THIS OPINION IS A
`PRECEDENT OF THE TTAB
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`Mailed:
`April 17, 2014
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`Hearing:
`October 23, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
`_____
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`Bayer Consumer Care AG
`v.
`Belmora LLC
`_____
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`Cancellation No. 92047741
`_____
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`Bradley L. Cohn, Phillip Barengolts, Alexis E. Payne, Ian J. Block, Scott T.
`Lonardo, Seth I. Appel, and Jeffrey A. Wakolbinger, Pattishall, McAuliffe, Newbury,
`Hilliard & Geraldson LLP, for Bayer Consumer Care AG.
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`Marsha G. Gentner, Philip L. O’Neill, and Leesa N. Weiss, Jacobson Holman PLLC,
`for Belmora LLC.
`_____
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`Before Seeherman, Taylor, and Hightower, Administrative Trademark Judges.
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`Opinion by Hightower, Administrative Trademark Judge:
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`Bayer Consumer Care AG petitions to cancel Belmora LLC’s registration for
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`the mark FLANAX, in standard characters, for “orally ingestible tablets of
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`Naproxen Sodium for use as an analgesic” in International Class 5.1 Petitioner
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`alleges that the registered mark is being used by the respondent to misrepresent
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`1 Registration No. 2924440, issued February 1, 2005. A declaration of use pursuant to
`Section 8 of the Trademark Act, 15 U.S.C. § 1058, was accepted December 16, 2010.
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`

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`Cancellation No. 92047741
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`the source of the goods on or in connection with which the mark is used pursuant to
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`Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3).
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`We grant the petition to cancel.
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`Summary of Proceeding
`Petitioner filed a petition to cancel on June 29, 2007,2 asserting a likelihood
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`of confusion. After respondent moved to dismiss for failure to state a claim under
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`FED. R. CIV. P. 12(b)(6), asserting that petitioner had not properly alleged standing
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`or prior use in the United States, petitioner amended its pleading to allege that its
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`mark FLANAX had been used in the United States,3 and respondent’s motion to
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`dismiss was denied as moot.4 In addition to a Section 2(d) claim, the amended
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`petition also asserted as grounds for cancellation that the registration violated
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`(1) Article 8 of the General Inter-American Convention for Trademark and
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`Commercial Protection of Washington, 1929 (“Pan American Convention”), and
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`(2) Article V of the Convention for the Protection of Commercial, Industrial and
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`Agricultural Trademarks and Commercial Names of Santiago, 1923 (“Santiago
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`Convention”). In lieu of a responsive pleading, respondent moved to dismiss the
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`amended petition, again alleging that petitioner failed to state a claim and lacked
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`2 This proceeding thus was not subject to the modified disclosure and conferencing regime
`applicable to inter partes proceedings commenced after November 1, 2007. See Trademark
`Trial and Appeal Board Manual of Procedure (TBMP) § 401 (3d ed. rev. 2 June 2013).
`3 As discussed infra, petitioner has not used the FLANAX mark in the United States.
`4 Board Order of September 26, 2007, 10 TTABVUE. Citations to the record include the
`TTABVUE number of the public (and English-language) entry where available, and, where
`relevant, to the electronic page number where a cited document or testimony appears.
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`2
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`

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`Cancellation No. 92047741
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`standing. The Board granted respondent’s motion to dismiss but allowed petitioner
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`time to replead.5 Petitioner filed a second amended pleading.
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`For a third time, respondent moved to dismiss the amended petition for
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`failure to state a claim pursuant to FED. R. CIV. P. 12(b)(6). The Board granted the
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`motion in part in the precedential decision Bayer Consumer Care AG v. Belmora
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`LLC, 90 USPQ2d 1587 (TTAB 2009).6 The four claims in the second amended
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`petition, and their disposition, were as follows:
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`1. Likelihood of confusion under Section 2(d): Dismissed with prejudice
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`for failure to allege that goods bearing petitioner’s FLANAX mark were
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`manufactured or distributed in the United States prior to respondent’s
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`filing date by petitioner or on its behalf. Id. at 1591.
