Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA534671
`ESTTA Tracking number:
`04/26/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92047741
`Defendant
`Belmora LLC
`MARSHA G GENTNER
`JACOBSON HOLMAN PLLC
`400 7TH ST NW, 6TH FLOOR
`WASHINGTON, DC 20004
`UNITED STATES
`trademark@jhip.com, mgentner@jhip.com, lweiss@jhip.com
`Brief on Merits for Defendant
`Philip L. O'Neill
`poneill@jhip.com, mgentner@jhip.com, trademark@jhip.com,
`cchapman@jhip.com
`/Philip L. O'Neill/
`04/26/2013
`REDACTED TRIAL BRIEF.pdf ( 47 pages )(440418 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BAYER CONSUMER CARE AG,
`
`V.
`
`BELMORA LLC,
`
`Petitioner,
`
`Registrant.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Cancellation No. 92047741
`
`REGISTRANT'S TRIAL BRIEF
`
`REDACTED FOR PUBLIC FILING
`
`Certain materials contained in Registrant’s Trial Brief, have been designated “Confidential” or
`“Trade Secret / Commercially Sensitive”, pursuant to a protective order, and are not to be
`disclosed or revealed to the public except by order of a court.
`
`Marsha G. Gentner
`
`Philip L. O’Neill
`
`JACOBSON HOLMAN PLLC
`
`400 Seventh Street, N.W.
`
`Washington, D.C. 20004
`(202) 638-6666 (phone)
`(202) 393-5350 (facsimile)
`
`April 26, 2013
`
`Attorneys for Registrant Belmora LLC
`
`

`
`TABLE OF CONTENTS
`
`E22
`
`INTRODUCTION ............................................................................................................. .. 1
`
`DESCRIPTION OF THE RECORD ................................................................................. ..3
`
`III.
`
`ISSUES PRESENTED ....................................................................................................... ..3
`
`IV.
`
`STATEMENT OF FACTS ................................................................................................ ..4
`
`A.
`
`Belmora and Its FLANAX Mark ............................................................................ ..4
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Belmora’s FLANAX Registration No. 2,924,440 ................................................... ..5
`
`Syntex in Mexico .................................................................................................... ..5
`
`Petitioner ................................................................................................................. . .5
`
`Belmora’s Consumer Marketing Methods .............................................................. ..6
`
`Belmora’s Products Comply With FDA Source Disclosure Regulations ............... ..7
`
`Belmora Has Displayed The “Sunburst” Logo/Name Identifier
`For The Past Five Years ........................................................................................... ..7
`
`There Is No Evidence That Any Appreciable Number Of U.S. Residents
`Are Aware Of Petitioner’s Products ........................................................................ ..8
`
`Timeline of Pertinent Events .................................................................................... ..9
`
`Petitioner’s Sham Allegations Of Use Of Its Mexican FlanaX Mark In The U.S. ...l0
`
`ARGUMENT ................................................................................................................... ..l2
`
`A.
`
`Petitioner Lacks Standing ..................................................................................... ..l2
`
`1.
`
`2.
`
`A Plaintiff :‘~/lust lE’rove its Standing To Seek Cancellation ..................... ..l2
`
`Petitioner Is A Foreign Entity VVhich Does Not Operate
`In The
`And 'I‘h‘us Has No Real Intere.<;t—No “’Dires:t
`
`And Personal Stal<e”—In Cancelling A U.S. Regist_ration
`For FLA
`........................................................................................... ..l 3
`
`

