Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1176708
`
`Filing date:
`
`12/06/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92047741
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Bayer Consumer Care AG
`
`PHILLIP BARENGOLTS
`PATTISHALL MCAULIFFE NEWBURY ET AL
`200 S WACKER DRIVE, SUITE 2900
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: pb@pattishall.com
`Secondary Email(s): lrb@pattishall.com
`312-554-8000
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Submissions
`
`Jessica A. Ekhoff
`
`jae@pattishall.com, pb@pattishall.com, pam@pattishall.com
`
`/Jessica A. Ekhoff/
`
`12/06/2021
`
`Attachments
`
`Reply ISO Notification of Exhaustion of Appeals.pdf(3181531 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA1176708
`
`Filing date:
`
`12/06/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92047741
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Bayer Consumer Care AG
`
`PHILLIP BARENGOLTS
`PATTISHALL MCAULIFFE NEWBURY ET AL
`200 S WACKER DRIVE, SUITE 2900
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: pb@pattishall.com
`Secondary Email(s): lrb@pattishall.com
`312-554-8000
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Submissions
`
`Jessica A. Ekhoff
`
`jae@pattishall.com, pb@pattishall.com, pam@pattishall.com
`
`/Jessica A. Ekhoff/
`
`12/06/2021
`
`Attachments
`
`Reply ISO Notification of Exhaustion of Appeals.pdf(3181531 bytes )
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`__________________________________________
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`
`)
`Bayer Consumer Care AG,
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`
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`)
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`)
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`Opposer,
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`)
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`
`)
` v.
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`
`
`
`
`
`) Canc. No. 92047741
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`
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`
`
`)
`Belmora LLC,
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`
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`
`)
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`
`
`
`
`
`
`)
`
`
`Applicant.
`
`
`
`)
`__________________________________________)
`
`
`REPLY IN SUPPORT OF NOTIFICATION OF EXHAUSTION OF APPEALS OF
`CANCELLATION ORDER AND REQUEST FOR EXPUNGEMENT OF REG. NO.
`2,924,440 FROM THE REGISTER
`
`Bayer Consumer Care AG (“Bayer”) agrees with Belmora LLC (“Belmora”) that the
`
`facts underpinning Bayer’s misrepresentation of source claim under Section 14(3) are the same
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`as those supporting its claims under Section 43(a)(1)(A). 149 TTABVUE 2. Under the doctrine
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`of law of the case, however, Belmora has no further recourse to challenge the cancellation of its
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`registration and, therefore, it must now be expunged.
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`Procedural Background
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`On April 17, 2014, the Board ordered cancellation of Belmora’s FLANAX registration
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`(Reg. No. 2,924,440) based on misrepresentation of source. On September 6, 2018, the U.S.
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`District Court for the Eastern District of Virginia granted Bayer’s motion for summary judgment
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`affirming the Board’s cancellation order, holding that “[b]ecause Belmora has not offered any
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`new evidence, and the Court finds that the Board’s decision was not arbitrary, capricious, or
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`otherwise not in accordance with law, this Court affirms the TTAB decision.” Belmora, LLC v.
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`Bayer Consumer Care AG, 1:14-cv-00847-CMH-JFA (E.D.V.A. Sep. 6, 2018), Dkt. 280 at 21
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`(attached hereto as Exhibit A).
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`1710393v1
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`
`
`
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`On February 2, 2021, the U.S. Court of Appeals for the Fourth Circuit found that the
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`district court “recited sufficient facts showing that Belmora ‘blatantly misused the mark in a
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`manner calculated to trade on Bayer’s goodwill and reputation’” and accordingly affirmed the
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`lower court’s grant of summary judgment to Bayer. Belmora LLC v. Bayer Consumer Care AG
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`and Bayer HealthCare LLC, No. 18-2183 (4th Cir. 2021), Dkt. 70 at 24 (attached hereto as
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`Exhibit B) (internal edits and citation omitted).
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`The United States Supreme Court declined to give the issue further consideration, thus
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`making the Fourth Circuit decision final and unappealable. Belmora LLC v. Bayer Consumer
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`Care AG and Bayer HealthCare LLC, 1:14-cv-847 (E.D.Va.), Dkt. 297.
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`Belmora Can No Longer Appeal the Board’s Order Cancelling Its Registration
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`Having lost its bid for Supreme Court review, Belmora cannot make any further
`
`arguments to the district court regarding the Board’s cancellation order. The district court is now
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`bound by the Fourth Circuit’s decision affirming the cancellation order pursuant to the law of the
`
`case doctrine. See United States v. Miller, No. 17-CR-213, 2019 WL 6792762, at *4 (E.D. Va.
`
`Dec. 12, 2019); Edmonds v. Hughes Aircraft Co., No. CIV. A. 1:96-1368-A, 1998 WL 782016,
`
`at *6 (E.D. Va. Nov. 6, 1998); Bradley v. Baliles, 639 F. Supp. 680, 693 (E.D. Va. 1986), aff'd
`
`sub nom. Sch. Bd. of the City of Richmond, Va. v. Baliles, 829 F.2d 1308 (4th Cir. 1987); accord
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`In Re the Gov't of the D.C., 101 U.S.P.Q.2d 1588, 2012 WL 423804, at n.24 (T.T.A.B. 2012).
`
`No matter what the district court decides with respect to Bayer’s false association claim,
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`it cannot alter the Board’s order cancelling Belmora’s FLANAX registration. Because the
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`Board’s order is no longer capable of appeal, the FLANAX registration must now be removed
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`from the Principal Register without further delay.
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`
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`
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`-2-
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`
`
`Dated: December 6, 2021
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`
`
`
`
` Respectfully submitted,
`
`
`
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`
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`
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`
`
`
`
`/s/ Jessica A. Ekhoff
`
`Phillip Barengolts
`Jessica A. Ekhoff
`PATTISHALL, MCAULIFFE, NEWBURY,
`HILLIARD & GERALDSON LLP
`200 S. Wacker Dr., Ste. 2900
`Chicago, IL 60606
`(312) 554-7936
`(312) 554-7942
`pb@pattishall.com
`jae@pattishall.com
`Counsel to Bayer Consumer Care AG
`
`
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`-3-
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a copy of the foregoing REPLY IN SUPPORT OF
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`NOTIFICATION OF EXHAUSTION OF APPEALS OF CANCELLATION ORDER AND
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`REQUEST FOR EXPUNGEMENT OF REG. NO. 2,924,440 FROM THE REGISTER was
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`served upon the below-named counsel of record by email on December 6, 2021:
`
`Jeannette M. Carmadella
`Lutzker & Lutzker LLP
`1233 20th St. NW, Suite 703
`Washington, DC 20036
`jeannette@lutzker.com
`arnie@lutzker.com
`
`
`
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`/Jessica A. Ekhoff/
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`
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`-4-
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`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 1 of 21 PagelD# 5408
`
`
! " ! #$%
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Alexandria Division
`
`Civil Action No. 1:14-cv-00847
`
`) ) ) ) ) ) ) ) ) ) )
`
`BELMORA, LLC.,
`
`Plaintiff,
`
`Vv.
`
`BAYER CONSUMER CARE AG,
`et al.,
`
`Defendants-Consolidated }
`Plaintiffs,
`
`) ) ) ) ) )
`
`) ) ) )
`
`ar
`
`BELMORA, LLC,
`& DOES 1-10,
`BE ar: ;
`
`JAMIE BELCASTRO,
`INCLUSIVE,
`
`Consolidated Defendants.
`
`MEMORANDUM OPINION
`
`THIS
`
`MATTER
`
`comes
`
`before
`
`the
`
`Court
`
`on Plaintiff-
`
`Consolidated Defendant Belmora’s Motion for Summary Judgment and
`
`Defendant-Consolidated Plaintiff Bayer’s Motion
`
`for
`
`Summary
`
`Judgment.
