Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA738199
`
`Filing date:
`
`04/06/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92060308
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Defendant
`Corcamore, LLC
`
`CHARLES L THOMASON
`55 W 12TH AVE
`COLUMBUS, OH 43210
`UNITED STATES
`thomason@spatlaw.com
`
`Other Motions/Papers
`
`Charles L. Thomason
`
`thomason@spatlaw.com
`
`/Charles L. Thomason/
`
`04/06/2016
`
`Attachments
`
`Sprout_Corca_NMo_Vacate_04_06_2016.pdf(210736 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No: 92 060308
`
`Registration No. 3708453
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SFM, LLC,
`
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`Corcamore, LLC
`
`
`
`
`
`
`
`
`Respondent-Registrant.
`
`
`
`
`
`
`
`}
`}
`}
`}
`}
`}
`}
`
`
`
`
`MOTION OF RESPONDENT-REGISTRANT
`
`FOR LEAVE TO FILE
`
`A MOTION TO VACATE.
`
`
`
`TO: Nicole M. Murray, Esq.
`
`Quarles & Brady LLP
`
`300 N. LaSalle St., Suite 4000
`
`Chicago, IL 60654
`Email: Nicole.Murray[at]quarles[dot]com
`
`
`PLEASE TAKE NOTICE that the Respondent Corcamore LLC moves for leave to file
`
`a motion to vacate the ruling, by the Board attorney at Dkt. #14, which denied Respondent’s
`
`Rule 12(b) motion to dismiss that challenged petitioner’s allegations of standing, and also, to
`
`vacate the ruling of the Board, at Dkt. #28, which denied Respondent’s motion for
`
`reconsideration of the Rule 12(b) motion to dismiss that challenged petitioner’s allegations of
`
`standing, on the basis of Lexmark Int'l, Inc. v. Static Control Components, Inc., ––– U.S. ––––,
`
`109 USPQ2d 2062 (2014) and Belmora LLC v. Bayer Consumer Care AG, --- F.Supp.3d --- 115
`
`USPQ2d 1032, 1038 (E.D. Va. 2015). Now that the Fourth Circuit Court of Appeals has ruled
`
`that the Lexmark two-prong standard for standing applies to Section 14 petitions for cancellation,
`
`the prior contrary rulings in this Section 14 matter at Dkt. #14 and Dkt. #28 should be vacated.
`
`Belmora LLC v. Bayer Consumer Care AG, --- F.3d --- (4th Cir. Mar. 23, 2016).
`
`Entry of a thirty-day briefing schedule is requested.
`
`

`
`Based up the record before it, and the now-prevailing authorities, the Board erred in
`
`reaching the order or decisions it issued at Dkt. #14 and Dkt. #28. These orders were “at least in
`
`part if not entirely, based on law that has since” been corrected by a U.S. Court of Appeals.
`
`Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1368 (Fed. Cir. 2004).
`
`Leave to file the motion is requested per the ruling requiring “prior Board permission.”
`
`Respondent would present its motion to vacate on the basis of the now-controlling law. 
`
`
`6 APR 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
` ~ S ~ /Charles L. Thomason/
`Charles L. Thomason
`55 W. 12th Ave.
`Columbus, OH 43210
`Email: Thomason[at]spatlaw[dot]com
`Telep. (502) 349-7227
`Attorney for Respondent-Registrant
`
`

`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on this 6th day of April, 2016, I electronically filed the foregoing
`
`Notice of Motion, and mailed a copy to the attorneys for the Petitioner, directed to the address of
`
`the attorney indicated below:
`
`Nicole M. Murray, Esq.
`Quarles & Brady LLP
`300 N. LaSalle St., Suite 4000
`Chicago, IL 60654
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` ~ S ~ /Charles L. Thomason/
`Charles L. Thomason
`
`
`
`Date: 6 APR 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`       
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 1 of 35
`
`
`
`
`
`
`
`
`
`PUBLISHED
`
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`
`No. 15-1335
`
`
`BELMORA LLC,
`
`
`
`Plaintiff - Appellee,
`
`v.