`
`3.
`
`4.
`
`The Testimony Of Petitioner’s Own Employee—Witness
`Proves That It Has No “Legitimate Personal Interest”
`In The Outcome Of This Case ................................................................. ..l6
`
`No Part Of The Board’s Prior Dictum Concerning Standing
`Supports An Ultimate Conclusion That Petitioner Has Standing ............ ..l7
`
`Petitioner Has Not Proved That Belmora Misrepresented The Source
`Of Its Products .................................................................................................. ..l9
`
`1.
`
`2.
`
`3.
`
`Belmora Was The First Entity To Lawfully Register
`And Use The FLANAX Mark in the U.S., And Petitioner
`Was Well Aware Of That Fact When It Obtained An
`
`Assignment Of The Mexican FlanaX Registration ................................... ..2l
`
`There is No Evidence that Petitioner Acquired Rights In
`The Syntex Packaging in Mexico, Which Prominently
`Displays The “SYNTEX” House Mark. In Any Event,
`Belmora’s Packaging Always Prominently Identified It ......................... ..22
`
`Belmora’s Marketing Materials Never Misrepresented the
`Source of Registrant’s Goods .................................................................. ..24
`
`a.
`
`b.
`
`c.
`
`The biased distributor survey ....................................................... ..27
`
`The Agency—endorsed brochure ................................................... ..28
`
`The “I ’m with Belmora” telemarketing script .............................. ..29
`
`4.
`
`Post—2007 Events Made Source Misrepresentation
`By Belmora Impossible .............................................................................. ..29
`
`5.
`
`No One Was Deceived By Belmora’s Use Of FLANAX .......................... ..3l
`
`a.
`
`Arsa Imports ..................................................................................... ..32
`
`b. MeXgrocer.com ................................................................................ ..32
`
`c.
`
`“marta @tele artnersxcom” ............................................................... ..33
`
`d.
`
`Disc Graphics (Paul Currao) ............................................................ ..33
`
`6.
`
`Belmora’s Litigation Conduct Is Not A Proper Basis
`From Which To Infer A Substantive Violation ....................................... ..34
`
`iii
`
`

`
`7.
`
`8.
`
`There Is No “History” of Registering “Others’ Marks to Deceive .......... ..37
`
`Belmora’s Products Are Completely Safe And Effective ........................ ..38
`
`VI.
`
`CONCLUSION ................................................................................................................ ..39
`
`APPENDIX 1: REGISTRANT’S OBJECTIONS TO PETITIONER’S EVIDENCE
`
`TAB A: Registrant’s Motion to Strke Certain Exhibits Subrr1itted With Petitioner’s
`August 22, 20ll Notice of Reliance, filed September 1, 20ll (Dkt. # 90).
`
`TAB B: Registrant’s Opposition to Petitioner’s Motion and Renewed Motion
`To Strike Exhibits C, D, E, G and H to Registrant’s Notice of Reliance,
`filed September 19, 20ll (Dkt. # 97).
`
`APPENDIX 2: REGISTRANT’S OPPOSITION TO PETITIONER’S OBJECTIONS TO
`
`REGISTRANT’S EVIDENCE
`
`TAB A: Registrant’ Opposition to Petitioner’s Motion to Strike, filed
`December 26, 2012 ((Docket # ll8).
`
`TAB B: Registrant’s Supplemental Answer to Interrogatory No. 20, served
`December 3, 2012.
`
`iv
`
`