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`2. Violation of Article 6bis of the Paris Convention for the Protection of
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`Industrial Property (“Paris Convention”), as made applicable by
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`Sections 44(b) and (h) of the Trademark Act: Dismissed with prejudice.
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`The Board stated that Article 6bis does not afford an independent
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`cause of action for parties in Board proceedings, and that Trademark
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`Act Section 44 does not “provide the user of an assertedly famous
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`foreign trademark with an independent basis for cancellation in a
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`Board proceeding, absent use of the mark in the United States.” Id.7
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`5 Board Order of July 29, 2008, 17 TTABVUE.
`6 Board Order of April 6, 2009, 25 TTABVUE.
`7 Cf. Fiat Group Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1115 (TTAB 2010) (“We
`must, however, at least recognize the possibility that, in an unusual case, activity outside
`3
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`

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`Cancellation No. 92047741
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`3. Misrepresentation of source under Section 14(3) of the Trademark Act:
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`Motion to dismiss denied. The Board found that petitioner had
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`“alleged clearly and specifically that respondent copied petitioner’s
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`mark, including its particular display, and virtually all elements of its
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`packaging, in order to ‘misrepresent to consumers, including especially
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`consumers
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`familiar with Petitioner’s FLANAX mark,’
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`that
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`respondent’s product is from the same source as petitioner's product.”
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`Id. at 1592. The claim was therefore sufficiently pled. Furthermore:
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`While respondent argues that petitioner does not have
`“standing” to bring a misrepresentation of source claim
`given its failure to allege use in the United States,
`petitioner has alleged that it is damaged by respondent’s
`use of strikingly similar packaging “to misrepresent the
`source of” respondent’s goods.
` This is enough to
`sufficiently allege petitioner’s standing in this proceeding.
`Although existing case law does not address whether
`petitioner’s alleged use is sufficient to support a claim of
`misrepresentation of source, we find that at a minimum
`the claim is pled sufficiently to allow petitioner to argue
`for the extension of existing law. Moreover, respondent’s
`focus solely on petitioner’s extra-territorial use fails to
`take account of the fact that respondent’s use is in the
`United States and to the extent such use may be
`misrepresenting to consumers making purchases in the
`United States that petitioner is the source of respondent’s
`products, the misrepresentation is alleged by petitioner to
`be occurring in the United States. The Lanham Act
`provides for the protection of consumers as well as the
`property rights of mark owners.
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`
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`Id.
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`the United States related to a mark could potentially result in the mark becoming well-
`known within the United States, even without any form of activity in the United States.”).
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`4
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`Cancellation No. 92047741
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`4. Fraud: Dismissed with prejudice.
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` Because petitioner did not
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`sufficiently allege prior use of its mark in the United States, it also did
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`not sufficiently allege that it had legal rights superior to respondent’s;
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`therefore, petitioner’s claim that respondent falsely declared that no
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`other person, firm, corporation, or association had the right to use the
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`FLANAX mark in commerce was untenable. Id. at 1592-93.
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`Thus, after the Board’s order of April 6, 2009, petitioner’s only remaining claim was
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`misrepresentation of source pursuant to Trademark Act Section 14(3).
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`Respondent filed an answer denying petitioner’s allegations and asserting
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`several affirmative defenses on June 5, 2009, then moved for summary judgment
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`three months later, asserting that petitioner lacked standing and that respondent
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`had not misrepresented the source of its products as a matter of law. The Board
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`denied respondent’s motion for summary judgment on petitioner’s standing and
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`granted petitioner’s cross-motion for discovery pursuant to FED. R. CIV. P. 56(f),
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`deferring consideration of respondent’s motion for summary judgment on the
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`merits.8 Respondent’s motion for summary judgment on the merits of petitioner’s
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`misrepresentation of source claim was denied on January 10, 2011, and the parties
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`proceeded to trial.9
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`8 Board Order of February 2, 2010, 43 TTABVUE. The rule governing discovery in response
`to a summary judgment motion is now found at FED. R. CIV. P. 56(d).
