Wake Forest Law Review


By: Mikhail Petrov

On March 23, 2016, in the published civil case of Belmora LLC v. Bayer Consumer Care AG, the Fourth Circuit considered whether the Lanham Act permits the owner of a foreign trademark to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG (“BCC”) owns the trademark “FLANAX” in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico since the 1970s. Belmora LLC owns the FLANAX trademark in the United States and has used it in the United State since 2004 in the sale of its naproxen sodium pain relievers. BCC and its U.S. sister company Bayer HealthCare LLC (which is licensed to sell naproxen sodium pain relievers in the United States under the brand name ALEVE) contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC’s product.


BCC registered the trademark FLANAX in Mexico for pharmaceutical products, analgesics, and anti-inflammatories. It has sold naproxen sodium tablets under the FLANAX brand in Mexico since 1976. BCC’s FLANAX brand is well known in Mexico and other Latin American countries, as well as to Mexican-Americans and other Hispanics in the United States. Belmora LLC began selling naproxen sodium tablets in the United States as FLANAX in 2004. The following year, Belmora registered the FLANAX mark in the United States. Belmora’s early FLANAX packaging closely mimicked BCC’s Mexican FLANAX packaging, displaying a similar color scheme, font size, and typeface. In addition to using similar packaging, Belmora made statements implying that its FLANAX brand was the same FLANAX product sold by BCC in Mexico. BCC points to evidence that the similarities resulted in Belmora’s distributors, vendors, and marketers believing that its FLANAX was the same as or affiliated with BCC’s FLANAX.

Procedural History

BCC successfully petitioned the U.S. Trademark Trial and Appeal Board (“TTAB”) to cancel Belmora’s registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB’s decision to the district court. In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, and in conjunction with BHC, a claim for false advertising. After the two cases were consolidated, the district court reversed the TTAB’s cancellation order and dismissed the false association and false advertising claims.

Although the district acknowledged that Belmora’s FLANAX has a similar trade dress to BCC’s FLANAX and is marketed in such a way that capitalizes on the goodwill of BCC’s FLANAX, it nonetheless concluded that the Lehman Act does not allow the owner of a foreign mark that is not registered in the United States, and has never been used in the United States, to assert priority rights over a mark that is registered in the United States by another party and used in United States Commerce. BCC appealed the decision.

Rule of the Case

The plain language of § 43(a) of the Lahman Act does not require, as an element of the cause of action, that a plaintiff possess or have used a trademark in U.S. commerce. Under § 43(a), it is the defendant’s use in commerce — whether of an offending “word, term, name, symbol, or device” or of a “false or misleading description [or representation] of fact” that creates the injury under the terms of the statute.

What § 43(a) requires is that BCC was “likely to be damaged” by Belmora’s “use in commerce” of its FLANAX mark and related advertisements. The Supreme Court recently considered the breadth of this “likely to be damaged” language in Lexmark International, Inc. v. Static Control Components, Inc., (a false advertising case arising from a dispute in the used printer-cartridge market). The Court concluded that § 43(a)’s broad authorization is framed by two background principles. First, a plaintiff’s claim must fall within the “zone of interests” protected by the statute, defined in §45 of the Lanham Act. Second, a statutory cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the statute.

Reasoning of the Fourth Circuit

The Fourth Circuit first addressed the position, pressed by Belmora and adopted by the district court, that a plaintiff must have initially used its own mark in commerce within the United States as a condition precedent to a § 43(a) claim. The Fourth Circuit found that the district court erred in requiring BCC, as the plaintiff, to have pleaded its prior use of its own mark in U.S. commerce when it is the defendant’s use of a mark or misrepresentation that underlies the § 43(a) unfair competition cause of action.

Although the plaintiffs’ use of a mark in U.S. commerce was a fact in common in the foregoing cases, substantial precedent reflects that § 43(a) unfair competition claims come within the statute’s protectable zone of interests without the U.S. commerce precondition. The Supreme Court has pointed out that § 43(a) goes beyond trademark protection, is cases of generic mark and reverse passing off. See Dastar Corp. v. Twentieth Century Fox Film Corp 539 U.S. 23, 29 (2003). These cases illustrate that § 43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in United States commerce. If such a use were a condition precedent to bringing a § 43(a) action, the generic mark and reverse passing off cases could not exist. Additionally, the plain language of § 43(a) makes no reference to U.S. commerce. Therefore, neither the Supreme Court in Lexman nor the Lanham Act’s plain language contain an unstated requirement that plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim.