`
`TABLE OF AUTHORITIES
`
`Pageg sg
`
`Cases
`
`Bayer Aktiengesellscliaft v. Mouratidis, 2010 TTAB LEXIS 218 ............................................... ..13
`
`Cuban Cigar Brands N.V. v. Upmann Int’l, 457 F.Supp. 1090 (S.D.N.Y. 1978) ................. ..21, 23
`
`Federal Treasury Enter. Sojuzplodoimport v. Spirits,
`425 F.Supp.2d 458 (S.D.N.Y. 2006) .............................................................. .. 14, 24, et seq
`
`Galleon S.A. v. Havana Club Holding, S.A., 2004 TTAB LEXIS 38 .......................... .. 1, 20, et seq
`
`General Healthcare Ltd. v. Qasliat, 364 F.3d 332 (1st Cir. 2004) .............................................. ..22
`
`Global Mascliinen GmbH v. Global Banking Systems, Inc.,
`227 U.S.P.Q. 862 (TTAB 1985) ................................................................................ ..20, 25
`
`GoClear LLC v. Target Corp., 2009 U.S. Dist. LEXIS 6649 (N.D. Cal.) ................................... ..19
`
`Heroes, Inc. v. Boomer Esiason Hero's Foundation, Inc.,
`
`43 U.S.P.Q.2d 1193 (D.D.C. 1997) ................................................................................. ..20
`
`ITC Ltd. V. Puncligini, Inc., 373 F. Supp.2d 275 (S.D.N.Y. 2005) ....................................... ..18, 19
`
`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024 (CCPA 1982) .............................. ..12
`
`Liquid Glass Enterprises, Inc. v. Liquid Glass Industries
`of Canada, Ltd., 14 U.S.P.Q.2d 1976 (E.D. Mi. 1989) .............................................. ..21, 23
`
`Mankind Research Foundation, Inc. v. Essiac Products Services, Inc.,
`
`2000 TTAB LEXIS 934 (TTAB 2000) ...................................................................... ..19, 21
`
`McDonnell Douglas Corp. v. National Data Corp., 228 U.S.P.Q. 45 (TTAB 1985) .......... ..20, 22,
`et seq
`
`Moreliouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d. 881 (CCPA. 1969) .......................... ..39
`
`Olay Co. v. Cococure Products, Inc., 218 U.S.P.Q. 1028 (S.D.N.Y. 1983) ............................... ..23
`
`Osterreicliisclier Molkerei—und Kasereiverband Registriere GmbH
`
`v. Marks and Spencer Ltd., 203 U.S.P.Q. 793 (TTAB 1979) .......................................... ..20
`
`Otto International, Inc. v. Otto Kern GmbH, 83 U.S.P.Q.2d 1861 (TTAB 2007) ...................... ..20
`
`

`
`Pagegsg
`
`Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F. Supp.2d 238 (D.De1. 2010) ................ ..25
`
`Persons Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) ............................. .. 15, 22, et seq
`
`Petroleos Mexicanos v. Intermix SA, 97 U.S.P.Q.2d 1403 (TTAB 2010) ............................. ..12, 15
`
`Richtie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999) .................................................................... ..12
`
`Safer, Inc. v. OMS Investments, Inc., 94 U.S.P.Q.2d 1031 (TTAB 2010) ................................... ..37
`
`Snnamerica Corp. v. Sun Life Assurance Company of Canada,
`890 F. Supp. 1559 (N.D. Ga. 1994) .............................................................. .. 20, 22, et seq
`
`Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670 (S.D.N.Y. 1963) .............................. ..28
`
`Statutes
`
`Section 1(b) of the Trademark Act ................................................................................................ ..5
`
`Section 2(a) of the Trademark Act ............................................................................................... ..15
`
`Section 2(d) of the Trademark Act ............................................................................ .. 19, 22, et seq
`
`Section 2(e)(4) of the Trademark Act .......................................................................................... ..38
`
`Section 14(3) of the Trademark Act ............................................................................... .. 1, 2 et seq
`
`Section 43(a) of the Trademark Act ............................................................................................. ..18
`
`15 U.S.C. §1052(d) ...................................................................................................................... ..10
`
`15 U.S.C. §1057(b) ................................................................................................................ ..37, 38
`
`15 U.S.C. §1064(3) ................................................................................................................ ..20, 30
`
`21 U.S.C. § 352 ............................................................................................................................ ..14
`
`21 U.S.C. § 352(b) ......................................................................................................................... ..7
`
`Vi
`
`

`
`Rules
`
`21 C.F.R. §20l.l(a) ........................................................................................................................ ..7
`
`21 C.F.R. §330.l .......................................................................................................................... ..l3
`
`Federal Rules Civil Procedure 30(e)(l) ....................................................................................... ..36
`
`Other Authorities
`
`McCarthy on Trademarks and Unfair Competition (4th ed. 2013)
`§20:60 .......................................................................................................................... ..20, 22
`
`§32:l72 .............................................................................................................................. ..28
`
`Theodore H. Davis, Jr., Cancellation Under Section 14(3) for Registrant
`Misrepresentation of Source, 85 Tm. Rep. 67 (1995) ....................................................... ..39
`
`Vii
`
`

