# Belmora v. Bayer: A Foreign Mark Owner With No U.S. Use Can Still Sue Under §43(a)

> The Fourth Circuit's FLANAX decision held that a Mexican trademark owner who never used its mark in U.S. commerce may nonetheless pursue Lanham Act unfair-competition and false-advertising claims, unsettling the conventional assumption that U.S. use is the price of admission.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/belmora-v-bayer-flanax-foreign-mark-standing/


*Belmora LLC v. Bayer Consumer Care AG*, No. 15-1335, 819 F.3d 697 (4th Cir. Mar. 23, 2016), is the rare trademark opinion that disturbs an assumption practitioners had treated as settled: that a plaintiff must own and use a mark in U.S. commerce before it can invoke the Lanham Act. Writing for a panel of Judges Agee (author), Floyd, and Thacker, the Fourth Circuit held that the unfair-competition and false-advertising provisions of §43(a), 15 U.S.C. § 1125(a), contain no unstated requirement of U.S. trademark use by the plaintiff. The Supreme Court denied certiorari on February 27, 2017, leaving the decision as the leading circuit authority on whether the owner of a well-known foreign mark (with no American sales of its own) can sue a domestic registrant that exploits the goodwill of that foreign mark inside the United States.

## At a glance

- **Case:** *Belmora LLC v. Bayer Consumer Care AG*, No. 15-1335, 819 F.3d 697 (4th Cir. 2016)
- **Decided:** March 23, 2016; panel opinion by Judge Agee (Floyd and Thacker, JJ.); certiorari denied Feb. 27, 2017
- **Holding:** §43(a) and the §14(3) cancellation provision impose no requirement that the plaintiff/petitioner have used the mark in U.S. commerce; standing is governed by the *Lexmark* zone-of-interests and proximate-cause framework
- **Disposition:** District court (E.D. Va.) judgment vacated and remanded for further proceedings; the panel held that the district court erred in reversing the TTAB's cancellation of Belmora's FLANAX registration
- **Posture:** Rule 12(b)(6) dismissal of §43(a) claims; appeal also reviewed the district court's reversal of a TTAB cancellation order

## The facts: one name, two countries, one target market

Bayer Consumer Care AG has sold a naproxen pain reliever under the FLANAX mark in Mexico since the 1970s, building substantial brand recognition among Mexican consumers. In the United States, Bayer sells the same active ingredient under a different name (ALEVE) and never used FLANAX in U.S. commerce. Belmora LLC began selling its own naproxen product under the FLANAX name in the United States in 2004, and, critically, allegedly dressed it to evoke the Mexican original: similar packaging, color scheme, and marketing statements directed at Mexican-American consumers, including representations intimating an association with the established Mexican FLANAX.

Bayer responded on two fronts. It petitioned the Trademark Trial and Appeal Board to cancel Belmora's U.S. registration under §14(3) for misrepresentation of source, and the TTAB ordered cancellation. Bayer then sued in the Eastern District of Virginia under §43(a) for false association and false advertising. The cases were consolidated, and the district court ruled against Bayer across the board (dismissing the §43(a) claims and reversing the TTAB) on a single unifying theory: because Bayer had no protectable U.S. trademark interest in FLANAX, it lacked standing to complain about Belmora's use of the name here. The Fourth Circuit rejected that premise.

## Why §43(a) does not require the plaintiff's U.S. use

The analytical core of *Belmora* is a close reading of the statutory text against the Supreme Court's 2014 decision in *Lexmark International, Inc. v. Static Control Components, Inc.* Section 43(a) imposes liability on a defendant who, in connection with goods or services, "uses in commerce" any word, mark, or false or misleading representation likely to cause confusion as to association or to misrepresent the nature of goods. The court emphasized what that language does and does not say: the "use in commerce" requirement attaches to the *defendant's* conduct, not the plaintiff's. Nothing in the text conditions a plaintiff's ability to sue on the plaintiff's own prior use of a mark in the United States.

That textual point distinguishes §43(a) from §32, the infringement provision, which protects "registrant[s]" and therefore presupposes a U.S. registration grounded in U.S. use. Section 43(a), by contrast, is an unfair-competition provision aimed at deceptive conduct in the American marketplace, and its protections are not limited to mark owners. The district court's error, the panel held, was importing a §32-style ownership-and-use prerequisite into a statute whose words contain no such limit.