`9 Board Order of January 10, 2011, 60 TTABVUE. Discussion of various other discovery
`and trial motions not before us on final decision is omitted. Also, because respondent did
`not brief its affirmative defenses as such at trial, they are deemed waived. See, e.g., Miller
`v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013). However, to the extent they serve to
`amplify respondent’s defense – including its assertion that petitioner lacks standing – they
`have been considered.
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`5
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`Cancellation No. 92047741
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`The case is fully briefed, and an oral hearing was held on October 23, 2013.
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`Evidence and Objections
`Each party has moved to strike evidence proffered by the other party.
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`Because of the volume of objections, we address only the objections to the evidence
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`on which the parties relied and that may be relevant to the claim before us. We also
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`discuss only in general terms the portions of the record that the parties have
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`submitted under seal and have not disclosed in their public briefs.
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`A.
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`Respondent’s Motion to Strike Exhibits to Petitioner’s Notice of Reliance10
`Respondent moves to strike Exhibit B, Parts I and II, to petitioner’s notice of
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`reliance, i.e., excerpts from the Dictionary of Pharmaceutical Specialties of Mexico
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`and advertisements for Petitioner’s FLANAX products from printed publications
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`circulated in Mexico on the basis that they were not shown to be in general
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`circulation in the United States, and also that the advertisements were
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`insufficiently identified and may be made of record only through witness
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`testimony.11 Respondent’s motion is denied. The documents are admissible by
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`notice of reliance pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), for
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`petitioner’s stated purpose of showing the FLANAX mark and packaging in Mexico.
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`In addition, the sources of the materials in Exhibit B, Part II are sufficiently
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`identified.
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`10 90 and 97 TTABVUE; Corrected Appendix 1 to Respondent’s Brief, Exhibits A and B, 128
`TTABVUE 7-21.
`11 80 TTABVUE 216-37 and 238-46.
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`6
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`Cancellation No. 92047741
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`B.
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`Petitioner’s Objections and Motion to Strike Respondent’s Evidence12
`1. Counter-Designations from Belcastro Deposition (Exhibit C to
`Respondent’s Amended Notice of Reliance)13
`Petitioner objects to respondent’s proffered counter-designated excerpts from
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`the discovery deposition of respondent’s owner, Jamie Belcastro, on the ground that
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`respondent has failed to sufficiently explain why it needs to rely on each additional
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`excerpt. Respondent does not address its 26 non-consecutive pages of counter-
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`designations individually, but states that they “are offered pursuant to Fed. R. Civ.
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`P. 32(a)(6), which allows an adverse party to offer other parts of a deposition that in
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`fairness should be considered with the parts already introduced,” to provide context
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`to the “snippets” of testimony designated by petitioner.14
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`Petitioner’s objection is governed by Trademark Rule 2.120(j)(4):15
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`If only part of a discovery deposition is submitted and
`made part of the record by a party, an adverse party may
`introduce under a notice of reliance any other part of the
`deposition which should in fairness be considered so as to
`make not misleading what was offered by the submitting
`party. A notice of reliance filed by an adverse party must
`be supported by a written statement explaining why the
`adverse party needs to rely upon each additional part
`listed in the adverse party’s notice, failing which the
`Board, in its discretion, may refuse to consider the
`additional parts. (emphasis added).
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`12 115, 117, and 122 TTABVUE; Appendix to Petitioner’s Brief, 125 TTABVUE; Appendix to
`Petitioner’s Reply Brief, 132 TTABVUE.
`13 112 TTABVUE 87-124. Respondent also filed an amended notice of reliance, without
`exhibits, on December 10, 2012. See 116 TTABVUE.
`14 Respondent’s notice of reliance, 116 TTABVUE 4-6.
`15 Inter partes proceedings before the Board are governed, in part, by the Federal Rules of
`Civil Procedure, except as otherwise provided in the Trademark Rules of Practice.
