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No. 15-1335

IN THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

BELMORA LLC,
Plaintiff-Appellee,
v.
BAYER CONSUMER CARE AG and BAYER HEALTHCARE LLC,
Defendants-Consolidated Plaintiffs-Appellants
v.
BELMORA LLC, et al.
Consolidated Defendants-Appellees, and
MICHELLE K. LEE, Undersecretary Of Commerce For Intellectual Property and
Director Of The United States Patent And Trademark Office,
Intervenor,

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

REPLY BRIEF FOR MICHELLE K. LEE,

DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE

Of Counsel:
THOMAS W. KRAUSE
Acting Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
BENJAMIN T. HICKMAN
Associate Solicitors
United States Patent and
Trademark Office

BENJAMIN C. MIZER
Principal Deputy Assistant
Attorney General
DANA J. BOENTE
United States Attorney
MARK R. FREEMAN
LEWIS S. YELIN, (202) 514-3425
Attorneys, Appellate Staff
Civil Division, Room 7233
U.S. Department of Justice
950 Pennsylvania Ave., N.W.
Washington, D.C. 20530

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TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................................................................. iii
INTRODUCTION AND SUMMARY ..................................................................2
ARGUMENT ............................................................................................................8
I.

Bayers Claims Do Not Violate the Principle that Trademark Rights

are Territorial..............................................................................................8

II.

A Party May Maintain a Claim for False Advertising Under the

Lanham Act Without Alleging Infringement of the Plaintiffs Own
Trademark.................................................................................................10

A.

Bayer Stated a Claim for False Advertising Under Section

43(a)(1)(B)...............................................................................................10

B.
III.

A.

Belmoras Contrary Arguments Lack Merit......................................14

A Party May Seek Relief for a Defendants Passing Off Under the
Lanham Act Without Alleging Infringement of the Partys Own
Trademark.................................................................................................21
Bayer Stated a Claim for False Association Under Section
43(a)(1)(A). .............................................................................................21

B.

Bayer Properly Obtained Administrative Cancellation of

Belmoras Trademark Registration Under Section 14(3). ...............25

C.
IV.

Belmoras Contrary Arguments Lack Merit......................................27

The False Advertising, False Association, and Administrative
Cancellation Provisions Implement the United States Obligations
under Article 6bis of the Paris Convention in the Context of This
Case. ...........................................................................................................33

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Sections 14(3) and 43(a)(1) Provide Bayer with Any Remedy

Required by Article 6bis of the Paris Convention............................33

B.

Belmoras Contrary Arguments Lack Merit......................................35

CONCLUSION ......................................................................................................38
CERTIFICATE OF COMPLIANCE
CERTIFICATE OF SERVICE

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TABLE OF AUTHORITIES
Cases
American Steel Foundries v. Robertson,
269 U.S. 372 (1926) .............................................................................................21
Armstrong Paint & Varnish Works v. Nu-Enamel Corp.,
305 U.S. 315 (1938) .............................................................................................22
B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293 (2015) .........................................................................................24
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,
330 F.3d 617 (4th Cir.2003) .................................................................................8
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave.,
284 F.3d 302 (1st Cir. 2002) ...............................................................................18
Cuban Cigar Brands N.V. v. Upmann Intl, Inc.,
457 F. Supp. 1090 (S.D.N.Y. 1978) ...................................................................25
Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23 (2003) .............................................................................. 3, 13, 20, 24
Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha,
754 F.2d 591 (5th Cir. 1985) ................................................................................8
H.H. Scott, Inc. v. Annapolis Electroacustic Corp.,
195 F. Supp. 208 (D. Md. 1961) ........................................................................25
Harrods Ltd. v. Sixty Internet Domain Names,
302 F.3d 214 (4th Cir. 2002) ..............................................................................23
In re GNC Corp.,
789 F.3d 505 (4th Cir. 2015) ..............................................................................16
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International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des

Estrangers a Monaco,
329 F.3d 359 (4th Cir. 2003) ..............................................................................28
Lamparello v. Falwell,
420 F.3d 309 (4th Cir. 2005) ....................................................................... 24, 28
Larsen v. Terk Techs. Corp.,
151 F.3d 140 (4th Cir. 1998) ..............................................................................28
Lexmark International, Inc. v. Static Control Components, Inc.,
134 S. Ct. 1377 (2014) ............................................................................ 10, 11, 19
Mironescu v. Costner,
480 F.3d 664 (4th Cir. 2007) ..............................................................................27
Mosley v. V Secret Catalogue, Inc.,
537 U.S. 418 (2003) .............................................................................................21
North Am. Med. Corp. v. Axiom Worldwide, Inc.,
522 F.3d 1211 (11th Cir. 2008) ..........................................................................19
O. & W. Thum Co. v. Dickinson,
245 F. 609 (6th Cir. 1917)...................................................................................22
PBM Prods., LLC v. Mead Johnson & Co.,
639 F.3d 111, 120 (4th Cir. 2011) ......................................................................18
People for the Ethical Treatment of Animals v. Doughney,
263 F.3d 359 (4th Cir. 2001) ..............................................................................28
POM Wonderful LLC v. Coca-Cola Co.,
134 S. Ct. 2228 (2014) .............................................................. 3, 6, 10, 12, 13, 15

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Schlotzskys Ltd. v. Sterling Purchasing & Natl Dist. Co.,

