In its 44-page opinion, the district court distilled the issues in the case, involving not only review of the Board's decision but Bayer's counterclaims under Section 43(a) of the Lanham Act, to one single question:
Does the Lanham Act allow the owner of a foreign mark that is not registered in the United States and further has never used the mark in United States commerce assert priority rights over a mark that is registered in the United States by another party and used in United States commerce? The answer is no.
The court dismissed Bayer's Section 43(a) counterclaims because Bayer "fails the zone-of-interests test and fails to meet the proximate cause requirement under Lexmark." Consequently, it lacks standing to sue under Section 43(a). The court declined to exercise jurisdiction over Bayer's California state law claims for unfair competition and false advertising.
Reviewing the case law and legal commentary on Section 6bis (the well known marks provision) of the Paris Convention, the court affirmed the TTAB's earlier dismissal of Bayer's claim under Article 6bis "because Bayer's claim is implausible as the Paris Convention is not self-executing and Sections 44(b) and (h) of the Lanham Act ... do not render Article 6bis of the Paris Convention a ground for contesting trademark registration."
And finally the court granted Belmora's motion for judgment on the pleadings, reversing the TTAB's holding that Bayer had standing to seek cancellation of Belmora's registration under Section 14(3). Again, the court found that "Bayer's interests do not fall within the zone of interests Congress intended to protect under Section 14(3) and Bayer did not sufficiently plead economic injury or an injury to business reputation proximately caused by Belmora's use of the FLANAX mark."
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TTABlog note: Judge Gerald Bruce Lee is also handling the civil action for review of the TTAB's REDSKINS decision.
Text Copyright John L. Welch 2015.
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