The Fourth Circuit then examined Lexmark’s two fold inquiry to determine whether BCC can make a § 43(a) claim. The first inquiry is whether the alleged acts of unfair competition fall within the Lanham Act’s protected zone of interests? If so, the second inquiry is whether BCC pleaded proximate causation of a cognizable injury.

BCC adequately pleaded a § 43(a) false association claim for purposes of the zone of interests prong. Lexmark advises that most of the Lanham Act’s enumerated purposes are relevant to false association cases. One such enumerated purpose is making actionable the deceptive and misleading use of marks. Here, BCC lost sales revenue because Belmora’s deceptive and misleading use of FLANAX conveyed to consumers a false association with BCC’s product. Further, by deceiving distributors and vendors, Belmora makes its FLANAX more available to consumers, which exacerbated BCC’s losses.

The Fourth Circuit then turned to Lexmark’s second prong, and concluded that BCC may plausibly have been damaged economically and in its reputation by Belmora’s alleged deceptive use of the FLANAX mark. Therefore, there was enough to conclude that BCC’s injuries were proximately caused by Belmora’s violations of the false association statute.


The Fourth Circuit conclude that BCC is entitled to bring its unfair competition claims under Lanham Act § 43(a) and its cancellation claim under § 14(3). The district court’s judgment was vacated and the case remanded for further proceedings consistent with this opinion.

By George Kennedy

On May 19, 2015, the Fourth Circuit issued a published opinion in the civil case of Radiance Foundation v. NAACP. The court held that an online article describing the NAACP as the “National Association for the Abortion of Colored People” did not infringe upon or dilute trademarks held by the NAACP (the National Association for the Advancement of Colored People). In so holding, the Fourth Circuit vacated the decision of the district court and remanded the case for further proceedings.

Publication of the Article

In January 2013 the Radiance Foundation published an article entitled “NAACP: National Association for the Abortion of Colored People.” Appearing on the Radiance Foundation’s website, and several others, the article harshly criticized the NAACP’s position on abortion. The organizations that featured the article were non-profit, anti-abortion organizations which allowed site users to make donations.

Upon learning of the article’s publication, the NAACP sent Radiance a cease-and-desist letter on January 28, 2013. Radiance then brought a declaratory action seeking that the court find that Radiance had not infringed upon or diluted any of NAACP’s trademarks and that Radiance’s use of the marks was protected under the First Amendment.

The District Court Found for the NAACP

In a bench trial, the district court found for the NAACP and denied declaratory relief to Radiance. It held that Radiance had infringed upon the NAACP’s trademarks because it had used the marks in connection with goods and services and that the description of the NAACP as the “National Association for the Abortion of Colored People” was likely to create confusion among consumers. Furthermore, the district court held that the use of NAACP’s trademark created a likelihood of dilution of the trademarks owned by the NAACP by associating the NAACP and its marks with a pro-abortion position. Lastly, the district court held that Radiance’s use of the NAACP’s trademarks did not fall under any of the allowed exceptions of trademark dilution as set forth in the Lanham Act.

As a result, the district court issued a permanent injunction to Radiance, barring the organization from using the words “‘National Association for the Abortion of Colored People’ in a way that creates a likelihood of confusion or dilution.

The Fourth Circuit Vacated the Decision

In vacating the district court’s decision, the Fourth Circuit held that the district court erred in granting injunctive relief to the NAACP for two reasons. First, the Fourth Circuit held that the district court erred in finding that the NAACP had an actionable trademark infringement claim. Second, the Fourth Circuit held that the district court erred in finding that Radiance diluted the NAACP’s trademarks.