`
`This case arises from Bayer's claims that Belmora’s FLANAX
`
`trademark should be cancelled because Belmora deceived customers
`
`into thinking that
`
`its FLANAX brand of pain relief medicine is
`
`the same
`
`FLANAX brand under which Bayer has sold pain relief
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 2 of 21 PagelD# 5409
`
`
! " ! #$%
`
`medicine in Mexico for decades. The Trademark Trial and Appeal
`
`Board (“TTAB”) cancelled Belmora’s
`
`trademark.
`
`Judge Gerald Lee
`
`of
`
`the Eastern District
`
`of Virginia
`
`reversed
`
`the MTTAB’s
`
`decision, which
`
`the Fourth Circuit
`
`reviewed,
`
`vacated,
`
`and
`
`remanded. The case is now remanded to this Court. The parties
`
`seek review of
`
`the TTAB decision and bring additional causes of
`
`action.
`
`I. Background
`
`Belmora is a limited liability company formed in 2002. It
`
`is owned and operated by Jamie Belcastro. Belmora operates in
`
`the United States and sells over-the-counter pain relief
`
`products under the FLANAX brand name. Belmora began selling an
`
`analgesic naproxen sodium tablet in the United States as FLANAX
`
`in 2004. On October 6, 2003, Belmora filed an application with
`
`the United States Patent and Trademark Office (“PTO”)
`
`to
`
`register the FLANAX mark for the analgesic tablets. The
`
`application was published for opposition on August 3, 2004, and
`
`the PTO issued the registration for the FLANAX mark on February
`
`TL gm
`
`ee OEY
`
`Bayer Consumer Care AG, a Swiss Corporation, Bayer
`
`Healthcare LLC, a Delaware limited liability company, and
`
`predecessors have sold analgesics, pharmaceutical products, and
`
`anti-inflammatories in Mexico under the Mexican-registered
`
`
`
`medicine in Mexico for decades. The Trademark Trial and Appeal
`
`Board (“TTAB”) cancelled Belmora’s
`
`trademark.
`
`Judge Gerald Lee
`
`of
`
`the Eastern District
`
`of Virginia
`
`reversed
`
`the MTTAB’s
`
`decision, which
`
`the Fourth Circuit
`
`reviewed,
`
`vacated,
`
`and
`
`remanded. The case is now remanded to this Court. The parties
`
`seek review of
`
`the TTAB decision and bring additional causes of
`
`action.
`
`I. Background
`
`Belmora is a limited liability company formed in 2002. It
`
`is owned and operated by Jamie Belcastro. Belmora operates in
`
`the United States and sells over-the-counter pain relief
`
`products under the FLANAX brand name. Belmora began selling an
`
`analgesic naproxen sodium tablet in the United States as FLANAX
`
`in 2004. On October 6, 2003, Belmora filed an application with
`
`the United States Patent and Trademark Office (“PTO”)
`
`to
`
`register the FLANAX mark for the analgesic tablets. The
`
`application was published for opposition on August 3, 2004, and
`
`the PTO issued the registration for the FLANAX mark on February
`
`TL gm
`
`ee OEY
`
`Bayer Consumer Care AG, a Swiss Corporation, Bayer
`
`Healthcare LLC, a Delaware limited liability company, and
`
`predecessors have sold analgesics, pharmaceutical products, and
`
`anti-inflammatories in Mexico under the Mexican-registered
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 3 of 21 PagelD# 5410
`
`
! "# ! $%&
`
`trademark FLANAX since the 1970s. Bayer does not possess a
`
`trademark for FLANAX in the United States.
`
`Bayer attempted to register FLANAX in the United States in
`
`2004 but the PTO rejected the application based on Belmora’s
`
`preexisting efforts to register the mark. Bayer has sold
`
`hundreds of millions of dollars of FLANAX products in Mexico.
`
`Bayer promotes FLANAX in Mexico,
`
`including in major cities near
`
`the United States-Mexico border. The 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, but
`
`Was never marketed or sold in the United States. Bayer has never
`
`received approval from the FDA to market or sell FLANAX in the
`
`United States.
`
`Belmora's early packaging closely mimicked Bayer’s Mexican
`
`FLANAX packaging,
`
`including a similar color scheme,
`
`font size,
`
`and typeface.* Belmora has since changed its packaging, but this
`
`modified scheme remains similar to that of Bayer’s FLANAX.
`
`In
`
`addition to similar packaging, Belmora made statements implying
`
`that its FLANAX brand was the same FLANAX product sold by Bayer
`
`in Mexico. Belmora’s marketing messages often suggested a
`
`historical connection between its FLANAX and Latino customers.
`
`* The TTAB found that Belmora copied the logo and trade dress of
`Bayer's FLANAX, See Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d
`1623, 2014 WL 1679146,at *11 (T.T.A.B. 2014).
`
`=
`
`
`
`trademark FLANAX since the 1970s. Bayer does not possess a
`
`trademark for FLANAX in the United States.
`
`Bayer attempted to register FLANAX in the United States in
`
`2004 but the PTO rejected the application based on Belmora’s
`
`preexisting efforts to register the mark. Bayer has sold
`
`hundreds of millions of dollars of FLANAX products in Mexico.
`
`Bayer promotes FLANAX in Mexico,
`
`including in major cities near
`
`the United States-Mexico border. The 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, but
`
`Was never marketed or sold in the United States. Bayer has never
`
`received approval from the FDA to market or sell FLANAX in the
`
`United States.
`
`Belmora's early packaging closely mimicked Bayer’s Mexican
`
`FLANAX packaging,
`
`including a similar color scheme,
`
`font size,
`
`and typeface.* Belmora has since changed its packaging, but this
`
`modified scheme remains similar to that of Bayer’s FLANAX.
`
`In
`
`addition to similar packaging, Belmora made statements implying
`
`that its FLANAX brand was the same FLANAX product sold by Bayer
`
`in Mexico. Belmora’s marketing messages often suggested a
`
`historical connection between its FLANAX and Latino customers.
`
`* The TTAB found that Belmora copied the logo and trade dress of
`Bayer's FLANAX, See Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d
`1623, 2014 WL 1679146,at *11 (T.T.A.B. 2014).
`
`=
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 4 of 21 PagelD# 5411
`
`
! " ! #$%
`
`As of the mid-2000s, no manufacturer had obtained FDA
`
`approval to produce naproxen sodium in liquidgel form. As a
`
`result, naproxen sodium liquidgels were not available to U.S.
`
`customers.
`
`In 2007, Banner Pharmacaps
`
`(“Banner”) received
`
`approval from the FDA to produce naproxen sodium liquidgels and
`
`entered into a supply agreement with Bayer. Bayer has since
`
`marketed Banner-manufactured naproxen sodium liquidgels to
`
`consumers under the ALEVE brand.
`
`In 2015, Banner sold its rights
`
`to the naproxen sodium liquidgels to Bionpharma. Bionpharma, as
`
`Banner's successor, was the only FDA approved source for
`
`naproxen sodium liquidgels. Bionpharma entered into a supply
`
`agreement with Bayer in January 2017.
`
`In addition to Bayer,
`
`Bionpharma supplies naproxen sodium liquidgels to national
`
`chains for private label sale.
`
`Belmora alleges that a third party, PL Developments, agreed
`
`to package naproxen sodium liquidgels that Belmora would sell to
`
`consumers as a FLANAX branded product. As the only source of
`
`naproxen sodium liquidgels, PL Developments needed to obtain the
`
`ligquidgels from Bionpharma. Belmora claims that when PL
`
`Developments approached Bionpharma and informed it that Belmora
`
`was the intended re-seller of the product, Bionpharma refused to
`
`supply the product.