`
`
`
`
`
`
`BAYER CONSUMER CARE AG, a Swiss corporation; BAYER
`HEALTHCARE LLC, a Delaware Limited Liability Company,
`
`
`
`Defendants - Consolidated Plaintiffs - Appellants,
`
`v.
`
`
`
`
`
`
`BELMORA LLC, a Virginia Limited Liability Company; JAMIE
`BELCASTRO, an individual; DOES, 1-10, inclusive,
`
`
`
`Consolidated Defendants - Appellees,
`
`and
`
`
`
`
`
`
`MICHELLE K. LEE, Undersecretary for Intellectual Property
`and Director of the United States Patent and Trademark
`Office (Director),
`
`
`
`Intervenor.
`
`
`
`
`---------------------
`
`AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION,
`
`
`
`Amicus Curiae.
`
`
`
`
`
`
`Appeal from the United States District Court for the Eastern
`District of Virginia, at Alexandria. Gerald Bruce Lee, District
`Judge. (1:14-cv-00847-GBL-JFA)
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 2 of 35
`
`
`
`
`
`
`
`Argued: October 27, 2015
`
`Decided: March 23, 2016
`
`
`Before AGEE, FLOYD, and THACKER, Circuit Judges.
`
`
`Vacated and remanded by published opinion. Judge Agee wrote the
`opinion, in which Judge Floyd and Judge Thacker joined.
`
`
`ARGUED: Bradley Louis Cohn, PATTISHALL, MCAULIFFE, NEWBURY,
`HILLIARD & GERALDSON LLP, Chicago, Illinois, for Appellants.
`Martin Schwimmer, LEASON ELLIS LLP, White Plains, New York, for
`Appellee. Lewis Yelin, UNITED STATES DEPARTMENT OF JUSTICE,
`Washington, D.C., for Intervenor. ON BRIEF: Phillip Barengolts,
`Andrew R.W. Hughes, PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD &
`GERALDSON LLP, Chicago, Illinois; Robert J. Shaughnessy, Eric C.
`Wiener, WILLIAMS & CONNOLLY LLP, Washington, D.C., for
`Appellants. Craig C. Reilly, Alexandria, Virginia; John L.
`Welch, WOLF, GREENFIELD & SACKS, P.C., Boston, Massachusetts;
`Lauren B. Sabol, LEASON ELLIS LLP, White Plains, New York;
`Rebecca Tushnet, GEORGETOWN UNIVERSITY LAW CENTER, Washington,
`D.C., for Appellees. Mark R. Freeman, Civil Division, UNITED
`STATES DEPARTMENT OF JUSTICE, Washington, D.C.; Dana J. Boente,
`United States Attorney, Benjamin C. Mizer, Principal Deputy
`Assistant Attorney General, OFFICE OF THE UNITED STATES
`ATTORNEY, Washington, D.C.; Nathan K. Kelley, Solicitor,
`Christina J. Hieber, Associate Solicitor, Mary Beth Walker,
`Associate Solicitor, Benjamin T. Hickman, Associate Solicitor,
`UNITED STATES PATENT AND TRADEMARK OFFICE, Alexandria, Virginia,
`for Intervenor. Sharon A. Israel, President, AMERICAN
`INTELLECTUAL
`PROPERTY LAW ASSOCIATION, INC., Arlington,
`Virginia; Jennifer L. Kovalcik, STITES & HARBISON, PLLC,
`Nashville, Tennessee, for Amicus Curiae.
`
`
`
`2
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 3 of 35
`
`AGEE, Circuit Judge:
`
`In this unfair competition case, we consider whether the
`
`Lanham Act permits the owner of a foreign trademark and its
`
`sister company to pursue false association, false advertising,
`
`and trademark cancellation claims against the owner of the same
`
`mark in the United States. Bayer Consumer Care AG (“BCC”) owns
`
`the trademark “FLANAX” in Mexico and has sold naproxen sodium
`
`pain relievers under that mark in Mexico (and other parts of
`
`Latin America) since the 1970s. Belmora LLC owns the FLANAX
`
`trademark in the United States and has used it here since 2004
`
`in the sale of its naproxen sodium pain relievers. BCC and its
`
`U.S. sister company Bayer HealthCare LLC (“BHC,” and
`
`collectively with BCC, “Bayer”) contend that Belmora used the
`
`FLANAX mark to deliberately deceive Mexican-American consumers
`
`into thinking they were purchasing BCC’s product.