`
`I.
`
`INTRODUCTION
`
`Belmora was first to apply for and obtain a U.S. trademark registration for FLANAX, and
`
`is the only one who has ever used that mark in commerce in this country. The law is clear that if
`
`the owner of a U.S. trademark registration has “even a colorable claim of ownership [of the
`
`registration] there is no misuse and hence no misrepresentation of source.” 1 Petitioner is a
`
`Swiss entity which, through a Mexican licensee, sells a drug product under the same name
`
`exclusively in Mexico. 2 It is indisputable that Petitioner has no US. tradeinark rights or
`
`goodwill whatsoever in the FLANAX nanie or any associated. trade dress: it has never marketed
`
`or sold a p1‘s’_?€.ll!Ct under that D1!il”l<; in the US. and, inore.ove.r, it is _proliihited by federal law and
`
`private contract 'fr<_nn doing so. In four successive pleadings in this case Petitioner claimed that
`
`its Mexican Flanax mark was being used in the U.S., when it always knew, and discovery
`
`conclusively proved, that there is no truth to that claim. Beh"nora°s ownership of the subject
`
`registration is tlierefore ninre than colorable—————«it is nninipeachahie, As a result, P€.’.lIElO11€.’.l" cannot
`
`prove a snhstant_ive violation of §l,r-lv(3) of the Tl"3.d€l‘Tl'(1I‘l§ Act and, even E}‘10i‘6 l3asi.<:aily, laci«:s
`
`standing to maintain this cancellation action.
`
`indeed, Petitionefzzz lack of standing is eonfirnied
`
`hy the testimony of its own employee. Pascal E‘:urgin. who admitted on cross examination that
`
`as company is
`
`1
`
`Galleon. S./—l. it Hawma {}'Z;n’;> I:a’0t'ding S.A.,
`
`;2()(l4'1'l"l'I»’-‘£8 l-i§iXIS 38 at *(38.
`
`The Board’s June 2, 2011 Order precludes Petitioner from relying upon evidence of any
`2
`use or sales outside of Mexico. (Belmora Notice of Reliance (“BNOR”) Exh. G, at p. 6)
`
`

`
`Belmora has never misrepresented that its products are those of Petitioner. To the
`
`contrary, the packaging of Belmora’s products has always identified “Belmora” as the distributor
`
`of the products in full compliance with FDA requirements.
`
`Its consumer web site and “800” call
`
`center personnel explicitly disclose that “all of the FLANAX products are made in the U.S. by
`
`Belmora.” From its earliest “sell sheet” to the advertising brochure created by an outside
`
`advertising agency in 2007 to the national TV commercials that it has sponsored in recent
`
`years—and everywhere and every time in between—Belmora has consistently and clearly
`
`identified itself as the source of the FLANAX products made and sold in the U.S. And, since
`
`mid—2008—a time before Petitioner first asserted its §l4(3) claim—the front panel of the
`
`package of Belmora’s products has contained an express representation in large, bold typeface,
`
`immediately below a bright yellow “sunburst” logo, that “Belmora LLC” is the source of the
`
`product. This packaging has literally made it impossible in the past five years for anyone to be
`
`confused about the source of Belmora’s FLANAX products. 3
`
`More than a million U.S. consumers have purchased Belmora’s products, and Petitioner
`
`has not adduced testimony or other evidence (such as a survey) that even a single one of them
`
`has been deceived about product source. The same is true of the thousands of professionals—
`
`distributors/ retailers and vendors— who dealt directly with Belmora before 2009 (when
`
`Belmora appointed a single, national distributor to take over marketing and sales) despite
`
`Petitioner’s effort to mischaracterize and exaggerate the import of a handful of emails whose
`
`authors did not submit testimony in this proceeding.
`
`It also means that Petitioner’s §l4(3) misrepresentation of source claim was stale when
`3
`filed. See section VI.B., infra (“Post—2007 Events Made Source Misrepresentation By Belmora
`Impossible”).
`
`