`
`Belmora also alleges that Bayer is involved in grey market
`
`product sales. Bayer de Mexico, which is not a party to this
`
`4
`
`
`
`As of the mid-2000s, no manufacturer had obtained FDA
`
`approval to produce naproxen sodium in liquidgel form. As a
`
`result, naproxen sodium liquidgels were not available to U.S.
`
`customers.
`
`In 2007, Banner Pharmacaps
`
`(“Banner”) received
`
`approval from the FDA to produce naproxen sodium liquidgels and
`
`entered into a supply agreement with Bayer. Bayer has since
`
`marketed Banner-manufactured naproxen sodium liquidgels to
`
`consumers under the ALEVE brand.
`
`In 2015, Banner sold its rights
`
`to the naproxen sodium liquidgels to Bionpharma. Bionpharma, as
`
`Banner's successor, was the only FDA approved source for
`
`naproxen sodium liquidgels. Bionpharma entered into a supply
`
`agreement with Bayer in January 2017.
`
`In addition to Bayer,
`
`Bionpharma supplies naproxen sodium liquidgels to national
`
`chains for private label sale.
`
`Belmora alleges that a third party, PL Developments, agreed
`
`to package naproxen sodium liquidgels that Belmora would sell to
`
`consumers as a FLANAX branded product. As the only source of
`
`naproxen sodium liquidgels, PL Developments needed to obtain the
`
`ligquidgels from Bionpharma. Belmora claims that when PL
`
`Developments approached Bionpharma and informed it that Belmora
`
`was the intended re-seller of the product, Bionpharma refused to
`
`supply the product.
`
`Belmora also alleges that Bayer is involved in grey market
`
`product sales. Bayer de Mexico, which is not a party to this
`
`4
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 5 of 21 PagelD# 5412
`
`
! "# ! $%"
`
`lawsuit,
`
`lawfully sells FLANAX-branded naproxen sodium products
`
`in Mexico. It licenses use of the FLANAX trademark from Bayer
`
`Consumer Care AG. As the basis for its trademark infringement,
`
`unfair competition, and Tariff Act counterclaims, Belmora
`
`alleges that Bayer is involved in the importation and sale of
`
`Mexican FLANAX in the United States.
`
`PROCEDURAL HISTORY
`
`On June 29, 2007, Bayer petitioned the TTAB to cancel
`
`Belmora’s registration for the FLANAX mark. Bayer argued that
`
`Belmora’s use and registration of the FLANAX mark violated
`
`Article 6bis of the Paris Convention as made applicable by
`
`sections 44(b) and (h) of the Lanham Act,
`
`in addition to
`
`violating § 14(3) of the Lanham Act. Under § 14(3) of the Lanham
`
`Act, Bayer argued that Belmora used the FLANAX mark to
`
`misrepresent the source of the goods on which the mark was used.
`
`The TTAB dismissed Bayer’s Article 6bis claim but allowed
`
`the § 14(3) claim to proceed.
`
`In 2014, after discovery and a
`
`hearing,
`
`the TTAB issued a ruling canceling Belmora’s FLANAX
`
`registration pursuant to Section 14(3) of the Lanham Act, 15
`
`U.S.C.
`
`§ 1064(3). Bayer Consumer Care AG v. Belmora LLC, 2014 WL
`
`1679146 (T.T.A.B. 2014). The TTAB concluded that Belmora had
`
`misrepresented the source of the FLANAX goods and that the facts
`
`“d[id] not present a close case.” Id. at 32.
`
`The TTAB went on
`
`to say that Belmora 1) knew the favorable reputation of Bayer’s
`
`
`
`lawsuit,
`
`lawfully sells FLANAX-branded naproxen sodium products
`
`in Mexico. It licenses use of the FLANAX trademark from Bayer
`
`Consumer Care AG. As the basis for its trademark infringement,
`
`unfair competition, and Tariff Act counterclaims, Belmora
`
`alleges that Bayer is involved in the importation and sale of
`
`Mexican FLANAX in the United States.
`
`PROCEDURAL HISTORY
`
`On June 29, 2007, Bayer petitioned the TTAB to cancel
`
`Belmora’s registration for the FLANAX mark. Bayer argued that
`
`Belmora’s use and registration of the FLANAX mark violated
`
`Article 6bis of the Paris Convention as made applicable by
`
`sections 44(b) and (h) of the Lanham Act,
`
`in addition to
`
`violating § 14(3) of the Lanham Act. Under § 14(3) of the Lanham
`
`Act, Bayer argued that Belmora used the FLANAX mark to
`
`misrepresent the source of the goods on which the mark was used.
`
`The TTAB dismissed Bayer’s Article 6bis claim but allowed
`
`the § 14(3) claim to proceed.
`
`In 2014, after discovery and a
`
`hearing,
`
`the TTAB issued a ruling canceling Belmora’s FLANAX
`
`registration pursuant to Section 14(3) of the Lanham Act, 15
`
`U.S.C.
`
`§ 1064(3). Bayer Consumer Care AG v. Belmora LLC, 2014 WL
`
`1679146 (T.T.A.B. 2014). The TTAB concluded that Belmora had
`
`misrepresented the source of the FLANAX goods and that the facts
`
`“d[id] not present a close case.” Id. at 32.
`
`The TTAB went on
`
`to say that Belmora 1) knew the favorable reputation of Bayer’s
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 6 of 21 PagelD# 5413
`
`
! " ! #$%&
`
`FLANAX product, 2) “copied” Bayer’s packaging, and 3)
`
`“repeatedly invoked” that reputation when marketing its product
`
`in the United States, Id. at 35
`
`Following the TTAB’s ruling, Bayer filed suit in the
`
`Southern District of California alleging violations of the
`
`Lanham Act as well as three claims under California state law.
`
`See Bayer Consumer Care AG v. Belmora, LLC, No. 3:14-cv-01395
`
`(S.D. Cal.). Shortly after, Bayer filed a notice of voluntary
`
`dismissal because the “case was filed in the wrong district.”
`
`(Dkt. 37 at 3 n.2). On June 9, 2014, Bayer refiled its complaint
`
`in the Central District of California.
`
`Belmora appealed the TTAB’s cancellation order and elected
`
`to proceed with the appeal as a civil action in the Eastern
`
`District of Virginia. Belmora argued that the TTAB erred in
`
`concluding that Bayer had standing and /or a cause of action
`
`under § 14(3) and in finding that Belmora had misrepresented the
`
`source of its goods. Belmora also sought a declaration that its
`
`actions had not violated the false association and false
`
`advertising provisions of Lanham Act
`
`§ 43(a) as alleged in
`
`Bayer’s California lawsuit. Bayer filed a counterclaim
`
`challenging the TTAB’s dismissal of its Paris Convention treaty
`
`claims.
`
`The Central District of California case was transferred and
`
`consolidated with Belmora’s pending action in the Eastern
`
`
`
`FLANAX product, 2) “copied” Bayer’s packaging, and 3)
`
`“repeatedly invoked” that reputation when marketing its product
`
`in the United States, Id. at 35
`
`Following the TTAB’s ruling, Bayer filed suit in the
`
`Southern District of California alleging violations of the
`
`Lanham Act as well as three claims under California state law.
`
`See Bayer Consumer Care AG v. Belmora, LLC, No. 3:14-cv-01395
`
`(S.D. Cal.). Shortly after, Bayer filed a notice of voluntary
`
`dismissal because the “case was filed in the wrong district.”
`
`(Dkt. 37 at 3 n.2). On June 9, 2014, Bayer refiled its complaint
`
`in the Central District of California.