Radiance’s Article Did not Infringe Upon NAACP’s Trademarks

Trademark infringement is governed by the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a). As the Fourth Circuit explained, these statutes exist to protect consumers from being confused by improperly used trademarks. However, trademark protection is limited by the Constitutional right to free speech, and as the Fourth Circuit noted, trademark laws may not “impinge the rights of critics and commentators.” For this reason, an actionable claim for trademark infringement requires more than just showing that a party other than the trademark holder used the trademark. Additionally, the trademark infringer must be shown to have used the trademark “in connection with” goods or services in a manner that is “likely to cause confusion.”

The Fourth Circuit held that Radiance did not use the NAACP’s trademarks “in connection” with goods or services, nor did they use the trademarks in a manner “likely to cause confusion.” While Radiance’s article did appear on websites which allowed users to make monetary donations, the Fourth Circuit held that there was not a clear enough connection with transactional activity for Radiance’s use of the NAACP’s trademarks to be considered “in connection” with goods or services. The Fourth Circuit reasoned it was not enough that the article merely appeared on a website in which monetary donations could be made. Instead, there needed to be a clear connection between the article itself and transactional activity for the “in connection” with goods and services requirement to be met.

Similarly, the Fourth Circuit also held that Radiance’s use of the NAACP’s trademarks was not likely to cause confusion. In its reasoning, the Fourth Circuit focused on the idea that trademark laws are not intended to protect the trademark holder from those who misunderstand its political views, and that it was unlikely that any readers of the article would have been confused about an affiliation between Radiance Foundation and the NAACP. As the Fourth Circuit argued, the article authored by Radiance was a scathing critique of the NAACP; it would not follow that the NAACP would author such an article.

Radiance’s Article Did Not Dilute the NAACP’s Trademarks

Lastly, the Fourth Circuit held that NAACP did not have an actionable dilution claim against Radiance. The law of dilution, 15 U.S.C. § 1125(c)(3), protects the integrity of the trademark by protecting the trademark’s reputation. While the Fourth Circuit conceded that the NAACP had established a prima facie case for dilution against Radiance, the Fourth Circuit held that Radiance’s use of the NAACP’s trademark was permissible under the “fair use” exception and the “non-commercial use” exception. The fair use exception allows a trademark to be used by someone other than the trademark holder to comment or criticize the trademark holder or its services. The Fourth Circuit held that Radiance used the trademark “NAACP” in conjunction with the “National Association for the Abortion of Colored People” as a way to criticize the NAACP and the policies for which it stands. Additionally, the Fourth Circuit held that the non-commercial use exception was satisfied because Radiance’s purpose in writing the article was not commercial gain, but to strongly criticize the policies and political positions of the NAACP. Therefore, the Fourth Circuit held that there existed no basis for either a trademark infringement claim or trademark dilution claim against Radiance. Accordingly, the Fourth Circuit held that the district court erred in granting injunctive relief to NAACP on the basis of trademark infringement and trademark dilution.

The Fourth Circuit Vacated and Remanded for Further Proceedings

By Amanda Whorton

On April 23, 2015, the Fourth Circuit issued a published opinion in the civil case Shammas v. Focarino. The court held that 15 U.S.C. § 1071(b)(3) of the Lanham Act requires that a dissatisfied trademark applicant who elects to commence a de novo action in a federal district court to challenge a ruling of the United States Patent and Trademark Office (“USPTO”) must pay all reasonable expenses of the proceeding, regardless of whether he wins or loses. These expenses include attorney’s fees.

Plaintiff’s Trademark Application

In 2009, Milo Shammas (“Shammas”) filed a federal trademark application to register the mark “PROBIOTIC.” This mark was being used to market fertilizer products that his company, Dr. Earth, Inc., manufactures. An examining attorney for the USPTO denied his application based on the mark being “generic” and “descriptive.” Shammas appealed to the Trademark Trial and Appeal Board, which affirmed this decision.

Procedure for Trademark Applicant to Appeal Adverse Ruling

The Lanham Act, in 15 U.S.C. § 1071, sets forth two choices for a dissatisfied trademark applicant if he or she wants a review of an adverse ruling: The applicant can (1) under § 1071(a)(1), appeal to the Court of Appeals for the Federal Circuit, or (2) under § 1071(b)(1), commence a de novo action in a federal district court.