`
`BCC successfully petitioned the U.S. Trademark Trial and
`
`Appeal Board (“TTAB”) to cancel Belmora’s registration for the
`
`FLANAX mark based on deceptive use. Belmora appealed the TTAB’s
`
`decision to the district court. In the meantime, BCC filed a
`
`separate complaint for false association against Belmora under
`
`§ 43 of the Lanham Act, 15 U.S.C. § 1125, and in conjunction
`
`with BHC, a claim for false advertising. After the two cases
`
`were consolidated, the district court reversed the TTAB’s
`
`
`
`3
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 4 of 35
`
`cancellation order and dismissed the false association and false
`
`advertising claims.
`
`Bayer appeals those decisions. For the reasons outlined
`
`below, we vacate the judgment of the district court and remand
`
`this case for further proceedings consistent with this opinion.
`
`I. Background
`
`This appeal comes to us following the district court’s
`
`grant of Belmora’s Federal Rule of Civil Procedure 12(b)(6)
`
`motion to dismiss Bayer’s complaint and Belmora’s Rule 12(c)
`
`motion for judgment on the pleadings on the trademark
`
`cancellation claim. In both circumstances, we “assume all well-
`
`pled facts to be true and draw all reasonable inferences in
`
`favor of” Bayer as the plaintiff. Cooksey v. Futrell, 721 F.3d
`
`226, 234 (4th Cir. 2013).1
`
`A. The FLANAX Mark
`
`BCC registered the trademark FLANAX in Mexico for
`
`pharmaceutical products, analgesics, and anti-inflammatories.
`
`It has sold naproxen sodium tablets under the FLANAX brand in
`
`Mexico since 1976. FLANAX sales by BCC have totaled hundreds of
`
`millions of dollars, with a portion of the sales occurring in
`
`
`1 We have omitted internal quotation marks, alterations, and
`citations here and throughout this opinion, unless otherwise
`noted.
`
`
`
`4
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 5 of 35
`
`Mexican cities near the United States border. BCC’s FLANAX
`
`brand is well-known in Mexico and other Latin American
`
`countries, as well as to Mexican-Americans and other Hispanics
`
`in the United States, but BCC has never marketed or sold its
`
`FLANAX in the United States. Instead, BCC’s sister company,
`
`BHC, sells naproxen sodium pain relievers under the brand ALEVE
`
`in the United States market.
`
`Belmora LLC began selling naproxen sodium tablets in the
`
`United States as FLANAX in 2004. The following year, Belmora
`
`registered the FLANAX mark in the United States. Belmora’s
`
`early FLANAX packaging (below, left) closely mimicked BCC’s
`
`Mexican FLANAX packaging (right), displaying a similar color
`
`scheme, font size, and typeface.
`
`
`
`
`
`5
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 6 of 35
`
`J.A. 145. Belmora later modified its packaging (below), but the
`
`color scheme, font size, and typeface remain similar to that of
`
`BCC’s FLANAX packaging.
`
`
`
`Id.
`
`In addition to using similar packaging, Belmora made
`
`statements implying that its FLANAX brand was the same FLANAX
`
`product sold by BCC in Mexico. For example, Belmora circulated
`
`a brochure to prospective distributors that stated,
`
`For generations, Flanax has been a brand that Latinos
`have turned to for various common ailments. Now you
`too can profit from this highly recognized topselling
`brand among Latinos. Flanax is now made in the U.S.
`and continues to show record sales growth everywhere
`it is sold. Flanax acts as a powerful attraction for
`Latinos by providing them with products they know,
`trust and prefer.