`
`II.
`
`DESCRIPTION OF THE RECORD
`
`Petitioner’s description of the record omits to note that Belmora has objected to and
`
`moved to strike numerous portions of Petitioner’s Notice of Reliance. See APPENDIX 1
`
`hereto—Registrant’s Objections to Petitioner’s Evidence, which details the grounds of
`
`objections. Registrant has not waived any of these objections, or any objections to testimony
`
`made at the time the testimony was taken. To the extent required, Registrant hereby incorporates
`
`by reference, its previous, and pending, Motion to Strike (Docket #97, filed September 19, 2011)
`
`and Registrant's Objections to Petitioner's Evidence. Apart from the foregoing, Petitioner’s
`
`Description of the Record is accurate. Belmora’s Opposition to Petitioner’s Objections to its
`
`Evidence is summarized in APPENDIX 2 hereto, and is hereby incorporated by reference.
`
`III.
`
`ISSUES PRESENTED
`
`The central issues in this case are three—fold:
`
`(1)
`
`Does Petitioner — who does not now and has never used the registered mark in the
`
`U.S., has no intention of using the registered mark in the U.S., could not lawfully use the
`
`registered mark in the U.S., and has no registration or pending application for the registered mark
`
`in the U.S. — lack standing to maintain this action for cancellation because it has not shown a
`
`reasonable basis in fact that it has a "real interest” in the proceeding and a ”reasonable” belief
`
`that it wili be damaged?
`
`(2)
`
`Was the statutory condition that must be present when a §l4(3) claim for
`
`misrepresentation of source is filed, namely, that the registered mark is iieing Zt'S€d
`
`to
`
`misrepresent,” in fact not satisfied wlieii Petitioner filed this claim, such that this cause of action
`
`was stale or otherwise improper‘ when filed?
`
`

`
`(3)
`
`Has Petitioner failed to carry its burden of proving that Belmora engaged in a
`
`blatant, aggressive misuse of the FLANAX mark by deliberately misrepresenting that its goods
`
`are those of the Petitioner?
`
`Belmora respectfully submits that the answer in each case is “yes.”
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`Belmora and Its FLANAX Mark.
`
`Belmora is a Virginia limited liability company owned and operated by Jamie Belcastro,
`
`who is a licensed U.S. pharmacist. (Belcastro Decl., ‘J1 3) Belmora was formed in 2002 and
`
`began sales in mid—2004. (BNOR EXh. C, Belcastro Dep. 17) The company markets a line of
`
`over—the—counter (“OTC”) pain relief products under the brand name FLANAX. (BNOR EXh. I,
`
`p. 3) The original and best—selling product is a 220 mg. analgesic tablet that contains the widely-
`
`used pain medication, naproxen sodium, as its active ingredient. (Id.) Belmora contracts with
`
`third parties to manufacture, package and distribute its products. (Belcastro Dep. 32-33)
`
`As a pharmacist, Mr. Belcastro observed that many American consumers, especially
`
`those who are non—native English speakers or illiterate, are underserved by suppliers of
`
`pharmaceuticals. (Belcastro Decl., ‘J1 9) This market demographic often lacks familiarity with
`
`which OTC products to buy and how to use them. (Id., ‘J1 l0) Belmora’s business is broadly
`
`directed at the largest ethnic group within this underserved market segment, namely, the 48
`
`million U.S. residents who have a Spanish cultural or language background, including not only
`
`

`
`persons of Mexican and Central/South American heritage but also those with family ties to Cuba,
`
`Spain, Philippines and Puerto Rico. (Id., ‘J1 l2) 4
`
`B.
`
`Belmora’s FLANAX Registration No. 2,924,440.
`
`Mr. Belcastro investigated whether anyone had registered a drug product under the name
`
`FLANAX with the U.S. Food and Drug Administration (“FDA”) and determined that no one
`
`had. (Belastro Dep. 67) He then searched the PTO website and found the same.
`
`(Id.) Then, on
`
`October 6, 2003, Belmora filed an application (Serial No. 78/310029) to register the word mark
`
`FLANAX on an intent—to—use basis under Section l(b) of the Trademark Act, for “orally
`77
`
`ingestible tablets of Naproxen Sodium for use as an analgesic.
`
`The application was published
`
`for opposition on August 3, 2004. No opposition having been filed, a Notice of Allowance
`
`issued on October 26, 2004. The Registration then issued on February 1, 2005, No. 2924440
`
`(“the ‘440 Registration”). Belmora’s first use in commerce was on or before March 1, 2004.
`
`C.
`
`Syntex in Mexico.
`
`On November 9, 1978, an entity known as Syntex Corporation obtained a Mexican
`
`trademark registration No. 224435 for the word mark “Flanax” for “pharmaceutical products,
`
`analgesics and anti—inflammatories.” (Burgin Dep. Exh. 23) Prior to 2002,‘
`
` - <Bandera Dep. 10>
`
`In his August 10, 2010 written testimony in support of Belmora’s motion for summary
`4
`judgment, Mr. Belcastro explained:
`
`At my earlier deposition in this proceeding, I answered “no” when asked if Belmora
`targets Hispanics because I felt that this would inaccurately describe our business
`model and the persons my company serves. Upon reflection, however, I realized
`that I had been too technical with my answer, so I corrected the transcript to record
`the fact that, yes, Belmora’s customers are largely U.S. Hispanics, and later submitted
`testimony to that effect. (Belcastro Decl., ‘J1 10; see Belcastro Dep. Errata, p. l)
`
`