520 F.3d 393 (5th Cir. 2008) ..............................................................................23
Smith v. Montoro,
648 F.2d 602 (9th Cir. 1981) ..............................................................................23
Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763 (1992) .............................................................................................23
William R. Warner & Co. v. Eli Lilly & Co.,
265 U.S. 526 (1924) .............................................................................................22
Zyla v. Wadsworth, Div. of Thompson Corp.,
360 F.3d 243 (1st Cir. 2004) ...............................................................................23
Statutes and Treaties
Paris Convention for the Protection of Industrial Property, July 14, 1967,
Art. 6bis [1973] 24 U.S.T. 2140, T.I.A.S. No. 7727 .............. 4, 7, 33, 35, 36, 37
Trademark Act of 1946 (Lanham Act), Pub. L. No. 79-489, 60 Stat. 427
Section 14(3) ...................................... 4, 5, 7, 9, 25, 27, 29, 30, 31, 32, 34, 35, 37
Section 43(a)(1)...................................................................................... 5, 7, 9, 35
Section 43(a)(1)(A) ...................... 4, 20, 21, 23, 24, 27, 28, 29, 30, 31, 32, 34, 37
Section 43(a)(1)(B)............................................................................... 3, 6, 34, 37
Subsections 44(b) and (d) .................................................................................33
15 U.S.C. 1064(3) .................................................................................................25
15 U.S.C. 1114(1)(a) ............................................................................................24
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15 U.S.C. 1119......................................................................................................34
15 U.S.C. 1125(a)(1) & (A) .................................................................................31
15 U.S.C. 1125(a)(1)(B) .......................................................................................11
15 U.S.C. 1127............................................................................................. 3, 9, 32
Administrative Decisions
Global Maschinen Gmbh v. Global Banking Sys., Inc.,
227 U.S.P.Q. 862, 1985 WL 71943 (T.T.A.B. 1985) ................................. 25, 30
Osterreichischer Molkerei-Und Kasereiverband Registriete Genossenschaft Mit
Beschrankter Haftung v. Marks and Spencer, Ltd.,
203 U.S.P.Q. 793, 1979 WL 25355 (T.T.A.B. 1979) .........................................30
Otto Intl, Inc. v. Otto Kern GMBH,
83 U.S.P.Q.2d 1861, 2007 WL 1577524 (T.T.A.B. 2007).......................... 26, 30
Paul Sullivan Tennis Sportswear, Inc. v. Balth. Blickles Wwe,
213 U.S.P.Q. 390, 1982 WL 54199 (T.T.A.B. 1982) .........................................30
The E.E. Dickinson Co. v. The T.N. Dickinson Co.,
221 U.S.P.Q. 713, 1984 WL 63740 (T.T.A.B. 1984) .........................................26
International Material
Joint Recommendation Concerning Provisions on the Protection of WellKnown Marks, WIPO Doc. 833(E), art. 2(3)(a)(i), Sept. 29, 1999 ................37
United States-Singapore Free Trade Agreement, art. 16.1(2)(b)(i), signed
May 6, 2003 .........................................................................................................37

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Other Authorities
Brief for the Appellees/Cross-Appellants, Lamparello v. Falwell, 420 F.3d 309
(4th Cir. 2005) (No. 04-2011) ............................................................................29
G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property (1969) .............................................................36
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th
ed. 2014) ..............................................................................................................20
Websters Third New International Dictionary (2002) ..........................................18

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IN THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

No. 15-1335

BELMORA LLC,
Plaintiff-Appellee,
v.
BAYER CONSUMER CARE AG and BAYER HEALTHCARE LLC,
Defendants-Consolidated Plaintiffs-Appellants
v.
BELMORA LLC, et al.
Consolidated Defendants-Appellees, and
MICHELLE K. LEE, Undersecretary Of Commerce For Intellectual
Property and Director Of The United States Patent And Trademark Office,
Intervenor,

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

REPLY BRIEF FOR MICHELLE K. LEE,

DIRECTOR OF THE UNITED STATES PATENT
AND TRADEMARK OFFICE

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INTRODUCTION AND SUMMARY

As its brief makes clear, Belmoras arguments in this case reduce to a
simple proposition: unless a plaintiff asserts an infringement of its own
U.S. trademark, the Lanham Act provides no remedy. Thus, because Bayer
has never sold its well-known FLANAX product in the United States,
Belmora contends that it is free to appropriate the reputation and goodwill
associated with Bayers FLANAX mark among Mexican-American
consumers in the United States, mimic Bayers packaging, and promote its
products with advertisements falsely associating itself with Bayers highly
recognized top-selling brand. JA 159 ( 32) (quoting Belmora
advertisement) (alteration omitted); see id. (For generations, Flanax has
been a brand that Latinos have turned to for various common ailments.
(emphasis omitted)).
That result is impossible to attribute to congressional design. As our
opening brief explained, the Supreme Court repeatedly has recognized that
the Lanham Act creates a federal remedy that goes beyond trademark
protection. POM Wonderful LLC v. Coca-Cola Co., 134 S. Ct. 2228, 2234
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(2014) (quoting Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,
29 (2003)). The Lanham Act includes not only a cause of action for
common law trademark infringement, but also a broad range of federal
protections against deceptive practices in commerce, including false
advertising, false association, and passing off. Indeed, Belmoras
construction of the Act would leave unactionable the very conduct
Congress enacted the Lanham Act to prevent: the use of a trademark to
deceive U.S. consumers about the source of the goods the mark identifies.
See 15 U.S.C. 1127 (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.).
Our opening brief demonstrated that Bayers complaint properly
states claims under Sections 43(a)(1)(A) and (B) and that Bayer properly
obtained cancellation of Belmoras trademark registration under Section
14(3). First, the Supreme Courts and this Courts precedent make clear
that the Lanham Acts false-advertising provision, Section 43(a)(1)(B),
provides a cause of action to any party, such as Bayer, who alleges injury to
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a commercial interest in reputation or sales caused by the defendants false