`
`Belmora appealed the TTAB’s cancellation order and elected
`
`to proceed with the appeal as a civil action in the Eastern
`
`District of Virginia. Belmora argued that the TTAB erred in
`
`concluding that Bayer had standing and /or a cause of action
`
`under § 14(3) and in finding that Belmora had misrepresented the
`
`source of its goods. Belmora also sought a declaration that its
`
`actions had not violated the false association and false
`
`advertising provisions of Lanham Act
`
`§ 43(a) as alleged in
`
`Bayer’s California lawsuit. Bayer filed a counterclaim
`
`challenging the TTAB’s dismissal of its Paris Convention treaty
`
`claims.
`
`The Central District of California case was transferred and
`
`consolidated with Belmora’s pending action in the Eastern
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 7 of 21 PagelD# 5414
`
`
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" ! #$%
`
`District of Virginia. Belmora then moved to dismiss Bayer’s §
`
`43(a) and § 14(3) claims. On February 6, 2015,
`
`the district
`
`court issued an opinion granting Belmora’s motion. The district
`
`court distilled the case into a single question of:
`
`Does the Lanham Act allow the owner of a foreign mark that
`is not registered in the United States and further has
`never used the mark in United States commerce to assert
`priority rights over a mark that is registered in the
`United States by another party and used in United States
`commerce?
`Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490, 495
`(E.D. Va., 2025) .
`The district court concluded that “[t]he answer is no”
`
`based on its reading of the Supreme Court’s decision in Lexmark
`
`int’l,
`
`Ine. w. Statrie ContxrealL Components, Inc., 134 S. Ct. 1377
`
`(2014). The Court dismissed Bayer’s false association and false
`
`advertising claims for lack of standing and reversed the TTAB’s
`
`§ 14(3) cancellation order.
`
`Following the district court’s ruling, Bayer filed a timely
`
`notice of appeal to the Fourth Circuit. The USPTO intervened to
`
`defend the TTAB’s decision to cancel Belmora’s registration. The
`
`Fourth Circuit vacated and remanded Judge Lee’s decision, and
`
`found that in applying the Lexmark framework, Bayer has standing
`
`to bring its unfair competition claims under the Lanham Act §
`
`43(a) and its cancellation claim under § 14(3). The Court ruled
`
`that “the Lanham Act authorizes [Bayer]
`
`to bring its § 14(3)
`
`action against Belmora” .. . and that “[Bayer’s] cancellation
`
`claim falls within the Lanham Act’s zone of interests because it
`
`
`
`District of Virginia. Belmora then moved to dismiss Bayer’s §
`
`43(a) and § 14(3) claims. On February 6, 2015,
`
`the district
`
`court issued an opinion granting Belmora’s motion. The district
`
`court distilled the case into a single question of:
`
`Does the Lanham Act allow the owner of a foreign mark that
`is not registered in the United States and further has
`never used the mark in United States commerce to assert
`priority rights over a mark that is registered in the
`United States by another party and used in United States
`commerce?
`Belmora LLC v. Bayer Consumer Care AG, 84 F. Supp. 3d 490, 495
`(E.D. Va., 2025) .
`The district court concluded that “[t]he answer is no”
`
`based on its reading of the Supreme Court’s decision in Lexmark
`
`int’l,
`
`Ine. w. Statrie ContxrealL Components, Inc., 134 S. Ct. 1377
`
`(2014). The Court dismissed Bayer’s false association and false
`
`advertising claims for lack of standing and reversed the TTAB’s
`
`§ 14(3) cancellation order.
`
`Following the district court’s ruling, Bayer filed a timely
`
`notice of appeal to the Fourth Circuit. The USPTO intervened to
`
`defend the TTAB’s decision to cancel Belmora’s registration. The
`
`Fourth Circuit vacated and remanded Judge Lee’s decision, and
`
`found that in applying the Lexmark framework, Bayer has standing
`
`to bring its unfair competition claims under the Lanham Act §
`
`43(a) and its cancellation claim under § 14(3). The Court ruled
`
`that “the Lanham Act authorizes [Bayer]
`
`to bring its § 14(3)
`
`action against Belmora” .. . and that “[Bayer’s] cancellation
`
`claim falls within the Lanham Act’s zone of interests because it
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 8 of 21 PagelD# 5415
`
`
!
" ! #$%%
`
`confronts the ‘deceptive and misleading use of marks’.” Belmora
`
`LLC v. Bayer Consumer Care AG, 819 F.3d 697, 715 (4° Cir, 2016).
`
`The Court went on to say that “Bayer has also adequately pled a
`
`proximately caused injury to survive Belmora’s Rule 12(c)
`
`motion” and that “the district court thus erred in reversing the
`
`TTAB’s decision cancelling the registration of Belmora’s FLANAX
`
`mark.” Id.
`
`Following remand from the
`
`4*® Circuit this case came back to
`
`the Eastern District of Virginia,
`
`this time in front of this
`
`Court following Judge Lee’s retirement. On return to district
`
`court Belmora filed counterclaims against Bayer’s claims that
`
`were consolidated from the California case. The Court now
`
`considers both Belmora and Bayer’s motions for summary judgment.
`
`Belmora asks the Court to grant summary judgment and dismiss
`
`Bayer's five (5) claims. Bayer asks the Court
`
`to grant summary
`
`judgment and dismiss Belmora’s seven (7) counterclaims,
`
`in
`
`addition to affirming the TTAB decision cancelling Belmora’s
`
`FLANAX trademark registration for misrepresentation.
`
`Belmora brings counterclaims against Bayer for
`
`(1)Registered Trademark Infringement under §§ 15 and 33(b) of
`
`the Lanham Act, 15 U.S.C. §§ 1065 and 115(b);
`
`(2) Common Law
`
`Trademark Infringement;
`
`(3) Unfair Competition and False
`
`Designation of Origin in violation of the Lanham Act 15 U.S.C.
`
`§
`
`1125(a) and common law;
`
`(4) Importation of Unauthorized Goods in
`
`
`
`confronts the ‘deceptive and misleading use of marks’.” Belmora
`
`LLC v. Bayer Consumer Care AG, 819 F.3d 697, 715 (4° Cir, 2016).
`
`The Court went on to say that “Bayer has also adequately pled a
`
`proximately caused injury to survive Belmora’s Rule 12(c)
`
`motion” and that “the district court thus erred in reversing the
`
`TTAB’s decision cancelling the registration of Belmora’s FLANAX
`
`mark.” Id.
`
`Following remand from the
`
`4*® Circuit this case came back to
`
`the Eastern District of Virginia,
`
`this time in front of this
`
`Court following Judge Lee’s retirement. On return to district
`
`court Belmora filed counterclaims against Bayer’s claims that
`
`were consolidated from the California case. The Court now
`
`considers both Belmora and Bayer’s motions for summary judgment.
`
`Belmora asks the Court to grant summary judgment and dismiss
`
`Bayer's five (5) claims. Bayer asks the Court
`
`to grant summary
`
`judgment and dismiss Belmora’s seven (7) counterclaims,
`
`in
`
`addition to affirming the TTAB decision cancelling Belmora’s
`
`FLANAX trademark registration for misrepresentation.
`
`Belmora brings counterclaims against Bayer for
`
`(1)Registered Trademark Infringement under §§ 15 and 33(b) of
`
`the Lanham Act, 15 U.S.C. §§ 1065 and 115(b);
`
`(2) Common Law
`
`Trademark Infringement;
`
`(3) Unfair Competition and False
`
`Designation of Origin in violation of the Lanham Act 15 U.S.C.
`
`§
`
`1125(a) and common law;
`
`(4) Importation of Unauthorized Goods in
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 9 of 21 PagelD# 5416
`
`
! " ! #$%
`
`violation of § 526 of the Tariff Act of 1930 (as amended, 19
`
`U.S.C.