`
`J.A. 196. Belmora also employed telemarketers and provided them
`
`with a script containing similar statements. This sales script
`
`stated that Belmora was “the direct producers of FLANAX in the
`
`US” and that “FLANAX is a very well known medical product in the
`
`Latino American market, for FLANAX is sold successfully in
`
`
`
`6
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 7 of 35
`
`Mexico.” Id. Belmora’s “sell sheet,” used to solicit orders
`
`from retailers, likewise claimed that “Flanax products have been
`
`used [for] many, many years in Mexico” and are “now being
`
`produced in the United States by Belmora LLC.” Id.
`
`Bayer points to evidence that these and similar materials
`
`resulted in Belmora’s distributors, vendors, and marketers
`
`believing that its FLANAX was the same as or affiliated with
`
`BCC’s FLANAX. For instance, Belmora received questions
`
`regarding whether it was legal for FLANAX to have been imported
`
`from Mexico. And an investigation of stores selling Belmora’s
`
`FLANAX “identified at least 30 [purchasers] who believed that
`
`the Flanax products . . . were the same as, or affiliated with,
`
`the Flanax products they knew from Mexico.” J.A. 416.
`
`B. Proceedings Below
`
`1.
`
`In 2007, BCC petitioned the TTAB to cancel Belmora’s
`
`registration for the FLANAX mark, arguing 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.” J.A. 89. BCC also sought cancellation of
`
`Belmora’s registration under § 14(3) of the Lanham Act because
`
`Belmora had used the FLANAX mark “to misrepresent the source of
`
`
`
`7
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 8 of 35
`
`the goods . . . [on] which the mark is used.” Id.; see also
`
`Lanham Act § 14(3), 15 U.S.C. § 1064(3).
`
`The TTAB dismissed BCC’s Article 6bis claim, concluding
`
`that Article 6bis “is not self-executing” and that § 44 of the
`
`Lanham Act did not provide “an independent basis for
`
`cancellation.” J.A. 95. However, the TTAB allowed Bayer’s
`
`§ 14(3) claim to proceed. In 2014, after discovery and a
`
`hearing, the TTAB ordered cancellation of Belmora’s FLANAX
`
`registration, concluding that Belmora had misrepresented the
`
`source of the FLANAX goods and that the facts “d[id] not present
`
`a close case.” J.A. 142. The TTAB noted that Belmora 1) knew
`
`the favorable reputation of Bayer’s FLANAX product, 2) “copied”
`
`Bayer’s packaging, and 3) “repeatedly invoked” that reputation
`
`when marketing its product in the United States. J.A. 143-45.
`
`2.
`
`Shortly after the TTAB’s ruling, Bayer filed suit in the
`
`Southern District of California, alleging that 1) BCC was
`
`injured by Belmora’s false association with its FLANAX product
`
`in violation of Lanham Act § 43(a)(1)(A), and 2) BCC and BHC
`
`were both injured by Belmora’s false advertising of FLANAX under
`
`§ 43(a)(1)(B). The complaint also alleged three claims under
`
`California state law.
`
`
`
`8
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 9 of 35
`
`Belmora meanwhile appealed the TTAB’s cancellation order
`
`and elected to proceed with the appeal as a civil action in the
`
`Eastern District of Virginia.2 It 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. J.A. 218. Belmora also sought a
`
`declaration that its actions had not violated the false
`
`association and false advertising provisions of Lanham Act
`
`§ 43(a), as Bayer had alleged in the California district court
`
`proceeding. Bayer filed a counterclaim challenging the TTAB’s
`
`dismissal of its Paris Convention treaty claims.
`
`The California case was transferred to the Eastern District
`
`of Virginia and consolidated with Belmora’s pending action.
`
`Belmora then moved the district court to dismiss Bayer’s § 43(a)
`
`claims under Rule 12(b)(6) and for judgment on the pleadings
`
`under Rule 12(c) on the § 14(3) claim. On February 6, 2015,
`
`after two hearings, the district court issued a memorandum
`
`opinion and order ruling in favor of Belmora across the board.
`
`The district court acknowledged that “Belmora’s FLANAX
`
`. . . has a similar trade dress to Bayer’s FLANAX and is
`
`
`2 A party to a cancellation proceeding who is dissatisfied
`with the TTAB’s decision may either “appeal to” the U.S. Court
`of Appeals for the Federal Circuit, 15 U.S.C. § 1071(a), or
`elect to “have remedy by a civil action” in the district court,
`id. § 1071(b). Belmora chose the latter option.