advertising. Br. 37-41. Second, the Lanham Acts false-association
provision, Section 43(a)(1)(A), codified the common law claim of passing
off, among others. Br. 43-45. A plaintiff could maintain a common law
claim of passing off without alleging ownership of a trademark. Br. 42-45.
Accordingly, Bayer may maintain a claim for false association without
alleging that it has registered a mark or used it in commerce in the United
States when it alleges, as Bayer has, that it owns a foreign mark known to
U.S. consumers and the defendant is trading off the goodwill in its mark in
the United States. And third, the Lanham Acts administrative cancellation
provision, Section 14(3), allows a party such as Bayer to seek the
cancellation of anothers trademark registration from the Trademark Trial
and Appeal Board (TTAB) if that the registrant has used the trademark to
misrepresent the source of the goods. Br. 51-56.
Together, these provisions provide the remedy contemplated by
Article 6bis of the Paris Convention for the Protection of Industrial Property
(Paris Convention), July 14, 1967, Art. 6bis [1973] 24 U.S.T. 2140, T.I.A.S.
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No. 7727, which requires member states to provide protection for wellknown foreign marks when the owner of a domestic mark attempts to pass
off its goods as those of the foreign trademark owner. Br. 56-60.
Belmoras contrary arguments lack merit. Belmora broadly contends
that recognizing Bayers claims in this case under Section 43(a)(1) and
upholding the TTABs cancellation of Belmoras trademark registration
under Section 14(3) would require the Court to create an exception to the
territoriality doctrine that is basic to trademark law. Resp. 25-29. That is
not so. Because Bayer has alleged that its FLANAX mark enjoys a
reputation among Mexican-American consumers of pain relievers in the
United States, recognizing Bayers claims creates no exception to the
territoriality doctrine.
The heart of Belmoras argument is its insistence that a party may not
maintain a cause of action for false association or seek administrative
cancellation of anothers trademark registration unless that party itself
asserts technical trademark rights. Resp. 25-65. But Belmora nowhere
addresses the Supreme Court and court of appeals decisions recognizing a
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common law claim for passing off, regardless of whether either party has
rights in a trademark. That omission is fatal because both the falseassociation and administrative-cancellation provisions codified the
common law claim of passing off, which did not require technical
trademark rights and instead can be based reputational interests.
Belmora also asserts that Bayer may not maintain a false-advertising
claim against it because Bayer Consumer Care AG (the producer of
FLANAX brand analgesic in Mexico) is not its competitor in the United
States and because any business injury suffered by Bayer is speculative.
Resp. 73-79; see POM Wonderful, 134 S. Ct. at 2234 (using the term
competitor . . . to indicate all those within the class of persons
protected by the Lanham Act). As the Supreme Court has made clear,
however, all that Bayer must allege to state a claim under Section
43(a)(1)(B) is that it has suffered a business injury from Belmoras deceptive
conduct. And Belmoras factual objections miss the mark because the
district court dismissed Bayers claims at the pleading stage. Belmora also
contends that Bayer may not maintain a false-advertising claim because
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Belmoras advertising does not misstate an inherent quality of its product.

Resp. 79-91. But the misrepresentation of an inherent quality is not the
only way to establish that an advertisement is materially false. Any
misrepresentation that is likely to influence the purchasing decision is
material.
Finally, Belmora contends that the requirements of Article 6bis of the
Paris Convention cannot be implemented in the Lanham Act unless
Congress expressly amends the statute. Resp. 57-60. But Belmoras
argument is mistaken because Sections 14(3) and 43(a)(1) by their terms
supply any remedy Article 6bis requires the United States to provide to
Bayer in the context of this case.
Because the district court erroneously held that the Lanham Acts
administrative-cancellation, false-association, and false-advertising
remedies are available only to a party who has itself registered a trademark
or used a mark in commerce in the United States, this Court should reverse
the district courts judgment.

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ARGUMENT
I.

BAYERS CLAIMS DO NOT VIOLATE THE PRINCIPLE THAT TRADEMARK

RIGHTS ARE TERRITORIAL.
As an initial matter, Belmora makes the overarching argument (Resp.

25-29) that any interpretation of the Lanham Act that would provide
remedies to the owners of foreign marks not registered or used in the
United States would violate the territorial nature of trademark rights. That
contention reflects Belmoras basic misconception about the scope of the
Lanham Act.
The concept of territoriality is basic to trademark law; trademark
rights exist in each country solely according to that countrys statutory
scheme. Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d
591, 599 (5th Cir. 1985). For that reason, United States courts do not
entertain actions seeking to enforce trademark rights that exist only under
foreign law. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,
330 F.3d 617, 628 (4th Cir.2003). The Lanham Acts provisions, however,
extend beyond the protection of rights stemming from the registration of
trademarks or their use in the United States. Congress enacted the Lanham
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Act, in part, to mak[e] actionable the deceptive and misleading use of

marks in [commerce within the control of Congress]. 15 U.S.C. 1127.
When the domestic owner of a registered trademark uses its mark in in
commerce in United States to pass off its goods as those of foreign
trademark owner whose product is well known in the United States, the
domestic owner deprives the foreign owner of the goodwill it has
developed in the United States and it deceives American consumers about
the source of products in the United States market. As we explain in our
opening brief and this brief, there is no need to rely on rights provided by
foreign law to conclude that Sections 14(3) and 43(a)(1) create remedies
against such conduct. Accordingly, upholding Bayers claims in this case
would not create an exception to the doctrine of territoriality.1

Belmora also contends that the recognition of Lanham Act

protection for well-known foreign marks under these provisions would
allow the owner of a foreign mark to warehouse[] a trademark it will
never use in the United States. Resp. Br. 28; see id. at 68-70. Belmora also
contends that recognizing such protections would create significant
uncertainties for those seeking to determine whether a mark may properly
be registered. Resp. Br. 70-72. Belmoras concerns are unfounded. The
claims Bayer asserts in this case is for intentional passing off, i.e., the
deliberate adoption of a mark by a party with the intent to trade off the
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II.

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A PARTY MAY MAINTAIN A CLAIM FOR FALSE ADVERTISING UNDER

THE LANHAM ACT WITHOUT ALLEGING INFRINGEMENT OF THE
PLAINTIFFS OWN TRADEMARK.
A.

Bayer Stated a Claim for False Advertising Under Section

43(a)(1)(B).

Belmora makes no serious attempt to reconcile its arguments with the

Supreme Courts decisions in Lexmark International, Inc. v. Static Control
Components, Inc., 134 S. Ct. 1377 (2014), and POM Wonderful LLC v. CocaCola Co., 134 S. Ct. 2228 (2014). Those decisions provide recent,
authoritative guidance on the scope of the Lanham Acts false-advertising
provision. Both cases establish that, contrary to Belmoras contentions, a
plaintiff need not allege that it has registered a trademark or used a mark
in commerce in the United States to maintain an action for false
advertising.
In Lexmark, a manufacturer of printer toner cartridges sent letters to
customers advising that it was illegal to use Static Controls products to

goodwill in the mark created by another. A party who is unaware of a

foreign mark or its reputation in the United States and who registers or
uses that mark in the United States would not properly be subject to claims
for passing off.
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refurbish spent cartridges. 134 S. Ct. at 1384. Static control asserted a falseadvertising claim against Lexmark, alleging that Lexmarks advertising
had misrepresented the nature, characteristics, and qualities of both
companies products, directly injuring Static Control by diverting sales to
Lexmark and by harming Static Controls business reputation. Id.; see 15
U.S.C. 1125(a)(1)(B) (creating a cause of action for advertising that
misrepresents the nature, characteristic, [or] qualities . . . of his or her or
another persons goods). In upholding Static Controls claim, the
Supreme Court explained that to come within the zone of interest in a suit
for false advertising under 1125(a), a plaintiff must allege an injury to a
commercial interest in reputation or sales. Lexmark, 134 S. Ct. at 1390.
And in light of the common law background against which Congress
legislates when enacting causes of action, the Court further held that a
plaintiff asserting a false-advertising claim ordinarily must show
economic or reputational injury flowing directly from the deception
wrought by the defendants advertising; and that occurs when deception of
consumers causes them to withhold trade from the plaintiff. Id. at 1391.
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Similarly, in POM Wonderful, a producer of pomegranate juice