`
`‘. (Id. at 10-11) The packaging for this product always displayed the name
`
`“SYNTEX” on the front panel to identify its source. (PNOR, Exh. B; Bandera Dep. Exh. 18)
`
`D.
`
`Petitioner.
`
`Petitioner is a Swiss corporation which does not conduct any commercial activity in the
`
`U-S- , Burgin Dep-
`
`Exh. 23, more than one year after Belmora had begun marketing its FLANAX product in the
`
`U.S., and long after the ‘440 Registration issued.
`
` - (Id-» EXh- 24> On June 29»
`
`2007, nearly three years after Belmora’s application was published, Petitioner filed a Petition to
`
`cancel. That Petition did not include a claim under §14(3) of the Trademark Act — the sole claim
`
`now before the Board.
`
`E.
`
`Belmora’s Consumer Marketing Methods.
`
`To reach its target market of consumers, Belmora employs a multifaceted, user—friendly
`
`marketing approach:
`
`it supplies low cost pain medications in packages that have directions in
`
`both Spanish and English and that graphically depict the disease state treated by the product; it
`
`maintains a bi—lingual web site (v~/wax/.fia.naxusa..<:<_>m, which is printed on the current packaging)
`
`to describe common symptoms and the Belmora products that relieve them; and it provides a toll
`
`free number for consumers to get help with basic health questions. (Belcastro Decl., ‘][l 1) In all
`
`of these points of contact, Belmora is expressly identified as the product source. (ld., ‘H 6, 11)
`
`

`
`F.
`
`Belmora’s Products Comply With FDA Source Disclosure Regulations.
`
`FDA registration is required to lawfully sell drug products in this country. Section
`
`352(b) of the federal Food, Drug and Cosmetic Act, 21 U.S.C. § 352(b), requires that OTC drug
`
`labels (including the packages that contain such drugs) contain a truthful disclosure of the
`
`product’s source, i.e., the name and address of the manufacturer or (in Belmora’s case because it
`
`uses a contract manufacturer) the distributor. (England Dep. 22) This disclosure must be
`
`“conspicuous” but need not appear on the front panel of the package. See 21 C.F.R. §20l.l(a).
`
`Belmora’s products have always complied with this requirement, and later Versions of its
`
`packaging identify Belmora as the source in multiple places on the package. (Belcastro Decl., ‘J1
`
`6; England Dep. 28-33 & EXhs. 3-6)
`
`G.
`
`Belmora Has Dis la ed The “Sunburst” Lo o/ Name Identifier For The Past
`Five Years.
`
`Since mid—2008, the packaging of Belmora’s FLANAX products not only contains the
`
`FDA—mandated source disclosure, but also features on the front panel of the package a logo
`
`consisting of a bright yellow sunburst with the large—font words “Be|mora LLC” (in white letters
`
`with a dark border) immediately below it, (Belcastro Decl., ‘J1 7), reproduced below:
`
`V
`
`