With the first option, the appeal is taken “on the record.” The court gives considerable favor to the USPTO’s factual findings unless they are “unsupported by substantial evidence.” However, if the dissatisfied applicant seeks the second option and no party opposes the application, the applicant must name the Director of the USPTO as a defendant. Because this option is a much more expansive and expensive procedure (due to the court reviewing the record de novo), the applicant, under § 1071(b)(3), must pay all the reasonable expenses of the proceeding, regardless of whether he prevails.

The District Court Grants Director of USPTO’s Request

Shammas elected the second option and after losing the case, the Director sought all expenses, including fees, to pay the salaries of the USPTO attorneys and a paralegal who represented the Director in the action. The district court granted the Director’s request and required that Shammas pay $36,320.49 in expenses and attorney’s fees to the USPTO. The district court further held that expenses encompass attorney’s fees.

Shammas’ Appeal to the Fourth Circuit

Shammas appealed to the Fourth Circuit, arguing that the district court erred in awarding the Director attorney’s fees because it is contrary to the American Rule. The American Rule states that each party bears the burden of paying his or her own attorney’s fees if the underlying statute does not expressly provide for the losing party to pay the prevailing party’s attorney’s fees. Shammas argued that § 1071 doesn’t explicitly provide for the award of attorney’s fees.

The American Rule Does Not Apply

The Fourth Circuit reasoned that normally “expenses” is too broad a term and doesn’t include attorney’s fees. However, because Congress added the word “all” to modify “expenses” in § 1071(b)(3), this indicates that expenses shouldn’t be limited. While the statute doesn’t explicitly call for attorney’s fees, the structure of the Lanham Act and the legislative history point to a congressional intent to reduce the financial burden to the USPTO because de novo actions are time-intensive. The Fourth Circuit found that the American Rule did not apply in this case; § 1071(b)(3) calls for expenses to be imposed on the party regardless of whether he prevails.

Fourth Circuit Affirms District Court’s Ruling

Judge King dissented because the Lanham Act makes no specific reference to awards of attorney’s fees, which suggested that Congress did not intend to authorize these awards. The Fourth Circuit affirmed the district court’s award of attorney’s fees to the USPTO, holding that a dissatisfied trademark applicant who chooses to file a de novo proceeding must pay all reasonable expenses, including attorney’s fees, regardless of whether the applicant prevails or loses.

By Ashley Escoe

On Monday March 30, 2015, the Fourth Circuit released a published opinion regarding the civil case of Georgia-Pacific Consumer Products v. Von Drehle Corporation. In its opinion, the court agreed with von Drehle Corporation (“von Drehle”) and vacated the district court’s injunction and award of attorneys fees and also reversed the increase in damages and the award of prejudgment interest–all of which had been in favor of Georgia-Pacific Consumer Products (“Georgia-Pacific”).

Georgia-Pacific’s Claim of Trademark Infringement

Georgia-Pacific brought this trademark infringement case against von Drehle for designing and selling ten-inch paper-towels specifically for use in Georgia-Pacific’s “enMotion” motion sensor towel dispensers. Georgia-Pacific owns the trademark “enMotion” and alleged that von Drehle had violated the Lanham Act, 15 U.S.C. § 1114(1)(a), for contributory trademark infringement because the von Drehle towels were “likely to cause confusion and . . . deceive End-User Customers.”

Georgia-Pacific brought three separate actions against von Drehle for selling these ten-inch paper-towels: in the Western District of Arkansas, the Northern District of Ohio, and the Eastern District of North Carolina. The first to rule on this issue was Arkansas, which concluded that von Drehle towels made for use in an enMotion dispenser were not likely to cause confusion, and therefore not an instance of trademark infringement. The Eighth Circuit affirmed. The district court in Ohio then ruled against Georgia-Pacific as well, holding that Georgia-Pacific was precluded from litigating the same issue; the Sixth Circuit affirmed.

The Eastern District of North Carolina initially ruled against Georgia-Pacific based on von Drehle’s affirmative defense of claim and issue preclusion. However, on appeal the Fourth Circuit reversed this decision, concluding that von Derhle waived those defenses by failing to raise them in a timely manner. A jury awarded Georgia-Pacific the $791,431 in profits von Drehle made from the paper-towel sales. The district court trebled the jury verdict and awarded attorneys’ fees as well as prejudgment interest–totaling $4,887,283.51. The district court also granted Georgia-Pacific a permanent, nationwide injunction prohibiting von Drehle from selling its paper-towels.