Having cleared the textual ground, the court applied *Lexmark*'s two-step standing test. First, the **zone of interests**: a §43(a) plaintiff must allege an injury to a commercial interest in reputation or sales that the Lanham Act was designed to protect, as articulated in the statute's purpose statement, §45. Bayer's false-association and false-advertising theories (that Belmora deceptively traded on the goodwill of the Mexican FLANAX to capture sales that would otherwise flow to Bayer at the border and beyond) fell squarely within that zone, because the Act exists in part to prevent "the deceptive and misleading use of marks." Second, **proximate cause**: the plaintiff's injury must flow directly from the defendant's deception. Bayer adequately pleaded that Belmora's conduct diverted sales and confused consumers who associated FLANAX with Bayer's product, an injury sufficiently direct to survive a motion to dismiss. On those pleadings, the panel concluded, Bayer's claims belonged in court.

## §14(3), §44, §66, and the Madrid Protocol: what the case did and did not decide

The cancellation ruling rests on parallel reasoning. Section 14(3) permits cancellation at the behest of "any person who believes that he is or will be damaged" where a registration is being used to misrepresent the source of goods. Because that language mirrors §43(a)'s breadth and again does not demand the petitioner's own U.S. use, the court concluded that Bayer had satisfied the *Lexmark* prongs and that the district court "erred in reversing the TTAB's decision cancelling the registration of Belmora's FLANAX mark." The panel did not itself reinstate the cancellation: it vacated the district court's judgment and remanded for further proceedings. The TTAB's cancellation was ultimately upheld years later, when the Fourth Circuit affirmed the district court's affirmance of the TTAB decision in the 2021 appeal.

It is equally important to mark the doors the court did not open. Bayer did **not** prevail on a treaty theory, and the panel did not rest on one. Although §44(b)–(h) implements U.S. obligations under the Paris Convention (including Article 6bis, which addresses well-known marks) and §66 provides the domestic mechanism for extending protection to international registrations under the Madrid Protocol, none of those provisions did the work in *Belmora*. The TTAB had earlier rejected Bayer's Article 6bis argument on the ground that Article 6bis is not self-executing and that §44 does not independently import a freestanding well-known-marks cause of action, and Bayer abandoned the treaty arguments on appeal. The upshot is consequential: *Belmora* gives foreign mark owners a path into U.S. court that runs entirely through domestic unfair-competition law, not through the treaty-and-registration apparatus of §§44 and 66 or the Madrid system. A foreign owner need not register through Madrid, claim §44 priority, or invoke the Paris Convention to reach a domestic bad actor: it needs a cognizable Lanham Act injury proximately caused by deception.

## The well-known foreign marks puzzle in the background

*Belmora* arrives against an unresolved doctrinal backdrop. The Second Circuit's decision in *ITC Ltd. v. Punchgini, Inc.*, 482 F.3d 135 (2d Cir. 2007), declined to recognize a federal well-known-marks doctrine that would let a famous foreign mark owner sue absent U.S. use, reasoning that Congress had not clearly enacted Article 6bis into the Lanham Act. *Punchgini*, however, predated *Lexmark*, and *Belmora* reaches a markedly more plaintiff-friendly result without ever endorsing a well-known-marks doctrine as such. The Fourth Circuit's route is narrower and arguably more durable: rather than recognize a new substantive doctrine of foreign fame, it simply refused to read a U.S.-use limitation into §43(a) and let the *Lexmark* standing test do the filtering. The practical effect overlaps with a well-known-marks regime (a famous foreign brand can police American free-riding) but the doctrinal mechanism is different, and that difference matters for how other circuits may follow or resist.