products brought a false advertising claim against a competitor, which
marketed a pomegranate blueberry drink containing 0.3% pomegranate
juice and 0.2% blueberry juice. 134 S. Ct. at 2233. The plaintiff alleged that
the defendants marketing of the drink was misleading to consumers, and
it further alleged that the confusion resulted in lost sales of its own
pomegranate juice products. Id. at 2235. That case presented the question
whether a second statute, the Food, Drug, and Cosmetic Act, precluded the
plaintiffs reliance on the Lanham Act. Id. at 2234. The Supreme Court
explained that, in the absence of that question, the plaintiffs Lanham Act
claim was straightforward: the plaintiff had asserted an injury to a
commercial interest in sales or reputation proximately caused by the
defendants alleged misrepresentations. Id.
POM Wonderful and Lexmark make clear that a plaintiff may maintain
a Lanham Act false-advertising claim without alleging use of a mark.
Neither decision even considered whether the plaintiff possessed any
enforceable trademark rightswhat Belmora insists is the sine qua non of a
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viable false-advertising claim. See Resp. 73-74. To the contrary, the Court
in POM Wonderful stressed that while [t]he Lanham Acts trademark
provisions are the primary means of achieving the enumerated purposes
of the statute, the false-advertising provision is a federal remedy that
goes beyond trademark protection. 134 S. Ct. at 2234 (quoting Dastar, 539
U.S. at 29).
In this case, Bayer alleged that Belmoras deceptive advertising
directly caused lost sales of Bayer Healthcare LLCs ALEVE brand of
naproxen sodium sold in the United States. JA 163 ( 55-57). It alleged
that Belmoras marketing and sales directly harmed Bayer Consumer Care
AGs commercial good will in its Mexican mark FLANAX among
American consumers. JA 165 ( 74). And the complaint may fairly be
read to allege that Belmoras false advertising has caused Bayer Consumer
Care AG to lose sales to United States citizens of its FLANAX products in
Mexico. See JA 156 ( 11-13). Because Bayer alleged an injury to a
commercial interest in reputation or sales directly caused by Belmoras

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misleading marketing, the district court erred in dismissing Bayers falseadvertising claim.
B.

Belmoras Contrary Arguments Lack Merit.

Belmoras various arguments supporting the district courts dismissal

of Bayers false-advertising claim either rest on a misstatement of the
applicable law or are based on factual objections that may not properly be
considered on review of a district courts dismissal at the pleading stage.
Belmora asserts that the district court correctly dismissed Bayer
Consumer Care AGs false-advertising claims because Bayer Consumer
Care AG (the producer of the Mexican FLANAX brand analgesic) is not a
competitor of Belmora (Resp. 73-74) since the two companies do not sell
their products within the same market (Resp. 74 n.30). For that reason,
Belmora contends, Bayer Consumer Care AG is not within the class of
plaintiffs who Congress intended to be able to bring false advertising
actions. Resp. 73-74. Belmora is mistaken. Competitor is not a
statutory term. In POM Wonderful,, the Supreme Court used the term to
denote all those within the class of persons and entities protected by the
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Lanham Act. 134 S. Ct. at 2234. Construing the false-advertising

provision, the Court held that a competitor is one who may suffer an
injury to commercial interest in sales or business reputation proximately
caused by a defendants misrepresentations. POM Wonderful, 134 S. Ct. at
2234 (quotation and alteration marks omitted). As just noted, Bayers
complaint alleges injury to Bayer Consumer Care AGs reputation among
American consumers. JA 165 ( 74). The complaint also may fairly be read
to allege that Bayer Consumer Care AG has lost sales of its FLANAX
product to United States citizens in Mexico as a result of Belmoras false
advertising. See JA 156 ( 11-13). Bayer Consumer Care AG therefore has
alleged an injury to commercial interest in sales or business reputation
directly caused by Belmoras misrepresentation. It is, therefore, within the
class of persons protected by the Lanham Act.
To the extent Belmora acknowledges Bayer Consumer Care AGs
allegation of business injury, Belmora dismisses it as speculative. Resp.
76; see Id. at 38-39. But at the pleading stage, Bayer is under no obligation
to establish the truth of its allegations. See In re GNC Corp., 789 F.3d 505,
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513 (4th Cir. 2015) (explaining that a district court may not dismiss a
complaint for failure to state a claim if the plaintiff has pleaded factual
content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged). Accordingly, Bayer
Consumer Care AG properly has stated a claim against Belmora for false
advertising.
In contrast to Bayer Consumer Care AG, Belmora acknowledges that
Bayer Healthcare LLC is a competitor of Belmoras in the United States
naproxen sodium market. Resp. 77. But Belmora contends that Bayer
failed adequately to allege that Belmoras misrepresentation caused any
injury to Bayer Healthcare LLCs sales of its ALEVE brand naproxen
sodium. Resp. 78. In fact, Bayers complaint alleged that Belmoras
misleading advertising has actually deceived, have the tendency to
deceive, and/or are likely to deceive consumers about the nature of
Belmoras FLANAX product (JA 163, 55; see id. 54); that Belmoras
advertising is likely to influence the purchasing decisions of naproxen
sodium products (id., 56); and that Belmora publicized its false
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advertising with the intent . . . to compete unfairly against, among