`
`§ 1526);
`
`(5)
`
`Importation of Infringing Goods in violation
`
`of the Lanham Act 15 U.S.C.
`
`§ 1124;
`
`(6) Monopolization under
`
`Section 2 of the Sherman Act; and (7) Tortious Interference with
`
`Contract or Prospective Economic Advantage. Bayer brings claims
`
`against Belmora for (1) unfair competition under § 43(A) of the
`
`Lanham Act;
`
`(2) false advertising under § 43(a) of the Lanham
`
`Act;
`
`(3) unfair competition under Cal.Bus. & Prof. Code § 17200,
`
`et seq.;
`
`(4) false advertising under Cal.Bus. & Prof. Code §
`
`17500, et seq.; and (5) unfair competition under the common law
`
`of California.
`
`II. Standard of Review
`
`With
`
`respect
`
`to both Belmora
`
`and Bayer’s
`
`claims
`
`and
`
`counterclaims a summary judgment standard is appropriate. Under
`
`Federal Rule of Civil Procedure 56, a court should grant summary
`
`judgment
`
`if the pleadings and evidence show that
`
`there is no
`
`genuine dispute as
`
`to any material
`
`fact
`
`and that
`
`the moving
`
`party is entitled to judgment as a matter of
`
`law. Fed. R. Civ.
`
`P.
`
`56(c);
`
`see Celotex Corp.
`
`v. Catrett,
`
`477 U.S.
`
`317,
`
`322
`
`(1986).
`
`In reviewing a motion for
`
`summary judgment,
`
`the court
`
`views
`
`the facts in the light most
`
`favorable to the non-moving
`
`party. See Anderson v. Liberty Lobby,
`
`Inc.,
`
`477 U.S. 242,
`
`255
`
`(1986). Once a motion for summary judgment is properly made,
`
`the
`
`Opposing party has the burden to show that a genuine dispute of
`
`
`
`violation of § 526 of the Tariff Act of 1930 (as amended, 19
`
`U.S.C.
`
`§ 1526);
`
`(5)
`
`Importation of Infringing Goods in violation
`
`of the Lanham Act 15 U.S.C.
`
`§ 1124;
`
`(6) Monopolization under
`
`Section 2 of the Sherman Act; and (7) Tortious Interference with
`
`Contract or Prospective Economic Advantage. Bayer brings claims
`
`against Belmora for (1) unfair competition under § 43(A) of the
`
`Lanham Act;
`
`(2) false advertising under § 43(a) of the Lanham
`
`Act;
`
`(3) unfair competition under Cal.Bus. & Prof. Code § 17200,
`
`et seq.;
`
`(4) false advertising under Cal.Bus. & Prof. Code §
`
`17500, et seq.; and (5) unfair competition under the common law
`
`of California.
`
`II. Standard of Review
`
`With
`
`respect
`
`to both Belmora
`
`and Bayer’s
`
`claims
`
`and
`
`counterclaims a summary judgment standard is appropriate. Under
`
`Federal Rule of Civil Procedure 56, a court should grant summary
`
`judgment
`
`if the pleadings and evidence show that
`
`there is no
`
`genuine dispute as
`
`to any material
`
`fact
`
`and that
`
`the moving
`
`party is entitled to judgment as a matter of
`
`law. Fed. R. Civ.
`
`P.
`
`56(c);
`
`see Celotex Corp.
`
`v. Catrett,
`
`477 U.S.
`
`317,
`
`322
`
`(1986).
`
`In reviewing a motion for
`
`summary judgment,
`
`the court
`
`views
`
`the facts in the light most
`
`favorable to the non-moving
`
`party. See Anderson v. Liberty Lobby,
`
`Inc.,
`
`477 U.S. 242,
`
`255
`
`(1986). Once a motion for summary judgment is properly made,
`
`the
`
`Opposing party has the burden to show that a genuine dispute of
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 10 of 21 PagelD# 5417
`
`
! " ! #$%
`
`Material fact exists. See Matsushita Elec.
`
`Indus. Co. v. Zenith
`
`Radio Corp., 475 U.S. 574, 586-87 (1986).
`
`TTAB DECISION
`
`Section § 1071(b) of Title 15 of
`
`the Unites States Code
`
`permits a party dissatisfied with a TTAB decision to appeal
`
`to
`
`the United States Court of Appeals for the Federal Circuit or to
`
`bring a civil action in federal district court. See 15 U.S.C.
`
`§
`
`1071(a),
`
`(b).
`
`Im a 1071(b) action,
`
`the district court
`
`reviews
`
`the record de novo and acts as the finder of fact. However,
`
`in
`
`some situations consideration of
`
`the TTAB decision is permitted.
`
`Kappos vi Hyatt,
`
`132 S.Ct 1680,
`
`170g
`
`(2012),
`
`is instructive on
`
`this issue and is the primary case interpreting the patent and
`
`trademark civil action statutes.
`
`In Kappos,
`
`the Court adopted
`
`the Federal Circuit's rule that “the district court may,
`
`in its
`
`discretion,
`
`‘consider the proceedings before and findings of the
`
`Patent Office in deciding what weight
`
`to afford an applicant's
`
`newly-admitted evidence.’” Id. at 1700 (quoting Hyatt v. Kappos,
`
`625 F.3d 1320, 1335 (Fed.Cir.2010)).
`
`In sum,
`
`any new evidence
`
`submitted to the court
`
`on a
`
`disputed factual question is considered de novo, Hyatt II,
`
`132
`
`S. Ct. at 1700, while factual findings made by the Board which
`
`are
`
`untouched by
`
`new evidence presented to the
`
`court
`
`are
`
`reviewed under the substantial evidence standard mandated by the
`
`Administrative Procedure Act, Hyatt I, 625 F.3d at 1336.
`
`10
`
`
`
`Material fact exists. See Matsushita Elec.
`
`Indus. Co. v. Zenith
`
`Radio Corp., 475 U.S. 574, 586-87 (1986).
`
`TTAB DECISION
`
`Section § 1071(b) of Title 15 of
`
`the Unites States Code
`
`permits a party dissatisfied with a TTAB decision to appeal
`
`to
`
`the United States Court of Appeals for the Federal Circuit or to
`
`bring a civil action in federal district court. See 15 U.S.C.
`
`§
`
`1071(a),
`
`(b).
`
`Im a 1071(b) action,
`
`the district court
`
`reviews
`
`the record de novo and acts as the finder of fact. However,
`
`in
`
`some situations consideration of
`
`the TTAB decision is permitted.
`
`Kappos vi Hyatt,
`
`132 S.Ct 1680,
`
`170g
`
`(2012),
`
`is instructive on
`
`this issue and is the primary case interpreting the patent and
`
`trademark civil action statutes.
`
`In Kappos,
`
`the Court adopted
`
`the Federal Circuit's rule that “the district court may,
`
`in its
`
`discretion,
`
`‘consider the proceedings before and findings of the
`
`Patent Office in deciding what weight
`
`to afford an applicant's
`
`newly-admitted evidence.’” Id. at 1700 (quoting Hyatt v. Kappos,
`
`625 F.3d 1320, 1335 (Fed.Cir.2010)).
`
`In sum,
`
`any new evidence
`
`submitted to the court
`
`on a
`
`disputed factual question is considered de novo, Hyatt II,
`
`132
`
`S. Ct. at 1700, while factual findings made by the Board which
`
`are
`
`untouched by
`
`new evidence presented to the
`
`court
`
`are
`
`reviewed under the substantial evidence standard mandated by the
`
`Administrative Procedure Act, Hyatt I, 625 F.3d at 1336.
