USPTO Seeks Leave to Intervene In FLANAX 4th Circuit Appeal

The USPTO has filed a motion for leave to intervene [here] in the pending 4th Circuit appeal from the E.D. Virginia's recent FLANAX decision.  The district court reversed the TTAB by holding that because Bayer never used the mark FLANAX in the United States, it lacked standing to bring a claim under Section 14(3) of the Lanham Act for cancellation of Belmora's FLANAX registration. [TTABlogged here]. The district court also ruled that Article 6 bis of the Paris Convention is not self-executing, and further that its "well-known" mark provision has not been implemented in this country.

According to the USPTO's motion, "intervention is warranted because the district court’s decision in this trademark case raises questions of institutional importance to the Patent and Trademark Office and because it misunderstands the manner in which the Lanham Act implements provisions regarding well-known marks in the Paris Convention"

The Director seeks to exercise her unconditional statutory right to intervene, 15 U.S.C. §1071(b)(2), to vindicate the Patent and Trademark Office’s interest in ensuring the proper application of the Lanham Act to a claim by the owner of a foreign trademark with goodwill among United States consumers that the owner of a domestic mark has misrepresented the source of its goods and has engaged in false association and false advertising. The district court held that such claims could be asserted only by someone with a protectable interest in a mark that has been used in commerce within the United States. That holding is inconsistent with the Lanham Act and fails to appreciate the manner in which that statute implements Paris Convention provisions regarding well-known marks.

Claiming that the PTO Director has interests adverse to both parties to the litigation, it seeks permission to file a separate brief.

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TTABlog note: Caveat: Marty Schwimmer and I represent Belmora in this appeal.

Text Copyright John L. Welch 2015.