The Fame of Your Trademark May Not Help if You Don’t Use Your Mark in the U.S.
By: DEAN R. KARAU
May 2009
Take two aspirin and repeat three times: Trademark rights in the U.S. are based on use of the mark in the U.S.
That’s essentially what the Trademark Trial and Appeal Board told the Consumer Care group of pharmaceutical giant Bayer when Bayer tried to rely on the worldwide fame of its FLANAX mark as a basis for attempting to cancel the U.S. trademark registration for FLANAX, owned by Belmora LLC.
Bayer uses and has registered the mark FLANAX in many countries in connection with an orally ingestible tablet of naproxen sodium for use as an analgesic, but not in the U.S. In the U.S., Belmora uses the same mark for the same goods, and owns a trademark registration for the mark.
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Bayer’s FLANAX |
Belmora’s FLANAX |
Bayer, likely looking to enter the U.S. market with its FLANAX product, petitioned to cancel Belmora’s U.S. registration. Bayer based its petition on four grounds, a likelihood of confusion based on its alleged prior use of the mark, fraud, misrepresentation, and violation of the protection granted to famous marks under Article 6bis of the Paris Convention for the Protection of Intellectual Property.
The TTAB dismissed Bayer’s likelihood of confusion claim. While Bayer alleged that a third party used its mark in the U.S. through importation and resale, it did not allege that the product was “manufactured or distributed in the United States by [Bayer] or on its behalf.” That is, Bayer itself was not “using” the mark in the U.S., and it was not licensing its use in the U.S. Because Bayer lacked any “use” in the U.S. which it controlled, the TTAB found that Bayer had no basis for a claim of prior, superior rights.
For the same reason, the TTAB found Bayer’s fraud claim “untenable” because Bayer’s lack of prior use in the U.S. did not give it superior rights sufficient to support the claim.
The TTAB also did not buy into Bayer’s claim under the Paris Convention, an international treaty to which the U.S. is a party. Bayer asserted that, because its mark is a “well-known” mark under the Paris Convention’s provisions regarding such marks, its FLANAX mark was a well-known mark in the U.S. before Belmora filed its application, giving it superior rights in the U.S. But the TTAB said that the Paris Convention’s provisions do not provide a basis for cancelling a registration in the U.S. where Bayer had, in fact, no “use” of its mark. Take another aspirin, Bayer.
Bayer, however, did survive the motion to dismiss its misrepresentation claim. The TTAB said that, while it was not deciding whether Bayer’s use of its mark outside of the U.S. was sufficient to ultimately prevail, it would permit Bayer to argue further that it was entitled to an “extension of existing law.” Bayer could try to establish that by Belmora’s use of its mark in the U.S., Belmora “may be misrepresenting to consumers making purchases in the United States that [Bayer] is the source of [Belmora’s] products, [and that ] the misrepresentation is . . . occurring in the United States.” That is, if Bayer could establish that consumers who are familiar with Bayer’s mark, even though used outside of the U.S., are being harmed, then U.S. trademark law would protect those consumers.
Even though U.S. companies regularly take advantage of the Paris Convention’s provisions regarding well-known marks outside of the U.S., non-U.S. companies cannot use those provisions in the U.S. So if your company wants to enforce trademark rights in the U.S., it needs to use its mark in the U.S.
Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 6, 2009).