On appeal, von Drehle challenged the geographical scope of the injunction and the monetary awards.

The Scope of the District Court’s Injunction Was Too Broad

The Fourth Circuit determined that the district court abused its discretion by granting a nationwide injunction. Generally, a district court has the authority to issue a nationwide injunction prohibiting trademark infringement. 15 U.S.C § 1116(a). In this instance, however, for the sake of inter-circuit comity, the court determined that the injunction should be limited to the states in the Fourth Circuit. The Sixth and Eighth Circuits have already ruled that von Drehle was not prohibited from selling its ten-inch paper towels, and the other Circuit courts that have not yet ruled on the issue should be free to resolve this matter for their jurisdictions. The Fourth Circuit vacated the district court’s injunction and remanded the issue.

Trebling the Damages Award Was Inappropriate

The Fourth Circuit concluded that the district court’s reliance on Larsen v. Terk Techs. Corp. was an erroneous conflation of 15 U.S.C. § 1117(a) and § 1117(b). In Larsen, the issue was the use of a counterfeit mark and thus was governed by § 1117(b), which mandates treble damages for willful and intentional infringement. The instant case does not concern counterfeit marks, but rather is a general trademark infringement case governed by § 1117(a). Section 1117(a) does allow a court to adjust a jury award, but only if the award was inadequate or excessive and never solely to punish the defendant. Georgia-Pacific only requested an award of von Drehle’s profits, and that is precisely what the jury awarded; therefore, there was no basis for the district court to find the award inadequate. The Fourth Circuit reversed the increase in the damages award and ordered the jury award be reinstated.

A New Standard for “Exceptional” in Regard to Attorneys Fees

The district court granted attorneys’ fees to Georgia-Pacific, finding the case to be “exceptional” because von Drehle purposefully and willfully sold its towels to be used in Georgia-Pacific’s dispensers. However the Fourth Circuit noted that the district court failed to distinguish between willfully performing an act one believes to be lawful and willfully breaking the law. Further, after the district court made its ruling, the Supreme Court issued its decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. Though this decision did not define “exceptional” in the attorneys’ fees provision of § 1117(a), it defined an “exceptional case” in an identical provision of the Patent Act. The Supreme Court held that a district court may determine a case is exceptional by looking at the totality of the circumstances. The Fourth Circuit vacated the award of attorneys’ fees and remanded the issue for the district court to determine in light of the Octane Fitness standard.

Congress Did Not Intend for Prejudgment Interest in This Circumstance

Section 1117 is particular about what types of monetary relief are available for trademark infringement in specified circumstances. The Fourth Circuit concluded that if Congress did not include a certain type of monetary relief in a specified circumstance, then it was Congress’ intention that it not be available. Section 1117(a) does not provide for prejudgment interest in cases concerning recovery of a defendant’s profits. The court noted that it may be possible to recover prejudgment interest under § 1117(a) as an element of damages, but Georgia-Pacific only claimed von Drehle’s profits, not damages. Therefore the Fourth Circuit reversed the district court’s award of prejudgment interest.

The Fourth Circuit Vacated, Reversed in Part, and Remanded in Part the District Court’s Decision

The Fourth Circuit vacated the district court’s injunction and award of attorneys fees’ and remanded on these issues. It also reversed the increase in the damages award and the award of prejudgment interest.

Judge Shedd Disagrees with Limiting the Scope of the Injunction

Judge Shedd wrote separately, concurring in part and dissenting in part. Judge Shedd only disagreed with the decision to restrict the injunction to the Fourth Circuit. On appeal, injunctions are reviewed for abuse of discretion. Judge Shedd points out that the district court “applied the correct injunction standard, did not rely on a clearly erroneous finding of material fact, and did not misapprehend the law with respect to the underlying issues of this case.” The district court did not abuse its discretion, and the Fourth Circuit should affirm the injunction. Instead the majority of the panel relied on the doctrine of comity in determining that the nationwide scope of the injunction was too broad. The doctrine of comity is not a rule of law, but just a courtesy; and, according to Judge Shedd, relying on comity was not appropriate in this situation.