Bayer Can Bring False Association, Ad Claims Over ‘Flanax'

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By Anandashankar Mazumdar

March 24 — Bayer AG doesn't sell pain medicine under the brand name “Flanax” in the U.S. but can still bring false association and false advertising claims against a U.S. company that does, the U.S. Court of Appeals for the Fourth Circuit ruled March 23.

A plaintiff isn't required to hold valid trademark rights in the U.S. to bring those claims under the federal trademark statute, unlike with an infringement claim, the court said. It vacated a lower court's ruling that Bayer didn't have standing in the case.

The appeals court agreed with the Trademark Trial and Appeal board that Bayer can sue over use of the name “Flanax,” which is the name it uses for its naproxen sodium product sold in Mexico. The product is called “Aleve” in the U.S.

Bayer Objects to Use of Its Mexican Brand Name in U.S

Bayer doesn't use the name “Flanax” here but has used it in Mexico since 1976.

Belmora LLC registered “Flanax” with the Patent and Trademark Office and marketed the product to the Mexican-American community.

Bayer sought cancellation of the registration, arguing that Belmora was inappropriately riding on its product's reputation. The marketing, for example, explicitly referred to Flanax being used for “many, many years in Mexico.” Belmora's packaging was also very similar to Mexican Flanax's packaging.

District Court: No Standing to Sue

The TTAB ordered cancellation of the registration under Section 14(3) of the Lanham Trademark Act of 1946, 15 U.S.C. §1064(3) .

Belmora appealed the ruling to the U.S. District Court for the Eastern District of Virginia, which reversed the TTAB.

The court said that Bayer didn't have standing to oppose Belmora's use or registration of “Flanax” in the U.S. because it wasn't using the trademark here .

But the appeals court disagreed, drawing a distinction between trademark infringement claims under the Trademark Act and false association or false advertising claims.

Infringement claims under Section 32 of the Trademark Act, 15 U.S.C. §1114, require a plaintiff to show trademark rights—and use in commerce of a trademark—within the U.S.

But the court said that there is no such requirement for the false association and false advertising claims under Section 43(a) of the Trademark Act, 15 U.S.C. §1125(a).

The court concluded that Bayer could bring its false association and false advertising claims under Section 43(a) and could seek cancellation of the registration under Section 14(3), reversing the district court's ruling and remanding the matter back for further proceedings.

Judge G. Steven Agee wrote the court's ruling, joined by Judges Henry F. Floyd and Stephanie D. Thacker.

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, represented Bayer. Leason Ellis LLP, White Plains, N.Y., represented Belmora.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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