`Trademark Rule 2.116(a).
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`7
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`Cancellation No. 92047741
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`We agree with petitioner that respondent’s blanket statements fail to explain why
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`respondent needs to rely on each additional proffered excerpt. Nonetheless, in our
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`discretion, we have reviewed the excerpts and find that each introduces new
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`testimony rather than makes the testimony designated by petitioner not
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`misleading. We therefore grant petitioner’s motion to strike Exhibit C to
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`respondent’s notice of reliance.
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`2. Counter-Designations from Belcastro Declaration (Exhibit D to
`Respondent’s Corrected Amended Notice of Reliance)16
`Petitioner attempted to submit by notice of reliance portions of a declaration
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`by respondent’s owner in support of respondent’s motion for summary judgment,
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`arguing that these statements from Mr. Belcastro’s declaration are admissible as
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`statements by a party-opponent pursuant to FED. R. EVID. 801(d)(2). Declarations
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`are not among the types of evidence admissible by notice of reliance. Trademark
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`Rule 2.122(e). Respondent, however, did not object on this basis, but rather
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`submitted the entire declaration with all exhibits as an exhibit to its own notice of
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`reliance. Respondent argues that petitioner effectively consented to submission of
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`the full declaration into evidence; failing that, respondent argues that the
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`declaration is admissible in the interests of justice under the “residual” hearsay
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`exception embodied in FED. R. EVID. 807(a).
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`Because both parties submitted (in whole or in part) Mr. Belcastro’s
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`declaration, we deem them to have stipulated the declaration into the record, and
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`16 111 TTABVUE 9-67 (redacted).
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`8
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`Cancellation No. 92047741
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`we hereby consider the entire declaration for whatever evidentiary value it may
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`have and deny petitioner’s motion to strike respondent’s Exhibit D.
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`3. Testimony of Expert Witness Benjamin L. England17
`Petitioner objects to the testimony deposition of Benjamin L. England, offered
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`by respondent as an expert witness, because Mr. England was not timely disclosed
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`and did not submit a written report. Although this case predates the Board’s
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`pretrial and expert witness disclosure requirements, petitioner’s Interrogatory
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`No. 20 sought disclosure of any expert on whose opinion respondent intended to rely
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`pursuant to FED. R. CIV. P. 26(a)(2)(A) and (B). Respondent responded during
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`discovery that it “has not yet identified any expert witness that it expects to call to
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`testify on its behalf.”18
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`General discovery closed February 9, 2011. Respondent states that it
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`“determined to elicit Mr. England’s testimony only after reviewing the record
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`following the close of Petitioner’s testimony period” in response to petitioner’s
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`decision not to introduce a paragraph of the Belcastro Declaration.19 However,
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`petitioner’s testimony period closed on October 14, 2012, and respondent did not
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`identify Mr. England as a potential witness until November 28, 2012,
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`17 119-21 TTABVUE.
`18 Annex 1 to Petitioner’s Brief, 124 TTABVUE 55 (redacted). It appears that respondent
`identified Mr. England in a supplemental answer to Interrogatory No. 20 in the text of an
`email to petitioner on December 3, 2012, during respondent’s testimony period. Appendix 1
`to Respondent’s Brief, 127 TTABVUE 51.
`19 Appendix 1 to Respondent’s Brief, respondent’s opposition to petitioner’s objections to its
`evidence, at 1-2, 127 TTABVUE 3-4.
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`9
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`Cancellation No. 92047741
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`approximately halfway through its testimony period.20 Moreover, petitioner’s notice
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`of reliance introducing portions of the Belcastro Declaration was filed more than a
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`year before respondent identified Mr. England, on August 24, 2011. We also point
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`out that, although respondent states that it identified Mr. England “shortly after he
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`was engaged,” Mr. England testified that he was contacted during the first or
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`second week of November 2012 and agreed to testify shortly thereafter, well before
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`he was identified on November 28.21
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`We find that respondent’s failure to promptly identify and disclose its expert
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`witness and provide a written report was neither substantially justified nor
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`harmless, and petitioner’s objection is sustained. We therefore strike the England
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`testimony due to untimely disclosure pursuant to FED. R. CIV. P. 37(c)(1). See also
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`Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 414(7) (2d ed.