others, Bayer Healthcare and its ALEVE products (id., 57).
Belmora contends that these allegations are insufficient and that
Bayer should have pleaded particular facts about the naproxen sodium
market to help the court understand how Belmoras statements made to
distributors could proximately cause lost ALEVE sales. Resp. 78. But on a
motion to dismiss, a district court must accept[] the complaint as true and
draw[] reasonable inferences in the [plaintiffs] favor. In re GNC, 789 F.3d
at 513. There is no question that a reasonable factual inference from the
allegations quoted above is that Bayer Healthcare LLC lost sales of ALEVE
as a result of Belmoras false advertising. Accordingly, Bayer Healthcare
LLC also has properly stated a claim against Belmora for false advertising.
Apparently as an alternative basis for affirmance, Belmora argues
that the district court correctly dismissed Bayers false-advertising claim
because Belmoras misstatements did not relate to a characteristic of the
naproxen sodium product it marketed. Resp. 79-91. As an initial matter,
that contention is mistaken: Belmoras misrepresentation related to the
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manufacturer of the product, and the manufacturer of a product is one of

its characteristics. See Websters Third New International Dictionary 376 (2002)
(defining characteristic as a trait, quality, or property or a group of them
distinguishing an individual, group, or type). Belmora appears to mean
that a Lanham Act false-advertising claim encompasses only misstatements
about an inherent quality of a product. See Resp. 81-82. But that argument
improperly describes one way to establish an element of a false advertising
claim as the only way to do so.
This Court has identified five elements of a false-advertising claim
under the Lanham Act. PBM Prods., LLC v. Mead Johnson & Co., 639 F.3d
111, 120 (4th Cir. 2011). One of the elements is materiality: To prevail on a
false advertising claim, a plaintiff must establish that the defendants
misrepresentation is material, in that it is likely to influence the
purchasing decision. Id. And [o]ne method of establishing materiality
involves showing that the false or misleading statement relates to an
inherent quality or characteristic of the product. Cashmere & Camel Hair
Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311-12 (1st Cir. 2002) (quotation
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marks omitted). But that is not the only way. Any false suggestion in an
advertisementsuch as a misrepresentation that the product is
manufactured by someone elsecan be material if it is likely to influence
the purchasing decision. PBM Products, 639 F.3d at 120.
For example, the Supreme Court in Lexmark upheld the plaintiffs
false advertising claim based on the allegation that the defendant had
misrepresented the legality of the plaintiffs product. See 134 S. Ct. at 1384,
1393-94. While legality is not an inherent characteristic of a product, it is
one that is likely to influence purchasing decisions. See also, e.g., North Am.
Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1226 (11th Cir. 2008)
(upholding district courts determination that false representations of
affiliation with the National Aeronautics and Space Administration and of
approval of device by the Food and Drug Administration were material for
purposes of false-advertising claim). To prevail on the false-advertising
claim, Bayer will have to establish that Belmoras passing off was
reasonably likely to influence purchasing decisions. But Bayers false-

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advertising claim is not deficient merely because Belmoras misleading

statements did not relate to an inherent quality of its or Bayers products.2

Belmora relies (Resp. Br. 79-83) on Dastar Corp. v. Twentieth Century

Fox Film Corp., 539 U.S. 23 (2003), and its progeny to support its contention
that an advertisement falsely identifying the source of goods is not
actionable under the Lanham Acts false-advertising provision. That
reliance is misplaced. Dastar held that a plaintiff with an expired copyright
may not maintain an action for reverse passing off (where a party
misrepresents anothers goods as its own) under the false-association
provision of the Lanham Act, Section 43(a)(1)(A), in part because such an
action would be inconsistent with the time-limited nature of the rights
protected by the Copyright Act. See Dastar, 539 U.S. at 27, 33-37; see id. at 37
(holding that the phrase origin of goods in Section 43(a)(1)(A) refers to
the producer of the tangible goods that are offered for sale and not the
author of any idea, concept, or communication embodied in those goods).
However, Dastar itself recognized that if the defendant had, in advertising
or promotion, given purchasers the impression that its product was
different from the plaintiffs, then the plaintiff might have a cause of
action . . . for misrepresentation under the misrepresents the nature,
characteristics [or] qualities provision of 43(a)(1)(B). Id. at 38; see
generally J. Thomas McCarthy, 5 McCarthy on Trademarks and Unfair
Competition 27:83.
2

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A PARTY MAY SEEK RELIEF FOR A DEFENDANTS PASSING OFF UNDER

THE LANHAM ACT WITHOUT ALLEGING INFRINGEMENT OF THE PARTYS
OWN TRADEMARK.
A.

Bayer Stated a Claim for False Association Under Section

43(a)(1)(A).

Bayer likewise errs in insisting that Bayer cannot assert a falseassociation claim under Section 43(a)(1)(A) without alleging some form of
infringement of a U.S. trademark. Traditional trademark infringement law
broadly prohibits uses of trademarks, trade names, and trade dress that
are likely to cause confusion about the source of a product or service.
Mosley v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003). But [t]raditional
trademark infringement law is a part of the broader law of unfair
competition. Id. Before Congress enacted the Lanham Act, the common
law of unfair competition recognized a claim of passing off, which
involved a defendants misrepresentation of his own goods or services as
someone elses. See American Steel Foundries v. Robertson, 269 U.S. 372, 380
(1926).
Passing off couldbut often did notinvolve traditional trademark
infringement. A party might engage in passing off by misappropriating
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anothers trademark and using it to to palm off his products as those of

the original user of the trade name. Armstrong Paint & Varnish Works v.
Nu-Enamel Corp., 305 U.S. 315, 336 (1938). But a plaintiff could maintain a
claim for passing off even in the absence of trademark misappropriation.
Courts are not concerned with the particular method or form through
which the goods of one person are disposed of as the goods of another. O.
& W. Thum Co. v. Dickinson, 245 F. 609, 626 (6th Cir. 1917). What was
actionable was any use of a name or of words or designs intended to
deceive consumers about the source of the goods. Id.; see id. (It cannot be
. . . that this end is prohibited only when it is effected through simulation
of a technical trade-mark.).
Thus, for example, in William R. Warner & Co. v. Eli Lilly & Co., the
Supreme Court held that neither the plaintiff nor the defendant had a
trademark in the descriptive product names Coco-Quinine and QuinCoco. 265 U.S. 526, 529 (1924). Nevertheless, the Court held that the
defendant had engaged in unfair competition by purposely enabling
dealers to pass off its product as that of the plaintiff. Id. at 530; see id.
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([The defendant] sought to avail itself of the favorable repute which had
been established for [the plaintiffs] preparation in order to sell its own.).
Section 43(a)(1)(A) of the Lanham Act codified the common law claim
of passing off, among other remedies. Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 778 (1992) (Stevens, J., concurring in the judgment); see also
Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 220 n.2 (4th Cir.
2002). Accordingly, the courts of appeals have consistently recognized that
[t]he existence of a trademark is not a necessary prerequisite to a 43(a)
action. Zyla v. Wadsworth, Div. of Thompson Corp., 360 F.3d 243, 251 (1st
Cir. 2004) (emphasis added); see also, e.g., Schlotzskys Ltd. v. Sterling
Purchasing & Natl Dist. Co., 520 F.3d 393, 398-400 (5th Cir. 2008); Smith v.
Montoro, 648 F.2d 602, 605 (9th Cir. 1981). A plaintiff states a claim of
passing off under Section 43(a)(1)(A) if the plaintiff alleges that its mark
enjoys a reputation in the United States, that the defendant intentionally
adopted its mark to trade off that reputation, and that the plaintiff has
consequently suffered an injury to reputation or sales. It is not necessary