## Open questions

- **Will other circuits adopt the Fourth Circuit's reading?** With *Punchgini* still on the books and the Supreme Court having denied Belmora's certiorari petition without comment, the standing question for foreign mark owners remains formally unsettled outside the Fourth Circuit, inviting forum considerations.
- **How much foreign reputation must spill into the U.S.?** *Belmora* turned on Belmora's deliberate targeting of consumers familiar with the Mexican brand. It is unclear how a plaintiff fares where the foreign mark has little or no reputational presence among U.S. consumers, since proximate cause depends on actual diversion or confusion here.
- **Does the holding blur the territoriality principle?** Trademark rights are traditionally territorial. *Belmora* permits a remedy without U.S. trademark ownership, raising the question of how far §43(a) can reach foreign goodwill before it collides with territoriality.
- **What is the timeliness limit?** On a later appeal, *Belmora LLC v. Bayer Consumer Care AG*, No. 18-2183 (4th Cir. Feb. 2, 2021), the Fourth Circuit held that laches (not a borrowed state statute of limitations) governs the timeliness of §43(a) claims, adding an equitable, fact-bound gatekeeper to these suits.

## Implications

- **For foreign brand owners:** A famous overseas mark can be a sword in the United States even without U.S. registration or use, provided the owner can plead a Lanham Act injury proximately caused by a domestic actor's deception. Treaty and Madrid routes are not prerequisites to a §43(a) claim.
- **For U.S. registrants and importers:** Owning a U.S. registration is not a safe harbor. A registration obtained or used to misappropriate a known foreign brand's goodwill is vulnerable both to a §43(a) suit and to §14(3) cancellation, regardless of the foreign owner's lack of U.S. sales.
- **For litigation strategy:** Plaintiffs should plead *Lexmark*'s zone-of-interests and proximate-cause elements with concrete allegations of diverted sales and consumer confusion; defendants should test those elements at the pleading stage and develop a laches record early.
- **For territoriality watchers:** *Belmora* is best read as an unfair-competition decision, not a well-known-marks holding. That distinction constrains its reach while preserving its bite against deliberate free-riding.

## Frequently asked questions

**Does Belmora mean any foreign trademark owner can sue in the United States?**
No. The owner must satisfy *Lexmark* standing: an injury within the Lanham Act's zone of interests that is proximately caused by the defendant's deception. A foreign owner with no U.S. reputation and no demonstrable diversion of sales or consumer confusion in the United States will struggle to clear those hurdles.

**Did the court recognize the well-known marks doctrine or rely on the Paris Convention?**
No. Bayer abandoned its Article 6bis and §44 treaty arguments, and the TTAB had earlier found Article 6bis not self-executing. The Fourth Circuit decided the case purely on the text of §43(a) and §14(3) as applied through *Lexmark*, without adopting a freestanding well-known-marks cause of action.

**Is this now the law everywhere in the United States?**
It is binding in the Fourth Circuit and influential elsewhere, but the Supreme Court denied certiorari and the Second Circuit's pre-*Lexmark* *Punchgini* decision points the other way. The nationwide question remains open, which makes forum and choice-of-law considerations significant.

## Authorities and sources

- *Belmora LLC v. Bayer Consumer Care AG*, No. 15-1335 (4th Cir. Mar. 23, 2016) (slip opinion, Fourth Circuit): https://www.ca4.uscourts.gov/opinions/151335.P.pdf
- Lanham Act §43(a), 15 U.S.C. § 1125(a) (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1125
- Lanham Act §14, 15 U.S.C. § 1064 (cancellation) (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1064
- Jones Day, "Standing to Enforce Foreign Trademark Rights After *Belmora v. Bayer* Certiorari Denial" (Mar. 2017): https://www.jonesday.com/en/insights/2017/03/standing-to-enforce-foreign-trademark-rights-after-ibelmora-v-bayer-certiorarii-denial
- Arnold & Porter advisory, "Supreme Court Lets Stand Court of Appeals Ruling..." (Mar. 2017): https://www.arnoldporter.com/en/perspectives/advisories/2017/03/supreme-court-lets-stand-court-of-appeals
- Quimbee case brief, *Belmora LLC v. Bayer Consumer Care AG*, 819 F.3d 697 (2016): https://www.quimbee.com/cases/belmora-llc-v-bayer-consumer-care-ag
- *Belmora LLC v. Bayer Consumer Care AG*, No. 18-2183 (4th Cir. Feb. 2, 2021) (laches) (slip opinion, Fourth Circuit): https://www.ca4.uscourts.gov/opinions/182183.P.pdf