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`rev. 2004)22 (“A party need not, in advance of trial, specify in detail the evidence it
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`intends to present, or identify the witnesses it intends to call, except that the names
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`of expert witnesses intended to be called are discoverable.”); TBMP § 414(7) & n.13
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`(3d ed. rev. 2 June 2013) (“For proceedings commenced prior to November 1, 2007, a
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`party need not, in advance of trial, identify the witnesses it intends to call, except
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`that the names of expert witnesses intended to be called are discoverable.”). We
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`point out, however, that the entire Belcastro Declaration has been admitted into
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`evidence, obviating respondent’s rationale for the England testimony.
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`20 Id. at 4.
`21 England Transcript at 33:22-34:25, 119 TTABVUE 36-37.
`22 This was the operative edition of the TBMP at the time this proceeding commenced.
`10
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`Cancellation No. 92047741
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`4. Cross-Examination Testimony of Pascal Bürgin23
`We sustain petitioner’s objections to cross-examination questions six through
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`57 and Exhibits A through E from the deposition on written questions of petitioner’s
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`witness Pascal Bürgin, on the ground that the cross-examination exceeded the scope
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`of the direct examination pursuant to FED. R. EVID. 611(b).
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`5. Exhibits G and H to Respondent’s Amended Notice of Reliance24
`Finally, for the sake of completeness, we note that previous orders of the
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`Board in the same proceeding (including respondent’s Exhibit G) are automatically
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`of record. Also, because the document in Exhibit H – displaying respondent’s
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`annotations to the operative pleading – is not admissible by notice of reliance, we
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`grant petitioner’s motion to strike it.
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`We hasten to add that consideration of any of the excluded evidence would
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`not have affected the outcome.
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`C.
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`Description of the Record
`The file of the subject registration for FLANAX is automatically of record.
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`Trademark Rule 2.122(b). Pursuant to the evidentiary rulings supra, a summary of
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`the evidence made of record by the parties follows.
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`1. Petitioner’s Evidence
`Petitioner introduced testimony depositions, with exhibits, of the following
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`six individuals:
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`23 109 TTABVUE 9-24 (testimony) and 133-84 (exhibits) (redacted).
`24 112 TTABVUE 159-77.
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`11
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`Cancellation No. 92047741
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`• Karla Fernandez Parker, president and CEO of K. Fernandez &
`Associates, a Hispanic and multicultural marketing and advertising
`agency in San Antonio, Texas that did work for respondent in 2007;25
`• Eduardo Gonzalez Machado, a former contractor for K. Fernandez &
`Associates who performed work for respondent;26
`• Paul Currao, an account executive of packaging firm Disc Graphics,
`which produces cartons and labels for respondent;27
`• Lisa Halprin Fleisher, former global brand director for petitioner’s
`naproxen sodium brands, including FLANAX and ALEVE;28
`• Pascal Bürgin, head of law and compliance for petitioner, who was
`deposed on written questions;29 and
`• Juan Jose Bandera, marketing director for Bayer de Mexico, S.A. de
`C.V.30
`Petitioner submitted the following evidence by notice of reliance:
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`• Publications showing the FLANAX mark and packaging in Mexico;31
`• Printouts from the website of the Department of Homeland Security
`showing data on numbers of Mexican immigrants to the United
`States;32
`• Printouts from websites accessible in the United States, including
`YouTube.com and Google.com, showing petitioner’s FLANAX mark;33
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`25 78 TTABVUE.
`26 94 TTABVUE.
`27 99 TTABVUE (Exhibit 29 filed under seal at 100 TTABVUE 54).
`28 91 TTABVUE.
`29 106 and 109 TTABVUE. Mr. Bürgin’s business address is in Basel, Switzerland.
