Trademark Panel Cancels Mark Despite Lack of U.S. Use

In a precedent-setting case, the Trademark Trial and Appeals Board (TTAB) has rescinded a trademark even though the trademark holder doesn’t use that mark in the United States and has no plans to do so. The case, which can be found here, illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in some cases.

Bayer Consumer Care AG sells a pain-reliever in Mexico under the brand name FLANAX. (It offers the same product in the United States as ALEVE). Belmora LLC described its business in filings as “providing a…menu of OTC remedies for common ailments to U.S. residents of Hispanic background.” Several of those remedies incorporated the word “Flanax” in their names.

In addition, Belmora LLC essentially copied the packaging Bayer uses for Flanax in Mexico, including the type font and color scheme.

Belmora LLC’s contention was that Bayer was not entitled to any trademark relief under the principle that marks are territorial in nature. Bayer essentially argued that this activity should be seen as a violation of its trademark under the “well-known marks” doctrine. On this basis, companies who use marks that are well-established abroad have created similar or competing products in their own nations and used those international marks in marketing and promotion.

The TTAB essentially agreed with Bayer’s contention.

This ruling means, among other things, that owners of famous trademarks outside the United States can argue the misrepresentation of source doctrine in opposing or canceling federal trademark registrations where there is evidence of actual attempts to masquerade as the trademarked goods (a practice known in legal terms as “passing off”).