`
`
`
`9
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 10 of 35
`
`marketed in such a way that capitalizes on the goodwill of
`
`Bayer’s FLANAX.” J.A. 475. It nonetheless “distilled” the case
`
`“into one single question”:
`
`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?
`
`J.A. 476. The district court concluded that “[t]he answer is
`
`no” based on its reading of the Supreme Court’s decision in
`
`Lexmark International, Inc. v. Static Control Components, Inc.,
`
`134 S. Ct. 1377 (2014). J.A. 476. Accordingly, the district
`
`court dismissed Bayer’s false association and false advertising
`
`claims for lack of standing. At the same time, it reversed the
`
`TTAB’s § 14(3) cancellation order.
`
`Bayer filed a timely notice of appeal, and we have
`
`jurisdiction under 28 U.S.C. § 1291. The U.S. Patent and
`
`Trademark Office (“USPTO”) intervened to defend the TTAB’s
`
`decision to cancel Belmora’s registration and to argue that the
`
`Lanham Act conforms to the United States’ commitments in Article
`
`6bis of the Paris Convention.3
`
`
`3 The district court had agreed with the TTAB that Article
`6bis does not create an independent cause of action for the
`cancellation of Belmora’s FLANAX registration. Because Bayer
`appears to have abandoned its treaty claims on appeal and their
`resolution is not necessary to our decision, we do not address
`any issue regarding the Paris Convention arguments.
`
`
`
`10
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 11 of 35
`
`II. Discussion
`
`We review de novo the district court’s decision to dismiss
`
`a proceeding under Rules 12(b)(6) and 12(c), accepting as true
`
`all well-pleaded allegations in the plaintiff’s complaint and
`
`drawing all reasonable factual inferences in the plaintiff’s
`
`favor. Priority Auto Grp., Inc. v. Ford Motor Co., 757 F.3d
`
`137, 139 (4th Cir. 2014); see also Bell Atl. Corp. v. Twombly,
`
`550 U.S. 544, 555–56 (2007). In ruling on a motion to dismiss,
`
`“a court evaluates the complaint in its entirety, as well as
`
`documents attached or incorporated into the complaint.” E.I. du
`
`Pont de Nemours & Co. v. Kolon Indus., Inc., 637 F.3d 435, 448
`
`(4th Cir. 2011).
`
`A. False Association and False Advertising Under Section 43(a)
`
`The district court dismissed Bayer’s false association4 and
`
`false advertising claims because, in its view, the claims failed
`
`to satisfy the standards set forth by the Supreme Court in
`
`Lexmark. At the core of the district court’s decision was its
`
`conclusion that 1) Bayer’s claims fell outside the Lanham Act’s
`
`“zone of interests” –- and are not cognizable -- “because Bayer
`
`
`4 As the district court pointed out, we have sometimes
`denominated Lanham Act § 43(a)(1)(A) claims as “false
`designation” claims. We think it preferable to follow the
`Supreme Court’s terminology in Lexmark and instead refer to such
`claims as those of “false association,” although the terms can
`often be used interchangeably.
`
`
`
`11
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 12 of 35
`
`does not possess a protectable interest in the FLANAX mark in
`
`the United States,” J.A. 485, and 2) that a “cognizable economic
`
`loss under the Lanham Act” cannot exist as to a “mark that was
`
`not used in United States commerce.” J.A. 488-89.
`
`On appeal, Bayer contends these conclusions are erroneous
`
`as a matter of law because they conflict with the plain language
`
`of § 43(a) and misread Lexmark.
`
`1.
`
`“While much of the Lanham Act addresses the registration,
`
`use, and infringement of trademarks and related marks, § 43(a)
`
`. . . goes beyond trademark protection.” Dastar Corp. v.
`
`Twentieth Century Fox Film Corp., 539 U.S. 23, 28-29 (2003).