`30 92 TTABVUE (filed under seal).
`31 Petitioner’s Exhibit B, 80 TTABVUE 216-46.
`32 Exhibit C, 80 TTABVUE 247-75.
`33 Petitioner’s Exhibit D, 80 TTABVUE 276 to 81 TTABVUE 69.
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`12
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`Cancellation No. 92047741
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`• Excerpts from pharmacology reference books;34
`• Printouts from the Aleve.com website and electronic records of the
`ALEVE trademark registration from the U.S. Patent and Trademark
`Office database;35
`• A copy of petitioner’s second set of requests for admission and
`respondent’s responses, admitting
`the authenticity of certain
`documents produced by respondent
`in response to petitioner’s
`discovery requests and identified as Exhibits 1 through 420;36
`• Printouts from the electronic records of the U.S. Patent and
`Trademark Office showing:
`o the current status and title of respondent’s Registration
`No. 3094431 (DAYAMINERAL);37
`o the current status and title of respondent’s Registration
`No. 2712285
`(GOYA), and electronic
`records
`from
`the
`Trademark Trial and Appeal Board concerning Goya Foods,
`Inc.’s petition to cancel that registration;38 and
`o the current status and title of respondent’s Registration
`No. 3243061 (ANA-DENT TODO DOLOR);39
`• A Spanish-language printout from GrupoTeramed.com relating to the
`analgesic ANA-DENT;40
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`34 Exhibit E, 81 TTABVUE 70-151.
`35 Petitioner’s Exhibit F, 81 TTABVUE 152-65.
`36 Exhibit G, 84 TTABVUE 127 through 88 TTABVUE 102 (redacted). It should be noted
`that, although documents produced in response to document production requests generally
`cannot be made of record by notice of reliance, see Trademark Rule 2.120(j)(3)(ii), serving
`requests for admission as to the authenticity of the documents on the producing party, and
`then submitting those admissions by notice of reliance, is a proper way to make the
`documents of record. See TBMP § 704.11(1). We further note that the parties stipulated
`that these exhibits could be made of record during each party’s testimony period by notice
`of reliance. Although petitioner could make the documents of record pursuant to
`Trademark Rule 2.120(j)(3)(i) without such a stipulation because they were respondent’s
`responses to petitioner’s requests for admission, the stipulation also allowed respondent to
`submit the responses/documents, even if petitioner had elected not to submit them.
`37 Exhibit H(1), 82 TTABVUE 14-46.
`38 Exhibit H(3), 82 TTABVUE 55-99.
`39 Exhibit H(4), 82 TTABVUE 100-43.
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`13
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`Cancellation No. 92047741
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`• Certain of respondent’s responses to petitioner’s interrogatories,
`requests for admission, and requests for production (the latter
`indicating that no documents responsive to those requests exist);41
`• Documents showing respondent’s FLANAX mark on its goods,
`including printouts from respondent’s current and former websites
`(FlanaxUSA.com and ElMedicoFlanax.com, respectively) and Facebook
`page42 and third-party websites showing respondent’s FLANAX
`products offered for sale;43
`• Excerpts from the discovery deposition of respondent’s owner Jamie
`Belcastro, with exhibits and errata sheet;44 and
`• Excerpts from a declaration of Mr. Belcastro submitted with
`respondent’s reply in support of its motion for summary judgment on
`August 10, 2010.45
`Petitioner also filed a supplemental notice of reliance containing (1) a
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`certified copy of the file for Bayer’s Mexican Trademark Registration No. 224,435
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`for FLANAX, admissible as an official record under Trademark Rule 2.122(e),46 and
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`(2) printouts from the website of Abbott Laboratories translated from Spanish to
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`English identifying DAYAMINERAL as one of its products offered for sale outside
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`the United States in the Dominican Republic and the Caribbean.47
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`40 Exhibit H(5), 82 TTABVUE 144-45.
`41 Exhibit “I,” 88 TTABVUE 235 to 89 TTABVUE 12 (filed under seal).
