untruthfully about that evidence and adoption of the mark.
Further, the Board found that Belmora copied Bayer’s FLANAX logo as used in Mexico as shown on the packaging below:
Click here to view images.
Finally, the Board found that in marketing FLANAX, Belmora “invoked the reputation of [Bayer’s] FLANAX mark” by making statements such as the following from a telemarketing script: “I’m with Belmora LLC, we’re the direct producers of FLANAX in the US. FLANAX is a very well known medical product in the Latino American market, for FLANAX is sold successfully in Mexico, Centre [sic] and South America.”
Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (TTAB April 17, 2014) [precedential].