`
`Written in terms of the putative defendant’s conduct, § 43(a)
`
`sets forth unfair competition causes of action for false
`
`association and false advertising:
`
`Any person who, on or in connection with any goods or
`services, or any container for goods, uses in commerce
`any word, term, name, symbol, or device, or any
`combination thereof, or any false designation of
`origin, false or misleading description of fact, or
`false or misleading representation of fact, which --
`
`(A) [False Association:] is likely to cause
`confusion, or to cause mistake, or to deceive as
`to the affiliation, connection, or association of
`such person with another person, or as to the
`origin, sponsorship, or approval of his or her
`goods, services, or commercial activities by
`another person, or
`
`
`
`12
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 13 of 35
`
`commercial
`in
`Advertising:]
`[False
`(B)
`advertising or promotion, misrepresents the
`nature, characteristics, qualities, or geographic
`origin of his or her or another person’s goods,
`services, or commercial activities,
`
`shall be liable in a civil action by any person who
`believes that he or she is or is likely to be damaged
`by such act.
`
`Lanham Act § 43(a)(1), 15 U.S.C. § 1125(a)(1). Subsection A,
`
`which creates liability for statements as to “affiliation,
`
`connection, or association” of goods, describes the cause of
`
`action known as “false association.” Subsection B, which
`
`creates
`
`liability
`
`for
`
`“misrepresent[ing]
`
`the
`
`nature,
`
`characteristics, qualities, or geographic origin” of goods,
`
`defines the cause of action for “false advertising.”
`
`Significantly, the plain language of § 43(a) does not
`
`require that a plaintiff possess or have used a trademark in
`
`U.S. commerce as an element of the cause of action. Section
`
`43(a) stands in sharp contrast to Lanham Act § 32, which is
`
`titled as and expressly addresses “infringement.” 15 U.S.C.
`
`§ 1114 (requiring for liability the “use in commerce” of “any
`
`reproduction, counterfeit, copy, or colorable imitation of a
`
`registered mark” (emphasis added)). Under § 43(a), it is the
`
`defendant’s use in commerce -- whether of an offending “word,
`
`term, name, symbol, or device” or of a “false or misleading
`
`description [or representation] of fact” -- that creates the
`
`injury under the terms of the statute. And here the alleged
`
`
`
`13
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 14 of 35
`
`offending “word, term, name, symbol, or device” is Belmora’s
`
`FLANAX mark.
`
`What § 43(a) does require is that Bayer was “likely to be
`
`damaged” by Belmora’s “use[] in commerce” of its FLANAX mark and
`
`related advertisements. The Supreme Court recently considered
`
`the breadth of this “likely to be damaged” language in Lexmark,
`
`a false advertising case arising from a dispute in the used-
`
`printer-cartridge market. 134 S. Ct. at 1383, 1388. The lower
`
`courts in Lexmark had analyzed the case in terms of “prudential
`
`standing” -– that is, on grounds that are “prudential” rather
`
`than constitutional. Id. at 1386. The Supreme Court, however,
`
`observed that the real question in Lexmark was “whether Static
`
`Control has a cause of action under the statute.” Id. at 1387.
`
`This query, in turn, hinged on “a straightforward question of
`
`statutory interpretation” to which it applied “traditional
`
`principles” of interpretation. Id. at 1388. As a threshold
`
`matter, the Supreme Court noted that courts must be careful not
`
`to import requirements into this analysis that Congress has not
`
`included in the statute:
`
`We do not ask whether in our judgment Congress should
`have authorized Static Control’s suit, but whether
`Congress in fact did so. Just as a court cannot apply
`its independent policy judgment to recognize a cause
`of action that Congress has denied, it cannot limit a
`cause of action that Congress has created merely
`because ‘prudence’ dictates.
`
`
`
`14
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 15 of 35
`
`Id. The Court concluded that § 43(a)’s broad authorization --
`
`permitting suit by “any person who believes that he or she is or
`
`is likely to be damaged” -- should not be taken “literally” to
`
`reach the limits of Article III standing, but is framed by two
`
`“background principles,” which may overlap. Id.