`42 Exhibit J, 82 TTABVUE 201-39.
`43 Exhibit K, 82 TTABVUE 240-53.
`44 Exhibit L, 89 TTABVUE 76-173 (filed under seal; certain exhibits also at 82 TTABVUE
`254-74).
`45 Exhibit M, 89 TTABVUE 174-90 (redacted), the admissibility of which is discussed supra.
`46 Exhibit “O,” 96 TTABVUE 5-208 (previously submitted as Exhibit A to petitioner’s notice
`of reliance).
`47 Exhibit P, 96 TTABVUE 209-19.
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`14
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`Cancellation No. 92047741
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`2. Respondent’s Evidence
`Respondent made the following evidence of record by notice of reliance:
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`• Certain of petitioner’s responses to respondent’s interrogatories and
`requests for admission;48
`• Declaration of Jamie Belcastro, with exhibits;49 and
`• U.S. Food and Drug Administration regulations regarding labeling of
`over-the-counter drugs.50
`Both parties also attempted to introduce samples of packaging for
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`respondent’s FLANAX products via notice of reliance. Although product packaging
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`is not among the types of documents admissible by notice of reliance under
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`Trademark Rule 2.122(e), because both parties treated such packaging as being of
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`record, we deem the parties to have stipulated it into the record. We also note that
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`examples of respondent’s original and redesigned packaging are in evidence by
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`other means, including as exhibits to the Belcastro Deposition and the Belcastro
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`Declaration.
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`Parties
`Respondent Belmora LLC was formed in 2002 by Virginia pharmacist Jamie
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`Belcastro, its sole employee.51 Its original product, and the one at issue in this case,
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`is an analgesic tablet containing 220 mg. of naproxen sodium sold over the counter.
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`48 Exhibit A, 112 TTABVUE 10-61.
`49 Respondent’s Exhibit D, 111 TTABVUE 9-67 (redacted), the admissibility of which is
`discussed supra.
`50 Respondent’s Exhibit F, 112 TTABVUE 152-58.
`51 Exhibit L, Belcastro Transcript at 18, 89 TTABVUE 89; Exhibit M, Belcastro Decl. ¶ 9, 89
`TTABVUE 178.
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`Cancellation No. 92047741
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`Respondent began offering this product under the mark FLANAX in 2003 or 2004.52
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`Mr. Belcastro states in part that:
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`Belmora’s business model is to provide a user-friendly
`menu of OTC drug products for common ailments to U.S.
`residents of Hispanic background. When I refer to
`Hispanics, I mean persons in the U.S. whose personal or
`family backgrounds involve either a Spanish-speaking
`culture or a Spanish-speaking country.53
`According to Mr. Belcastro, there are more than 48 million Hispanics in the United
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`States, constituting the country’s largest and most rapidly growing minority ethnic
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`group.54 Respondent’s packaging is bilingual, in Spanish and English, and its
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`original website ElMedicoFlanax.com was in Spanish.55
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`Petitioner Bayer Consumer Care AG owns a Mexican registration for the
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`trademark FLANAX
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`for pharmaceutical products, analgesics and anti-
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`inflammatories.56 The registration issued to a company named Syntex in 1978 and
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`was renewed November 9, 2003.57 Syntex was purchased by Hoffman-la Roche AG
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`52 The evidence in the trial record does not permit us to make a finding as to the date of
`first sale. Respondent’s FLANAX Registration, No. 2924440, identifies the date of first use
`as on or before March 1, 2004. Some evidence, designated confidential, indicates that
`marketing began in 2003, while there is other evidence that sales started in “mid-2004.”
`See also Respondent’s Brief, 126 TTABVUE at 5 (first use in commerce was on or before
`March 1, 2004), 9 (respondent commenced use of the mark on March 1, 2004); but see id. at
`4, 24, 25 (indicating that marketing and sales began in mid-2004).
`53 Exhibit M, Belcastro Decl. ¶ 10, 89 TTABVUE 179.