`
`10
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 11 of 21 PagelD# 5418
`
`
! " ! #$%
`
`ITI. Bayer’s Claims
`
`Bayer brings five (5) claims against Belmora. They include:
`
`1) unfair competition under § 43(A) of the Lanham Act;
`
`(2) false
`
`advertising under § 43(a) of the Lanham Act;
`
`(3) unfair
`
`competition under Cal.Bus. & Prof. Code § 17200, et seq.;
`
`(4)
`
`false advertising under Cal.Bus. & Prof. Code § 17500, et seq.;
`
`and (5) unfair competition under the common law of California.
`
`The Court finds that each of these claims is barred by the
`
`applicable statute of limitations period for the reasons stated
`
`below.
`
`Because the Lanham Act does not contain an express statute
`
`of limitations,
`
`the Court follows the traditional practice of
`
`borrowing the most analogous statute of limitations from state
`
`law.
`
`In this case, Bayer’s Complaint was originally filed in
`
`federal court in California and was transferred to this district
`
`under § 1404(a). Transfers under § 1404(a) are merely
`
`accommodations to efficiency and convenience and do not affect
`
`substantive rights. Van Dusen v. Barak, 376 U.S. 612 (1964).
`
`Accordingly, Bayer's claims are governed by California law.
`
`The Court turns first to Bayer’s unfair competition claim
`
`under § 43(a) (1) (a) (count I). The limitations period runs from
`
`the time the [claimant] knew or should have known about its
`
`Lanham Act claims. See, e.g., Karl Storz Endoscopy America v.
`
`Surgical Tech, 285 F.3d 848, 857 (9™ Cir. 2002). Courts in the
`
`ali
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 12 of 21 PagelD# 5419
`
`
! " ! #$%
`
`Ninth Circuit are split, however, over which “comparable”
`
`California statute applies to claims brought under the Lanham
`
`Act. One recent decision applied a three-year limitation based
`
`on the analogy to fraud. Small Axe Enters. V. Amscan, Inc., Case
`
`No. 16-cv-981, 2017 U.S. Dist. LEXIS 62900, at *10 (S.D. Cal.
`
`Apr. 24, 2017). Other decisions apply California’s four-year
`
`period for state trademark infringement and unfair competition
`
`claims. See,
`
`€.g.,
`
`Internet Specialites W.,
`
`Inc. v. Milon-
`
`Digiergie Enters., 559 F.3d 985, 990 n.2 (s™ Cir, 2009),
`
`Whether a three or four-year statute of limitations is
`
`applied in this case is immaterial. That is because Bayer’s
`
`filing of this action misses the statute of limitations by
`
`almost a decade. There are at least six different dates that
`
`establish that Bayer knew or should have known of its Lanham Act
`
`rights. These include:
`
`e The USPTO'’s issuance of a suspension letter on
`
`September 19, 2004 to Bayer’s predecessor-in-interest
`
`citing Belmora’s earlier ‘029 application;
`
`e® On May 16, 2005,
`
`the USPTO mailed Bayer’s predecessor-
`
`in-interest an office action refusal of its ‘157
`
`Application, citing Belmora’s then-issued ‘440
`
`Registration for the FLANAX mark.
`
`12
`
`
`
`Ninth Circuit are split, however, over which “comparable”
`
`California statute applies to claims brought under the Lanham
`
`Act. One recent decision applied a three-year limitation based
`
`on the analogy to fraud. Small Axe Enters. V. Amscan, Inc., Case
`
`No. 16-cv-981, 2017 U.S. Dist. LEXIS 62900, at *10 (S.D. Cal.
`
`Apr. 24, 2017). Other decisions apply California’s four-year
`
`period for state trademark infringement and unfair competition
`
`claims. See,
`
`€.g.,
`
`Internet Specialites W.,
`
`Inc. v. Milon-
`
`Digiergie Enters., 559 F.3d 985, 990 n.2 (s™ Cir, 2009),
`
`Whether a three or four-year statute of limitations is
`
`applied in this case is immaterial. That is because Bayer’s
`
`filing of this action misses the statute of limitations by
`
`almost a decade. There are at least six different dates that
`
`establish that Bayer knew or should have known of its Lanham Act
`
`rights. These include:
`
`e The USPTO'’s issuance of a suspension letter on
`
`September 19, 2004 to Bayer’s predecessor-in-interest
`
`citing Belmora’s earlier ‘029 application;
`
`e® On May 16, 2005,
`
`the USPTO mailed Bayer’s predecessor-
`
`in-interest an office action refusal of its ‘157
`
`Application, citing Belmora’s then-issued ‘440
`
`Registration for the FLANAX mark.
`
`12
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 13 of 21 PagelD# 5420
`
`
! "# ! $%&
`
`® On June 13, 2006 Bayer’s in-house counsel was aware of
`
`Belmora’s use of the FLANAX mark in commerce as noted
`
`in Bayer’s interrogatory responses;
`
`e
`
`In February 2009 the USPTO registered Belmora’s
`
`trademark for FLANAX;
`
`e Email’s between Bayer’s in-house counsel on July 30,
`
`2009; and
`
`e On August 19, 2009 there was a TTAB deposition of
`
`Jamie Belcastro, at some point before which Bayer
`
`independently discovered a version of Exhibit B to
`
`their Complaint that contained the statements on which
`
`their Lanham Act claims are premised.
`
`The Bayer Complaint was filed more than four years later then
`
`the time in which Bayer knew or should have known about its
`
`claims. Count I fails.
`
`Bayer’s claim for false advertising under §
`
`43 (a) (1) (b) (count II) is also barred under the statute of
`
`limitations. Federal courts apply California’s three-year
`
`statute of limitations for fraud under Cal. Civ. Prooc. Code
`
`§338(d). See Baby Trend,
`
`Inc. v. Playtex Prods., LLC, 2013 U.S.
`
`Dist. LEXIS 113558 (C.D. Cal. 2013). For the same reasons set
`
`forth above, Bayer’s second cause of action fails.
`
`Turning to Bayer’s California state law and common law
`
`claims for unfair competition and false advertising (counts III,
`
`13
`
`
`
`® On June 13, 2006 Bayer’s in-house counsel was aware of
`
`Belmora’s use of the FLANAX mark in commerce as noted
`
`in Bayer’s interrogatory responses;
`
`e
`
`In February 2009 the USPTO registered Belmora’s
`
`trademark for FLANAX;
`
`e Email’s between Bayer’s in-house counsel on July 30,
`
`2009; and
`
`e On August 19, 2009 there was a TTAB deposition of
`
`Jamie Belcastro, at some point before which Bayer
`
`independently discovered a version of Exhibit B to
`
`their Complaint that contained the statements on which
`
`their Lanham Act claims are premised.
`
`The Bayer Complaint was filed more than four years later then
`
`the time in which Bayer knew or should have known about its
`
`claims. Count I fails.
`
`Bayer’s claim for false advertising under §
`
`43 (a) (1) (b) (count II) is also barred under the statute of
`
`limitations. Federal courts apply California’s three-year
`
`statute of limitations for fraud under Cal. Civ. Prooc. Code
`
`§338(d). See Baby Trend,
`
`Inc. v. Playtex Prods., LLC, 2013 U.S.
`
`Dist. LEXIS 113558 (C.D. Cal. 2013). For the same reasons set
`
`forth above, Bayer’s second cause of action fails.
`
`Turning to Bayer’s California state law and common law
`
`claims for unfair competition and false advertising (counts III,
`
`13
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 14 of 21 PagelD# 5421
`
`
! " ! #$%
`
`Iv, V),
`
`the Court finds that these claims fail. These claims are
`
`based on the same set of facts as Bayer’s federal claims.