`
`First, a plaintiff’s claim must fall within the “zone of
`
`interests” protected by the statute. Id. The scope of the zone
`
`of interests is not “especially demanding,” and the plaintiff
`
`receives the “benefit of any doubt.” Id. at 1389. Because the
`
`Lanham Act contains an “unusual, and extraordinarily helpful”
`
`purpose statement in § 45, identifying the statute’s zone of
`
`interests “requires no guesswork.” Id. Section 45 provides:
`
`The intent of this chapter is to regulate commerce
`within the control of Congress by making actionable
`the deceptive and misleading use of marks in such
`commerce; to protect registered marks used in such
`commerce from interference by State, or territorial
`legislation; to protect persons engaged in such
`commerce against unfair competition; to prevent fraud
`and deception in such commerce by the use of
`reproductions, copies, counterfeits, or colorable
`imitations of registered marks; and to provide rights
`and remedies stipulated by treaties and conventions
`respecting trademarks, trade names, and unfair
`competition entered into between the United States and
`foreign nations.
`
`Lanham Act § 45, 15 U.S.C. § 1127.5
`
`
`5 In the same section, the Lanham Act defines “commerce” as
`“all commerce which may lawfully be regulated by Congress.”
`Lanham Act § 45, 15 U.S.C. § 1227. We have previously construed
`this phrase to mean that the term is “coterminous with that
`(Continued)
`
`
`
`15
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 16 of 35
`
`The Supreme Court observed that “[m]ost of the enumerated
`
`purposes are relevant to a false-association case,” while “a
`
`typical false-advertising case will implicate only the Act’s
`
`goal of ‘protecting persons engaged in commerce within the
`
`control of Congress against unfair competition.’” Lexmark, 134
`
`S. Ct. at 1389. The Court concluded “that to come within the
`
`zone of interests in a suit for false advertising under
`
`[§ 43(a)], a plaintiff must allege an injury to a commercial
`
`interest in reputation or sales.” Id. at 1390.
`
`The second Lexmark background principle is that “a
`
`statutory cause of action is limited to plaintiffs whose
`
`injuries are proximately caused by violations of the statute.”
`
`Id. The injury must have a “sufficiently close connection to
`
`the conduct the statute prohibits.” Id. In the § 43(a)
`
`context, this means “show[ing] economic or reputational injury
`
`flowing directly from the deception wrought by the defendant’s
`
`advertising; and that that occurs when deception of consumers
`
`causes them to withhold trade from the plaintiff.” Id. at 1391.
`
`
`
`commerce that Congress may regulate under the Commerce Clause of
`the United States Constitution.” Int’l Bancorp, LLC v. Societe
`des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d
`359, 363-64 (4th Cir. 2003). “Commerce” in Lanham Act context
`is therefore an expansive concept that “necessarily includes all
`the explicitly identified variants of interstate commerce,
`foreign trade, and Indian commerce.” Id. at 364 (citing U.S.
`Const. art. I, § 8, cl.3); see also infra n.6).
`
`
`
`16
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 17 of 35
`
`The primary lesson from Lexmark is clear: courts must
`
`interpret the Lanham Act according to what the statute says. To
`
`determine whether a plaintiff, “falls within the class of
`
`plaintiffs whom Congress has authorized to sue,” we “apply
`
`traditional principles of statutory interpretation.” Id. at
`
`1387. The outcome will rise and fall on the “meaning of the
`
`congressionally enacted provision creating a cause of action.”
`
`Id. at 1388.
`
`We now turn to apply these principles to the case before
`
`us.
`
`2.
`
`a.
`
`We first address the position, pressed by Belmora and
`
`adopted by the district court, that a plaintiff must have
`
`initially used its own mark in commerce within the United States
`
`as a condition precedent to a § 43(a) claim. In dismissing
`
`BCC’s § 43(a) claims, the district court found dispositive that
`
`“Bayer failed to plead facts showing that it used the FLANAX
`
`mark in commerce in [the] United States.” J.A. 487. Upon that
`
`ground, the district court held “that Bayer does not possess a
`
`protectable interest in the [FLANAX] mark.” Id.