`54 Id. at ¶ 12, 89 TTABVUE 180.
`55 See Exhibit L, Belcastro Transcript at 21-22, 89 TTABVUE 90-91; id., deposition exhibit
`5, 82 TTABVUE 262-66; 82 TTABVUE 206-34 (website printouts).
`56 Bürgin Transcript ¶ 9 and Trial Exhibit 23, 106 TTABVUE 7, 31; see also Exhibit O, 96
`TTABVUE 5-208.
`57 Bürgin Transcript, Trial Exhibit 23, 106 TTABVUE 38-39.
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`Cancellation No. 92047741
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`in 1994, and petitioner took over OTC businesses from Roche in 2005.58 The
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`FLANAX registration was assigned from Syntex to petitioner in September 2005.59
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`FLANAX brand analgesic has been sold in Mexico since 1976.60 Bayer de
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`Mexico, S.A. de C.V., distributes FLANAX products in Mexico via a licensing
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`agreement with petitioner.61 Sales and advertising figures are designated
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`confidential, but petitioner presented evidence that FLANAX is the top-selling pain
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`reliever in Mexico and the number one brand for Bayer de Mexico.62 Although the
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`dosages differ from respondent’s FLANAX analgesic, petitioner’s Mexican FLANAX
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`contains the same active ingredient: naproxen sodium.
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`Petitioner’s FLANAX analgesic is not sold in the United States. However, an
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`affiliate of petitioner, Bayer Healthcare LLC, sells a naproxen sodium-based
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`analgesic in the United States under the brand name ALEVE.63 The same
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`employee of Bayer Healthcare, based in Morristown, New Jersey, was, until eight
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`days before her deposition, global brand director for both the ALEVE product and
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`the FLANAX product in Mexico.64
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`
`58 Id., ¶¶ 10-11, 106 TTABVUE 7.
`59 Id., Trial Exhibit 23, 106 TTABVUE 41, 45.
`60 Bandera Transcript 8:8-9:3, 92 TTABVUE 12-13. Respondent’s objections to this answer
`as hearsay and lacking foundation are denied.
`61 Bürgin Transcript ¶¶ 13, 19, 106 TTABVUE 7-8.
`62 Bandera Transcript 12:19-15:9, 92 TTABVUE 16-19; see also Petitioner’s Brief at 7.
`63 See Petitioner’s Brief at 9, 125 TTABVUE 14; Fleisher Transcript 4:15-5:23, 91
`TTABVUE 7-8; Exhibit F, 81 TTABVUE 152-65.
`64 Fleisher Transcript 7:25-8:24, 91 TTABVUE 11-12.
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`17
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`Cancellation No. 92047741
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`
`Analysis
`Section 14 of the Trademark Act allows for cancellation of a registration on
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`the Principal Register “by any person who believes that he is or will be damaged . . .
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`by the registration.” 15 U.S.C. § 1064. The party seeking cancellation must prove
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`two elements: (1) that it has standing, and (2) that there are valid grounds for
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`canceling the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
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`USPQ2d 1842, 1844 (Fed. Cir. 2000).
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`A.
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`Petitioner’s Standing
`The Federal Circuit has enunciated a liberal threshold for determining
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`standing. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
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`1760 (TTAB 2013). To establish standing, petitioner must prove that it has a “real
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`interest” in this cancellation proceeding and a “reasonable basis” for its belief in
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`damage. To prove a “real interest” in this case, petitioner must show that it has a
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`“direct and personal stake” in the outcome herein and is more than a “mere
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`intermeddler.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026-27
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`(Fed. Cir. 1999).
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`Respondent has contested petitioner’s standing at every stage of this
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`proceeding, including trial. In its brief, respondent makes several arguments why
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`petitioner allegedly lacks standing to bring this proceeding, grounded in the fact
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`that petitioner does not own a registration for the mark FLANAX in the United
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`States, has not used that mark in this country, and does not plan to use the mark
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`here. Respondent argues that “[g]oo