`
`Bayer’s third cause of action seeks relief for unfair
`
`competition under Cal. Bus.
`
`& Prof. Code § 17200. Under Cal.
`
`Bus. & Prof. Code § 17208, such an unfair competition claim is
`
`governed by a four-year statute of limitations. Bayer waited far
`
`more than four years after receiving notice - legal,
`
`constructive or actual - before seeking relief under this
`
`statute.
`
`Similarly, Bayer’s fourth cause of action,
`
`for false
`
`advertising under Cal. Bus.
`
`& Prof. Code § 17500 is also barred,
`
`being subject to a three-year statute of limitations. See Free
`
`Kick Master LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 25478, at
`
`*22 (N.D. Cal. 2016).
`
`Finally, while courts are in disagreement as to whether
`
`California's limitation period for common-law unfair competition
`
`claims is two years or four years,
`
`there is no dispute that any
`
`such claim accrued more than four years before Bayer filed its
`
`Complaint
`
`in 2014.
`
`For these reasons,
`
`the Court finds that Bayer’s claims
`
`fail.
`
`IV. Belmora’s Counterclaims
`
`Belmora brings seven (7) counterclaims against Bayer. They
`
`are:
`
`(1)Registered Trademark Infringement under §§ 15 and 33(b)
`
`14
`
`
`
`Iv, V),
`
`the Court finds that these claims fail. These claims are
`
`based on the same set of facts as Bayer’s federal claims.
`
`Bayer’s third cause of action seeks relief for unfair
`
`competition under Cal. Bus.
`
`& Prof. Code § 17200. Under Cal.
`
`Bus. & Prof. Code § 17208, such an unfair competition claim is
`
`governed by a four-year statute of limitations. Bayer waited far
`
`more than four years after receiving notice - legal,
`
`constructive or actual - before seeking relief under this
`
`statute.
`
`Similarly, Bayer’s fourth cause of action,
`
`for false
`
`advertising under Cal. Bus.
`
`& Prof. Code § 17500 is also barred,
`
`being subject to a three-year statute of limitations. See Free
`
`Kick Master LLC v. Apple Inc., 2016 U.S. Dist. LEXIS 25478, at
`
`*22 (N.D. Cal. 2016).
`
`Finally, while courts are in disagreement as to whether
`
`California's limitation period for common-law unfair competition
`
`claims is two years or four years,
`
`there is no dispute that any
`
`such claim accrued more than four years before Bayer filed its
`
`Complaint
`
`in 2014.
`
`For these reasons,
`
`the Court finds that Bayer’s claims
`
`fail.
`
`IV. Belmora’s Counterclaims
`
`Belmora brings seven (7) counterclaims against Bayer. They
`
`are:
`
`(1)Registered Trademark Infringement under §§ 15 and 33(b)
`
`14
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 15 of 21 PagelD# 5422
`
`
! "# ! $%"
`
`of the Lanham Act, 15 U.S.C. §§ 1065 and 115(b);
`
`(2) Common Law
`
`Trademark Infringement;
`
`(3) Unfair Competition and False
`
`Designation of Origin in violation of the Lanham Act 15 U.S.C.
`
`§
`
`1125(a) and common law;
`
`(4)Importation of Unauthorized Goods in
`
`violation of § 526 of the Tariff Act of 1930 (as amended, 19
`
`U.S.C.
`
`§ 1526);
`
`(5)
`
`Importation of Infringing Goods in violation
`
`of the Lanham Act 15 U.S.C.
`
`§ 1124;
`
`(6) Monopolization under
`
`Section 2 of the Sherman Act; and (7) Tortious Interference with
`
`Contract or Prospective Economic Advantage. The Court finds that
`
`Bayer is entitled to summary judgement on all of Belmora’s
`
`counterclaims.
`
`Belmora’s first through fifth counterclaims - for trademark
`
`infringement, unfair competition, and Tariff Act violations -
`
`are based on the same set of allegations - that Bayer allegedly
`
`facilitated and is responsible for the unlawful importation and
`
`sale of its Mexican FLANAX in the United States.
`
`To hold Bayer liable for trademark infringement or unfair
`
`competition (first, second, and third counterclaims), Belmora
`
`must show that Bayer used FLANAX in a manner likely to cause
`
`consumer confusion. Belmora, 819 F.3d at 708.
`
`To hold Bayer contributorily liable, Belmora must show that
`
`Bayer intentionally induced others to sell Bayer’s Mexican
`
`FLANAX in the U.S., or continued to supply its product to
`
`someone whom it knew or had reason to know was unlawfully
`
`15
`
`
`
`of the Lanham Act, 15 U.S.C. §§ 1065 and 115(b);
`
`(2) Common Law
`
`Trademark Infringement;
`
`(3) Unfair Competition and False
`
`Designation of Origin in violation of the Lanham Act 15 U.S.C.
`
`§
`
`1125(a) and common law;
`
`(4)Importation of Unauthorized Goods in
`
`violation of § 526 of the Tariff Act of 1930 (as amended, 19
`
`U.S.C.
`
`§ 1526);
`
`(5)
`
`Importation of Infringing Goods in violation
`
`of the Lanham Act 15 U.S.C.
`
`§ 1124;
`
`(6) Monopolization under
`
`Section 2 of the Sherman Act; and (7) Tortious Interference with
`
`Contract or Prospective Economic Advantage. The Court finds that
`
`Bayer is entitled to summary judgement on all of Belmora’s
`
`counterclaims.
`
`Belmora’s first through fifth counterclaims - for trademark
`
`infringement, unfair competition, and Tariff Act violations -
`
`are based on the same set of allegations - that Bayer allegedly
`
`facilitated and is responsible for the unlawful importation and
`
`sale of its Mexican FLANAX in the United States.
`
`To hold Bayer liable for trademark infringement or unfair
`
`competition (first, second, and third counterclaims), Belmora
`
`must show that Bayer used FLANAX in a manner likely to cause
`
`consumer confusion. Belmora, 819 F.3d at 708.
`
`To hold Bayer contributorily liable, Belmora must show that
`
`Bayer intentionally induced others to sell Bayer’s Mexican
`
`FLANAX in the U.S., or continued to supply its product to
`
`someone whom it knew or had reason to know was unlawfully
`
`15
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 16 of 21 PagelD# 5423
`
`
! " ! #$%&
`
`selling it here. See Inwood Labs.,
`
`Inc. v. Ives Labs., Inc., 456
`
`U.S. 844, 854 (1982).
`
`Belmora has not presented any evidence that Bayer has
`
`offered Mexican FLANAX for sale in the U.S.,
`
`that it has induced
`
`others to sell the product in the U.S., or that it has continued
`
`to supply the product to a party with knowledge or reason to
`
`know that party was selling it in the U.S. Belmora merely
`
`speculates that Bayer must have facilitated the sale of its
`
`Mexican FLANAX because Bayer lawfully sells FLANAX in Mexico and
`
`the product has made its way across the border. Mere speculation
`
`is insufficient to survive a motion for summary judgment.
`
`Counterclaims I, II, and III fail.
`
`The Court now turns to the fourth and fifth counterclaims.
`
`To prevail under § 526 of the Tariff Act (fourth counterclaim),
`
`or § 1124 of the Lanham Act (fifth counterclaim), Belmora must
`
`show that Bayer imported foreign products bearing the FLANAX
`
`mark without Belmora’s permission, or that Bayer knowingly or
`
`with willful blindness induced one or more third parties to
`
`import Bayer'’s Mexican FLANAX, or provided resources enabling
`
`then fe do Bo: 19 U.8.C..
`
`§ 1see; 15 U.8J6..
`
`§ 2124.
`
`As noted in the preceding section, Belmora has no evidence
`
`linking Bayer to the importation of Mexican FLANAX into the U.S.