`
`As noted earlier, such a requirement is absent from
`
`§ 43(a)’s plain language and its application in Lexmark. Under
`
`
`
`17
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 18 of 35
`
`the statute, the defendant must have “use[d] in commerce” the
`
`offending “word, term, name, [or] symbol,” but the plaintiff
`
`need only “believe[] that he or she is or is likely to be
`
`damaged by such act.” Lanham Act § 43(a), 15 U.S.C. § 1125(a).
`
`It is important to emphasize that this is an unfair
`
`competition case, not a trademark infringement case. Belmora
`
`and the district court conflated the Lanham Act’s infringement
`
`provision in § 32 (which authorizes suit only “by the
`
`registrant,” and thereby requires the plaintiff to have used its
`
`own mark in commerce) with unfair competition claims pled in
`
`this case under § 43(a). Section 32 makes clear that Congress
`
`knew how to write a precondition of trademark possession and use
`
`into a Lanham Act cause of action when it chose to do so. It
`
`has not done so in § 43(a). See Russello v. United States, 464
`
`U.S. 16, 23 (1983) (“[W]here Congress includes particular
`
`language in one section of a statute but omits it in another
`
`section of the same Act, it is generally presumed that Congress
`
`acts intentionally and purposely in the disparate inclusion or
`
`exclusion.”).
`
`Given that Lexmark advises courts to adhere to the
`
`statutory language, “apply[ing] traditional principles of
`
`statutory interpretation,” Lexmark, 134 S. Ct. at 1388, we lack
`
`authority to introduce a requirement into § 43(a) that Congress
`
`plainly omitted. Nothing in Lexmark can be read to suggest that
`
`
`
`18
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 19 of 35
`
`§ 43(a) claims have an unstated requirement that the plaintiff
`
`have first used its own mark (word, term, name, symbol, or
`
`device) in U.S. commerce before a cause of action will lie
`
`against a defendant who is breaching the statute.
`
`The district court thus erred in requiring Bayer, as the
`
`plaintiff, to have pled its prior use of its own mark in U.S.
`
`commerce when it is the defendant’s use of a mark or
`
`misrepresentation that underlies the § 43(a) unfair competition
`
`cause of action. Having made this foundational error, the
`
`district court’s resolution of the issues requires reversal.6
`
`Admittedly, some of our prior cases appear to have treated
`
`a plaintiff’s use of a mark in United States commerce as a
`
`
`6 Even though the district court’s error in transposing
`§ 43(a)’s requirements for a defendant’s actions upon the
`plaintiff skews the entire analysis, the district court also
`confused the issues by ill-defining the economic location of the
`requisite unfair competition acts. As noted earlier, supra n.5,
`a defendant’s false association or false advertising conduct
`under § 43(a) must occur in “commerce within the control of
`Congress.” Such commerce is not limited to purchases and sales
`within the territorial limits of the United States as the
`district court seems to imply at times with regard to § 43(a)
`and § 14(3) claims. See J.A. 483, 506 (as to § 14(3), stating
`that “Bayer did not use the FLANAX mark in the United States”);
`J.A. 487 (as to § 43(a), stating that “Bayer failed to plead
`facts showing that it used the FLANAX mark in commerce in [the]
`United States”). Instead, as we explained in International
`Bancorp, Lanham Act “commerce” includes, among other things,
`“foreign trade” and is not limited to transactions solely within
`the borders of the United States. Int’l Bancorp, 329 F.3d at
`364. Of course, any such “foreign trade” must satisfy the
`Lexmark “zone of interests” and “proximate cause” requirements
`to be cognizable for Lanham Act purposes.
`
`
`
`19
`
`

`
`Appeal: 15-1335 Doc: 57 Filed: 03/23/2016 Pg: 20 of 35
`
`prerequisite for a false association claim. See Lamparello v.
`
`Falwell, 420 F.3d 309, 313 (4th Cir. 2005) (“Both infringement
`
`[under § 32] and false designation of origin [under § 43(a)]
`
`have [the same] five elements.”); People for the Ethical
`
`Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir.
`
`2001) (same); Int’