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for the plaintiff to allege that it has used its own mark in commerce in the
United States.
To be sure, the Lanham Acts false-association provision also
encompasses traditional claims of trademark infringement. See B&B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1301 (2015) (discussing
unregistered marks); see also 15 U.S.C. 1114(1)(a) (establishing cause of
action for infringement of registered marks). Any party asserting a claim
of trademark infringement under Section 43(a)(1)(A) must prove that it
possesses a mark. Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005).
But because the false-association provision provides a federal remedy that
goes beyond trademark protection, Dastar, 539 U.S. at 29, the plaintiffs
registration or use of a trademark in the United States is not a requirement
for a claim of passing off.
Bayer therefore states a claim for false association under Section
43(a)(1)(A) by alleging that it has suffered a business injury directly
resulting from Belmoras intentional adoption and use of the same
FLANAX mark as Bayers in a manner designed to trade on the goodwill
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Bayers FLANAX mark enjoys among Mexican-American consumers and

to deceive those consumers into believing that Belmoras goods are those of
Bayer.
B.

Bayer Properly Obtained Administrative Cancellation of

Belmoras Trademark Registration Under Section 14(3).

Section 14(3), part of the Lanham Acts administrative cancellation

provision, also provides a remedy for passing off. Section 14(3) authorizes
a party to seek cancellation of a trademark registration if the registered
mark is being used by . . . the registrant so as to misrepresent the source
of the goods . . . [on] which the mark is used. 15 U.S.C. 1064(3).
Section 14(3) has long been construed to authorize cancellation of a partys
trademark registration when the party has used the registered mark to pass
off its products as that of another. See, e.g., H.H. Scott, Inc. v. Annapolis
Electroacustic Corp., 195 F. Supp. 208, 217 (D. Md. 1961); Cuban Cigar Brands
N.V. v. Upmann Intl, Inc., 457 F. Supp. 1090, 1100-01 (S.D.N.Y. 1978); Global
Maschinen Gmbh v. Global Banking Sys., Inc., 227 U.S.P.Q. 862, 1985 WL
71943, *2 n.3 (T.T.A.B. 1985). A pleading of misrepresentation of source
must be supported by allegations of blatant misuse of the mark by
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respondent in a manner calculated to trade on the goodwill and reputation

of petitioner. Otto Intl, Inc. v. Otto Kern GMBH, 83 U.S.P.Q.2d 1861, 2007
WL 1577524, at *3 (T.T.A.B. 2007) (internal quotation marks omitted).
Like false-association claims, administrative cancellation claims can
involve competing trademark rights. See, e.g., The E.E. Dickinson Co. v. The
T.N. Dickinson Co., 221 U.S.P.Q. 713, 1984 WL 63740, *3 (T.T.A.B. 1984). But
nothing in the text of Section 14(3) limits cancellation for misrepresentation
of source to that circumstance. Under the plain language of the provision,
a petitioner seeking cancellation of anothers trademark registration need
not allege that it engaged in prior use of a trademark in the United States,
provided that its allegations, if proven, would demonstrate that the
petitioners product has a reputation among U.S. consumers and the owner
of the registered mark has blatantly misused the mark to pass off its goods
as those of the petitioner. Bayer made and proved such allegations before
the TTAB, and there is no serious contention that the TTAB erred in finding
misrepresentation on this record. See JA 142 (Although the facts before us
present a matter of first impression, they do not present a close case.).
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Accordingly, the district court erred in reversing the agencys cancellation

of Belmoras registration of the FLANAX mark.3
C.

Belmoras Contrary Arguments Lack Merit.

Belmora argues (Resp. 29-54) that a party may not maintain a falseassociation claim under Section 43(a)(1)(A) or seek administrative
cancellation of a trademark registration under Section 14(3) unless the
party itself has rights in a trademark that are infringed by another. But
Belmora again confuses one avenue for seeking Lanham-Act relief for
passing off with the only available mechanism.

As our opening brief explained (Br. 53-56), there is some question

about the minimum showing of causation a petitioner must make to
maintain a cancellation proceeding under Section 14(3). However, this
Court need not resolve that question in this appeal. Bayer alleged and the
TTAB determined that Belmoras passing off directly injured the reputation
of Bayers FLANAX mark in the United States. See JA 141-42, 151. Thus,
the common law proximate causation standard would be satisfied, if it
applies. And Belmoras arguments on appeal are limited to whether a
petitioner seeking administrative cancellation of a trademark must itself
use a trademark in commerce in the United States when it has otherwise
demonstrated that the foreign mark enjoys a reputation in the United
States. See Resp. Br. 46-54. Belmora has therefore waived any arguments
concerning the causation requirement under Section 14(3). See Mironescu v.
Costner, 480 F.3d 664, 677 n.15 (4th Cir. 2007).
3

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Belmoras principal argument concerning Section 43(a)(1)(A) is that

this Court has held that proof of possession of a mark is an element of a
claim for false association. Resp. 30-32 (citing Lamparello, 420 F.3d at 313;
People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th
Cir. 2001) (PETA); International Bancorp, LLC v. Societe des Bains de Mer et du
Cercle des Estrangers a Monaco, 329 F.3d 359, 361 n.2 (4th Cir. 2003); Larsen v.
Terk Techs. Corp., 151 F.3d 140, 146 (4th Cir. 1998)). But in each of those
cases, the plaintiff asserted either trademark or service mark infringement.
See Lamparello, 420 F.3d at 312; International Bancorp, 329 F.3d at 361-62;
PETA, 263 F.3d at 362; Larsen, 151 F.3d at 145. It is unsurprising that a
plaintiff asserting a trademark infringement claima violation of a
technical right in a trademarkmust establish that it possesses a mark.
Lamparello, 420 F.3d at 313. But the cases Belmora cites did not consider
whether a plaintiff not asserting trademark infringement may maintain a
claim for passing off under the false-association provision without
demonstrating that it has registered a trademark or used one in commerce. 4