`
`Belmora simply alleges without any evidence regarding when, how,
`
`where, or what Bayer allegedly imported, or to whom it provided
`
`16
`
`
`
`selling it here. See Inwood Labs.,
`
`Inc. v. Ives Labs., Inc., 456
`
`U.S. 844, 854 (1982).
`
`Belmora has not presented any evidence that Bayer has
`
`offered Mexican FLANAX for sale in the U.S.,
`
`that it has induced
`
`others to sell the product in the U.S., or that it has continued
`
`to supply the product to a party with knowledge or reason to
`
`know that party was selling it in the U.S. Belmora merely
`
`speculates that Bayer must have facilitated the sale of its
`
`Mexican FLANAX because Bayer lawfully sells FLANAX in Mexico and
`
`the product has made its way across the border. Mere speculation
`
`is insufficient to survive a motion for summary judgment.
`
`Counterclaims I, II, and III fail.
`
`The Court now turns to the fourth and fifth counterclaims.
`
`To prevail under § 526 of the Tariff Act (fourth counterclaim),
`
`or § 1124 of the Lanham Act (fifth counterclaim), Belmora must
`
`show that Bayer imported foreign products bearing the FLANAX
`
`mark without Belmora’s permission, or that Bayer knowingly or
`
`with willful blindness induced one or more third parties to
`
`import Bayer'’s Mexican FLANAX, or provided resources enabling
`
`then fe do Bo: 19 U.8.C..
`
`§ 1see; 15 U.8J6..
`
`§ 2124.
`
`As noted in the preceding section, Belmora has no evidence
`
`linking Bayer to the importation of Mexican FLANAX into the U.S.
`
`Belmora simply alleges without any evidence regarding when, how,
`
`where, or what Bayer allegedly imported, or to whom it provided
`
`16
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 17 of 21 PagelD# 5424
`
`
!
" ! #$%
`
`assistance. Mere conjecture is insufficient to survive a motion
`
`for summary judgment. Counts IV and V fail.
`
`Belmora’s sixth counterclaim is for monopolization under
`
`Section 2 of the Sherman Act. This claim revolves around
`
`Belmora’s inability to obtain a supply of naproxen sodium
`
`liquidgels from Bionpharma,
`
`the sole FDA-approved U.S. source.
`
`Belmora claims that Bayer has monopoly power in the market for
`
`branded naproxen sodium and asserted pressure on Bionpharma not
`
`to sell the liquidgels to Belmora. Based on these allegations,
`
`Belmora asserts that Bayer has monopolized and maintained its
`
`monopoly in the market for branded naproxen sodium in violation
`
`of Se&ckien 2.
`
`To prevail on a claim for monopolization under Section 2, a
`
`plaintiff must prove (1)
`
`the defendant’s “possession of monopoly
`
`power in the relevant market,” and (2)
`
`the defendant’s “willful
`
`acquisition or maintenance of that power as distinguished from
`
`growth or development as a consequence of a superior product,
`
`business acumen, or historic accident. United States v. Grinnall
`
`Corp., 384 U.S. 563, 570-71 (1966); Cavalier Telephone, LLC v.
`
`Verigor Va.;
`
`Ine.» 330 Fisd 176, 163 t4™ Cir. 2003).
`
`Monopoly power is the “power to control prices or exclude
`
`competition,” United States v. E.I. du Pont de Nemours & Co.,
`
`351 U.S. 377, 391 (1956), and normally requires the defendant to
`
`possess a market share of 70% or more, R.J. Reynolds Tobacco Co.
`
`17
`
`
`
`assistance. Mere conjecture is insufficient to survive a motion
`
`for summary judgment. Counts IV and V fail.
`
`Belmora’s sixth counterclaim is for monopolization under
`
`Section 2 of the Sherman Act. This claim revolves around
`
`Belmora’s inability to obtain a supply of naproxen sodium
`
`liquidgels from Bionpharma,
`
`the sole FDA-approved U.S. source.
`
`Belmora claims that Bayer has monopoly power in the market for
`
`branded naproxen sodium and asserted pressure on Bionpharma not
`
`to sell the liquidgels to Belmora. Based on these allegations,
`
`Belmora asserts that Bayer has monopolized and maintained its
`
`monopoly in the market for branded naproxen sodium in violation
`
`of Se&ckien 2.
`
`To prevail on a claim for monopolization under Section 2, a
`
`plaintiff must prove (1)
`
`the defendant’s “possession of monopoly
`
`power in the relevant market,” and (2)
`
`the defendant’s “willful
`
`acquisition or maintenance of that power as distinguished from
`
`growth or development as a consequence of a superior product,
`
`business acumen, or historic accident. United States v. Grinnall
`
`Corp., 384 U.S. 563, 570-71 (1966); Cavalier Telephone, LLC v.
`
`Verigor Va.;
`
`Ine.» 330 Fisd 176, 163 t4™ Cir. 2003).
`
`Monopoly power is the “power to control prices or exclude
`
`competition,” United States v. E.I. du Pont de Nemours & Co.,
`
`351 U.S. 377, 391 (1956), and normally requires the defendant to
`
`possess a market share of 70% or more, R.J. Reynolds Tobacco Co.
`
`17
`
`
`
`Case 1:14-cv-00847-CMH-JFA Document 280 Filed 09/06/18 Page 18 of 21 PagelD# 5425
`
`
!
" ! #$%%
`
`Phillip Morris Inc., 199 F.Supp.2d 362, 394 (M.D.N.C. 2002),
`
`aff'd, 67 F. App’x 810 (4° Cir. 2003) (per curiam). Thus,
`
`to
`
`prove that the defendant possesses monopoly power,
`
`the plaintiff
`
`must prove that there is a relevant market in which they possess
`
`70% or more market share. See, Berlyn Inc. v. Gazette
`
`Newspapers,
`
`Inc., 73 F.App’x 576, 582 (4™ Cir. 2003).
`
`Defining markets for antitrust analysis is an extremely
`
`complex task. Berlyn,
`
`Inc. v. Gazette Newspapers, Inc., 223
`
`F.Supp.2d 718, 727 (D.Md.2002), aff'd, 73 F.App’x 576 (4™ cir.
`
`2003). It is beyond the knowledge of a layperson to know whether
`
`a set of products compete with each other in a single market.
`
`That determination requires economic expertise. The Fourth
`
`Circuit has recognized that the proponent of an antitrust claim
`
`must present expert testimony to establish its proposed market
`
`definition and that, without such testimony,
`
`the claim fails for
`
`lack of co
`
`Phillip Morris Inc., 199 F.Supp.2d 362, 394 (M.D.N.C. 2002),
`
`aff'd, 67 F. App’x 810 (4° Cir. 2003) (per curiam). Thus,
`
`to
`
`prove that the defendant possesses monopoly power,
`
`the plaintiff
`
`must prove that there is a relevant market in which they possess
`
`70% or more market share. See, Berlyn Inc. v. Gazette
`
`Newspapers,
`
`Inc., 73 F.App’x 576, 582 (4™ Cir. 2003).
`
`Defining markets for antitrust analysis is an extremely
`
`complex task. Berlyn,
`
`Inc. v. Gazette Newspapers, Inc., 223
`
`F.Supp.2d 718, 727 (D.Md.2002), aff'd, 73 F.App’x 576 (4™ cir.
`
`2003). It is beyond the knowledge of a layperson to know whether
`
`a set of products compete with each other in a single market.
`
`That determination requires economic expertise. The Fourth
`
`Circuit has recognized that the proponent of an antitrust claim
`
`must present expert testimony to establish its proposed market
`
`definition and that, without such testimony,
`
`the claim fails for
`
`lack of co
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