Bayer sells FLANAX brand pain reliever in Mexico.  Virginia-based Belmora adopted and applied to register the FLANAX mark for pain reliever in 2003, prior to any use or applications in the U.S. by Bayer.  4th Circuit, in the first circuit court case to apply Lexmark to 43(a)(1)(A), held that for purposes of 12(b)(6), Bayer could bring an action if it established that it was in the zone of interests of the Lanham Act (in this case, by indicating that it was injured by the misuse of a trademark in U.S. Commerce, even if it itself did not use its trademark in such commerce), and if defendant’s use injured those interests.

On remand: This was going to be a weird case because not only did Bayer not use FLANAX in U.S. Commerce prior to Belmora, it indicated that it was never going to use FLANAX in such commerce, because it used the ALLEVE name in the U.S. for that particular pain reliever (naproxen sodium).  Accordingly, injury would have to occur in Mexican commerce.

Well, we’re not going to see how that plays.  Bayer learned of Belmora’s application in 2004, its use at approximately same time, and of Belmora’s additional alleged unfair competition (false advertising), not later than 2009.  It didn’t bring a civil suit until 2015.  Using either a two year or four year statute under the Lanham Act and/or California state law, Bayer was untimely.

Disclosure: we represent Belmora up through the Fourth Circuit decision.

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