In Lamparello and International Bancorp, the Court said in dicta that

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Nothing in the text of Section 43(a)(1)(A) or in the reasoning or history of

passing-off law suggests that such a showing should be required, and this
Court has never held that it is. The cases Belmora cites are therefore
inapposite.
Belmoras principal argument concerning Section 14(3) reflects a
similar misunderstanding. Belmora contends that the TTAB erred by not
following its own precedent, which, according to Belmora, establishes that
a petitioner may seek administrative cancellation of anothers trademark
registration only if the petitioner allege[s] that it is using the same or
similar mark for the same or similar goods. Resp. 49 (quoting Paul

the elements of a trademark infringement and false designation of origin

(or, more generally, unfair competition) are identical. International
Bancorp, 329 F.3d at 361 n.1; see Lamparello, 420 F.3d at 313. But in neither
case did the Court hold that a plaintiff could not proceed on a passing off
claim because the plaintiff failed to allege that it had registered a trademark
or used one in commerce in the United States. Moreover, as our opening
brief explained, see Br. 47-48, the plaintiff in International Bancorp assumed
that it had to establish the use of a mark in commerce. And in Lamparello,
Fallwells false-designation-of-origin claim was premised on an alleged
infringement of his registered trademark. See Brief for the Appellees/
Cross-Appellants at 5, 40-41, Lamparello v. Falwell, 420 F.3d 309 (4th Cir.
2005) (No. 04-2011). Thus those cases do not hold that a plaintiff must
assert trademark infringement to maintain a claim for passing off.
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Sullivan Tennis Sportswear, Inc. v. Balth. Blickles Wwe, 213 U.S.P.Q. 390, 1982
WL 54199, *2 (T.T.A.B. 1982)). But in Paul Sullivan, the petitioner alleged
prior use of the mark at issue. See id. Indeed, the petitioner sought
cancellation of the respondents registration because the respondent had
charged petitioner with trademark infringement. Id. The TTAB dismissed
the cancellation petition, in part, because although petitioner had alleged a
right in the mark that the respondent registered, the petitioner had not
alleged any facts that would establish a likelihood of confusion concerning
the parties respective products. Id. at *3. Paul Sullivan, like the cases
Belmora cites in support of its arguments concerning Section 43(a)(1)(A), is
therefore distinguishable and was not controlling on the TTAB. 5

The same is true of two of the other TTAB decisions cited by

Belmora (Resp. Br. 50 n.13), which were based on a petitioners contention
that the respondent had misrepresented the source of goods by infringing
the petitioners trademark. See Otto Intl, 2007 WL 1577524, at *1; Global
Maschinen, 1985 WL 71943, *1. The third TTAB decision cited by Belmora,
Osterreichischer Molkerei-Und Kasereiverband Registriete Genossenschaft Mit
Beschrankter Haftung v. Marks and Spencer, Ltd., 203 U.S.P.Q. 793, 1979 WL
25355 (T.T.A.B. 1979), is not on point; it holds that a misrepresentation of
source claim under Section 14(3) does not encompass alleged
misrepresentation of geographic origin. See id. at *1.
5

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In fact, as the TTAB itself observed, the TTAB had not considered
before the decision in this case whether a petitioner who has not asserted
use of a mark in United States commerce may seek administrative
cancellation of anothers trademark registration when the mark is used to
pass off its goods as those of the petitioner. See JA 142 (noting that the case
presented a matter of first impression). Belmora has identified no
decision in which a court or the TTAB has rejected a partys passing-off
claim merely because the party bringing the claim did not register a
trademark or use one in commerce in the United States.
Belmora wholly fails to address the common law history of passing
off claims that Congress intended to codify in the Lanham Act. As we have
shown, see supra pp. 21-23; Br. 42-45, at common law, a party could obtain
relief for anothers passing off without alleging trademark infringement.
Belmora acknowledges (Resp. 47) that the text of Section 14(3) does not
expressly require a petitioner seeking administrative cancellation to allege
its own use of a trademark. The same is true of the text of Section
43(a)(1)(A). See 15 U.S.C. 1125(a)(1) & (A) (creating a cause of action
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against any person who . . . uses in commerce any word, term, name,
symbol, or device that is likely . . . to deceive as to . . . the origin . . .
of his or her goods). The text of the statute thus permits an interpretation
that is congruent with the common law claim of passing off, which
Congress codified in Sections 14(3) and 43(a)(1)(A). By contrast, Belmoras
construction would leave unactionable the very conduct Congress enacted
the Lanham Act to prevent: the use of a mark to deceive U.S. consumers
about the source of the goods the mark identifies. See 15 U.S.C. 1127
(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.). 6

Belmora suggests that an interpretation of Sections 14(3) and

43(a)(1)(A) that would permit a party to seek relief without alleging the use
of a mark in commerce would produce crippling uncertainty for
trademark owners about the remedies available to owners of foreign
trademarks. Resp. Br. 41. That is incorrect for the reasons provide above.
See supra p. 9 n.1. Our argument is limited to claims under either provision
involving a defendants use of a mark to pass off its product as that of
another, which requires use by the defendant in a manner calculated to
trade on the goodwill and reputation of the plaintiff. The interpretation we
propose takes no position on the rights available to the owners of foreign
marks outside that context.
6

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IV.

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THE FALSE ADVERTISING, FALSE ASSOCIATION, AND ADMINISTRATIVE

CANCELLATION PROVISIONS IMPLEMENT THE UNITED STATES
OBLIGATIONS UNDER ARTICLE 6bis OF THE PARIS CONVENTION IN THE
CONTEXT OF THIS CASE.
A.

Sections 14(3) and 43(a)(1) Provide Bayer with Any Remedy

Required by Article 6bis of the Paris Convention.