`
`These packages have been in use continuously since 2008 with only minor stylistic changes. 5
`
`H.
`
`There Is No Evidence That Any Appreciable Number Of U.S. Residents Are
`Aware Of Petitioner’s Products.
`
`There is no evidence of record that any number or identifiable group of U.S. residents are
`
`familiar with Petitioner’s Mexican Flanax product. Petitioner has offered no data, no survey, no
`
`study—no proof at all of that matter. The meager evidence cited by Petitioner (PTB at 3:
`
`Bandera Dep. 20-21; BEL39l9) does not support its claim that the Mexican product is well
`
`known to Mexican Americans or any appreciable number of them.6 Likewise, there is no
`
`evidence that LS. consumers are aware of any connection of Petitioner or its Mexican licensee,
`
`Bayer de Mexico, C.V., with the Mexican Flanax product. Nor is there any evidence that U.S.
`
`consumers now — or ever — identified FLANAX products in the U.S. with any source other than
`
`Belmora.7 And given the growth and success of Belmora in this country, that is hardly
`
`Other than the name FLANAX and the use of a similar type font for that word, the
`5
`package bears no close resemblance to the Syntex package on which Petitioner relies. For
`example, Belmora’s package:(i) contains three shades of blue, each different than the blue in
`Bayer’s package; (ii) has a yellow sunburst logo, nowhere found on Syntex (iii) unlike Syntex’s
`has black lettering in English and Spanish describing the product type, function and main
`ingredient; and (iv) displays large human caricatures with “pain center” circles enabling
`consumers to visualize the product’s pain relief function, which Syntex’s does not have. See
`BNOR, Exh. B. Also, (v) on an end or side panel, and in the same size type font mandated by
`FDA regulation, the Belmora packaging discloses that the product is “Distributed by: Belmora
`LLC PO Box 3063 Arlington VA 22203.” The package of Belmora’s FLANAX tablets also
`discloses the URL of its website, wwwflanaxus:;1.corn”, where Belmora’s name is prominently
`displayed on every page.
`
`Indeed, the Bandera testimony cited by Petitioner (which is hearsay and lacking in
`6
`foundation, and to which Belmora continues to object on those bases) relates only to Mexico.
`
`Petitioner repeatedly makes the claim that the Mexican Flanax product is well known
`7
`among Mexican Americans, but never cites to any evidence of consumer perceptions or
`recognition. At most, it refers to advertising in Mexico which mostly occurred after Belmora
`registered and first used the FLANAX mark in the U.S. See PNOR, Exhs. B, D.
`
`

`
`surprising. Indeed, Petitioner relies on the testimony of two advertising agency witnesses who
`
`claimed to be experts in marketing to the Latino population in the U.S., one of whom claimed to
`
`have travelled extensively in Mexico. But neither of them had ever heard of Flanax in Mexico
`
`or anywhere else before they were engaged by Belmora and became familiar with the company
`
`and its FLANAX products in the U.S. (Machado Dep. l5; Fernandez Dep. 13-14).
`
`1.
`
`Timeline of Pertinent Events.
`
`Petitioner would have the Board believe that it has been advertising and selling Flanax
`
`product in Mexico, in its claimed packaging, for decades, and that Belmora is the interloper. In
`
`fact, it is exactly the opposite:
`
`2002
`
`Naproxen sodium is approved for over the counter sales in Mexico; until then, it
`was dispensed only by prescription; consumer advertising of the product was
`strictly forbidden. Sometime thereafter, Syntex first uses the packaging in Mexico
`(Bandera Dep. l0, 12)
`
`10/5/2003
`
`(Less than two years after the Syntax Mexican Flanax product first became
`available to the OTC market in that country) Belmora files its U.S. application for
`FLANAX.
`
`3/ l/2004
`
`Belmora commences use of the FLANAX mark in the U.S.
`
`2/ l/2005
`
`The ‘440 Registration sought to be cancelled herein issues to Belmora.
`
`9/ 14/2005
`
`Petitioner—who knew or should have known of Belmora’s sale of FLANAX
`
`products in the U.S., in the initial Belmora packaging, for over a year— acquires
`the Mexican registration for the Flanax mark from Syntex (there is no evidence of
`transfer to Petitioner of any trade dress or other rights in any Syntax packaging),
`and later licenses the mark to Bayer de Mexico S.A. de C.V. for use and sales in
`Mexico only.
`
`2007
`
`Before this cancellation action is filed (see Petitioner’s Ex. 6), Belmora begins
`work on a packaging change that results in the current packaging.
`
`Mid—2008
`
`Use of the revised “sunburst logo” Belmora packaging commences.
`
`