Bayer no longer presses its contention that Article 6bis of the Paris
Convention, as implemented through Subsections 44(b) and (d) of the
Lanham Act, creates an independent ground for the cancellation of a
trademark registration used to misrepresent the source of goods. Thus, it is
unclear whether the Lanham Acts implementation of Article 6bis remains a
live issue in this appeal. Nevertheless, because the district court
erroneously suggested that the United States has failed to implement its
obligations under that treaty provision (JA 503), and because compliance
with its international obligations is a significant concern to the United
States, we briefly recount the Lanham Acts implementation of Article 6bis
and respond to Belmoras contrary arguments.
Article 6bis of the Paris Convention requires member states to cancel
the registration, and to prohibit the use, of a trademark which constitutes a

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reproduction . . . liable to create confusion, of a mark considered by the

competent authority of the country of registration or use to be well known
in that country as being already the mark of a person entitled to the
benefits of this Convention and used for identical or similar goods.
Because Subsections 43(a)(1)(A) and (B) of the Lanham Act do not require a
party suing on a claim of passing off to demonstrate that it has registered a
mark or used one in commerce in the United States, the owner of a foreign
mark that is well known but not used in this country may bring suit against
a competitor asserting false-association and false-advertising claims based
on injury to its domestic reputation. In such a suit, the foreign trademark
owner could seek cancellation of the offending registration. See 15 U.S.C.
1119. Similarly, because Section 14(3) permits a party to seek the
administrative cancellation of the registration of a mark without requiring
the petitioner to establish that it has registered a mark or used it in the
United States, the owner of a well-known foreign mark may petition the
TTAB for cancellation of the registration of a mark that is being used to

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pass off goods as those of the petitioner, even if the petitioner is not using
its foreign mark in commerce in the United States.
Thus, in the context of this case, these provisions of the Lanham Act
implement Article 6bis.
B.

Belmoras Contrary Arguments Lack Merit.

Belmora contends that our explanation of the interplay between the

Lanham Act provisions providing protections for passing off and the
requirements of Article 6bis suggest the view that because Congress
ratified the Paris Convention, Article 6bis was automatically enacted and
must be read into the Lanham Act. Resp. 57. That is incorrect. Our
argument, instead, is that Sections 14(3) and 43(a)(1) of the Lanham Act
satisfy any requirement in Article 6bis that a member state provide a
cancellation remedy for the owners of well-known foreign marks against
the owner of domestically registered trademark who is using the mark to
pass off its goods as those of the foreign mark owner. That follows not
because Article 6bis was automatically enacted, but because Sections
14(3) and 43(a)(1) by their terms do not require a party to allege registration
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or use of a mark in the United States to seek relief for passing off, thus
implementing Article 6bis of the Paris Convention.
Relying on the member states decision in 1958 not to amend the
Paris Convention to make clear that Article 6bis does not require the owner
of a well-known foreign mark to use the mark in a member state before
triggering the requirements of the provision, Belmora argues that Article
6bis imposes no obligations in the absence of use. Resp. 59 (citing G.H.C.
Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property 91 (1969), available at http://www.wipo.int
/edocs/pubdocs/en/intproperty/611/wipo_pub_611.pdf (last visited Aug. 7,
2015)). But the member states more recently adopted a Joint
Recommendation stating that [a] Member State shall not require, as a
condition for determining whether a mark is a well-known mark . . . that
the mark has been used in, or that the mark has been registered or that an
application for registration of the mark has been filed in or in respect of, the
Member State. Joint Recommendation Concerning Provisions on the
Protection of Well-Known Marks, WIPO Doc. 833(E), art. 2(3)(a)(i), Sept. 29,
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1999, available at http://www.wipo.int/edocs/pubdocs/en/marks/833/

pub833.pdf (last visited Aug. 7, 2015). The United States joined the
consensus to adopt that Joint Recommendation and has relied on that
prevailing interpretation of Article 6bis by assuming obligations under free
trade agreements with other countries. See, e.g., United States-Singapore
Free Trade Agreement, art. 16.1(2)(b)(i), signed May 6, 2003, available at
https://ustr.gov/sites/default/files/uploads/agreements/fta/singapore/
asset_upload_file708_4036.pdf (last visited Aug. 7, 2015) (committing the
United States to give effect to Articles 1-6 of the Joint Recommendation).
In sum, because it misunderstood the scope of Lanham Act Sections
14(3) and 43(a)(1)(A) and (B), the district court erred in suggesting that the
United States has not implemented its obligations under Article 6bis.

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CONCLUSION
For the foregoing reasons, and those stated in our opening brief, the
Court should reverse the judgment of the district court.
Respectfully submitted,
BENJAMIN C. MIZER
Principal Deputy Assistant
Attorney General

Of Counsel:
THOMAS W. KRAUSE
Acting Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
BENJAMIN T. HICKMAN
Associate Solicitors
United States Patent and
Trademark Office

DANA J. BOENTE
United States Attorney
MARK R. FREEMAN
s/ Lewis S. Yelin
LEWIS S. YELIN
(202) 514-3425
Attorneys, Appellate Staff
Civil Division, Room 7233
U.S. Department of Justice
950 Pennsylvania Ave., N.W.
Washington, D.C. 20530

August 7, 2015

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CERTIFICATE OF COMPLIANCE
WITH FEDERAL RULE OF APPELLATE PROCEDURE 32(a)
I hereby certify that this brief complies with the requirements of Fed.
R. App. P. 32(a)(5) and (6) because it has been prepared in 14-point Palatino
Linotype, a proportionally spaced font.
I further certify that this brief complies with the type-volume
limitation of Fed. R. App. P. 32(a)(7)(B) because it contains 6,983 words,
excluding the parts of the brief exempted under Rule 32(a)(7)(B)(iii),
according to the count of Microsoft Word.

s/ Lewis S. Yelin
LEWIS S. YELIN
Counsel for Intervenor

Appeal: 15-1335

Doc: 49

Filed: 08/07/2015

Pg: 48 of 48

CERTIFICATE OF SERVICE
I hereby certify that on August 7, 2015, I electronically filed the
foregoing brief with the Clerk of the Court for the United States Court of
Appeals for the Fourth Circuit by using the appellate CM/ECF system,
which constitutes service on all parties under the Courts rules.
I further certify that I caused 8 paper copies of this brief to be filed
with the Court by overnight delivery.

s/ Lewis S. Yelin
LEWIS S. YELIN
Counsel for Intervenor