`
`8/28/2008
`
`Petitioner first pleads any allegations with respect to Belmora’s (by then former)
`packaging
`
`5/6/2009
`
`About a year after Belmora began using its current packaging, Petitioner first
`pleads its §l4(3) claim
`
`J.
`
`Petitioner’s Sham Allegations Of Use Of Its Mexican Flanax Mark In The
`U.S.
`
`The evidence of Petitioner’s non—activity in the U.S. is discussed in detail below in
`
`connection with the standing analysis. For now, it bears emphasizing that —
`
`0 Petitioner is not now, nor has Petitioner ever, distributed or sold product in the U.S. under
`or in connection with the FLANAX mark;
`
`0 Petitioner has no intention to sell or distribute product in the U.S. under or in connection
`with the FLANAX mark;
`
`0
`
`0
`
`Petitioner’s use of the FLANAX mark, through its licensee in Mexico, is restricted
`exclusively by the license terms to Mexico;
`
`It would be unlawful for Petitioner to import into or sell in the U.S. the FLANAX product
`that its licensee distributes and sells in Mexico.
`
`See Petitioner’s trial brief at 9; nn. 9, 10, ll, 12 and 13, infra.
`
`Petitioner was fully aware of these facts when it filed its original Petition for Cancellation
`
`herein and each of its First, Second and Third Amended Petitions for Cancellation. Yet,
`
`throughout these four pleadings, as well as in three responses to Belmora’s motions to dismiss,
`
`Petitioner repeatedly claimed not only current use of the FLANAX mark in the United States, but
`
`also continued use from a time prior to the filing date by Belmora of the registration sought to be
`
`cancelled. These are just a few of many examples of Petitioner’s assertions:
`
`“Since long prior to the filing date of the application that matured into
`Registration No. 2,924,440, Petitioner and its predecessors have used the mark
`FLANAX in connection with the advertising and sale of orally ingestible tablets
`of naproxen sodium for use as an analgesic. “ (Petition for Cancellation, filed
`June 6, 2007, ‘J1 1)
`
`l0
`
`

`
`“By virtue of Petitioner’s sales and promotion prior to the filing date of the
`application that matured into Registration No. 2,924,440 .
`.
`. “ (Id.,‘][ 2)
`
`. Petitioner’s aforesaid use of the FLANAX mark for analgesics, including,
`“. .
`orally ingestible tablets of naproxen sodium, in the United States .
`.
`. prior to the
`filing date of the application that matured into Registration No. 2,924,440.”
`(Amended Petition for Cancellation, filed September 17, 2007, ‘J1 7)
`
`“In particular, Bayer sufficiently pled use in the United States, as required to state
`a claim under 15 U.S.C. §l052(d).” (Petitioner’s Response to Registrant’s
`Motion to dismiss and Cross—Motion for Discovery Sanctions, filed September 17,
`2007, p.2)
`
`“Bayer alleges that its FLANAX mark has been used in the United States since
`prior to Belmora’s application to register that mark .
`. .” (Petitioner’s Response to
`Registrant’s Motion to Dismiss and for Suspension, filed November 30, 2007, p.
`6)
`
`“Petitioner’s FLANAX mark has long been used and is being used in the United
`States on products authorized by Petitioner.” (Second Amended Petition for
`Cancellation, filed August 28, 2008, ‘H 2)
`
`. in the United States long prior to
`.
`“Bayer’s FLANAX mark has been used .
`Belmora’s application.” (Petitioner’s Response to Registrant’s Motion to
`Dismiss, filed November 3, 2008, p.l)
`
`“In its Petition to cancel Belmora’s Registration, Bayer has pleaded its FLANAX
`product has been used .
`.
`. in the United States prior to Belmora’s application to
`register an identical mark for identical goods.” (Id, p. 2)
`
`“Petitioner’s FLANAX mark has long been used and is being used in the United
`States on products authorized by Petitioner .
`. .”
`(Thi