USPTO Reply Brief in passing off case

8/20/2019 USPTO Reply Brief in passing off case

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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 SolicitorCHRISTINA 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 AttorneyMARK 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

Appeal: 15-1335 Doc: 49 Filed: 08/07/2015 Pg: 1 of 48


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TABLE OF CONTENTS

TABLE OF AUTHORITIES ................................................................................. iii

INTRODUCTION AND SUMMARY ..................................................................2ARGUMENT ............................................................................................................8

I. Bayer’s 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 Plaintiff’s Own

Trademark.................................................................................................10

A. Bayer Stated a Claim for False Advertising Under Section

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

B. Belmora’s Contrary Arguments Lack Merit. .....................................14

III. A Party May Seek Relief for a Defendant’s Passing Off Under the

Lanham Act Without Alleging Infringement of the Party’s Own

Trademark.................................................................................................21

A. Bayer Stated a Claim for False Association Under Section

43(a)(1)(A). .............................................................................................21

B. Bayer Properly Obtained Administrative Cancellation of

Belmora’s Trademark Registration Under Section 14(3). ...............25

C. Belmora’s Contrary Arguments Lack Merit. .....................................27

IV. 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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- ii -

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

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

B. Belmora’s Contrary Arguments Lack Merit. .....................................35

CONCLUSION ......................................................................................................38

CERTIFICATE OF COMPLIANCE

CERTIFICATE OF SERVICE



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- iii -

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 Int’l, 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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- iv -

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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- v -

Schlotzsky’s Ltd. v. Sterling Purchasing & Nat’l 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 MitBeschrankter Haftung v. Marks and Spencer, Ltd. ,

203 U.S.P.Q. 793, 1979 WL 25355 (T.T.A.B. 1979) .........................................30

Otto Int’l, 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. Blickle’s 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 Well-

Known 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

Webster’s 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-Appellantsv.

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 PATENTAND TRADEMARK OFFICE



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INTRODUCTION AND SUMMARY

As its brief makes clear, Belmora’s 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 Bayer’s FLANAX mark among Mexican-American

consumers in the United States, mimic Bayer’s packaging, and promote its

products with advertisements falsely associating itself with Bayer’s “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, Belmora’s

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 Bayer’s complaint properly

states claims under Sections 43(a)(1)(A) and (B) and that Bayer properly

obtained cancellation of Belmora’s trademark registration under Section

14(3). First , the Supreme Court’s and this Court’s precedent make clear

that the Lanham Act’s 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 defendant’s false

advertising. Br. 37-41. Second , the Lanham Act’s 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 Act’s administrative cancellation

provision, Section 14(3), allows a party such as Bayer to seek the

cancellation of another’s 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 well-

known 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.

Belmora’s contrary arguments lack merit. Belmora broadly contends

that recognizing Bayer’s claims in this case under Section 43(a)(1) and

upholding the TTAB’s cancellation of Belmora’s 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 Bayer’s claims creates no exception to the

territoriality doctrine.

The heart of Belmora’s argument is its insistence that a party may not

maintain a cause of action for false association or seek administrative

cancellation of another’s 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 false-

association 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 Belmora’s deceptive

conduct. And Belmora’s factual objections miss the mark because the

district court dismissed Bayer’s claims at the pleading stage. Belmora also

contends that Bayer may not maintain a false-advertising claim because



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Belmora’s 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 Belmora’s

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 Act’s

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 court’s judgment.



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ARGUMENT

I. BAYER’S 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 Belmora’s 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 country’s 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 Act’s 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 Bayer’s claims in this case

would not create an exception to the doctrine of territoriality.1

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. Belmora’s 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. A PARTY MAY MAINTAIN A CLAIM FOR FALSE ADVERTISING UNDER

THE LANHAM ACT WITHOUT ALLEGING INFRINGEMENT OF THE

PLAINTIFF’S OWN TRADEMARK.

A. Bayer Stated a Claim for False Advertising Under Section43(a)(1)(B).

Belmora makes no serious attempt to reconcile its arguments with the

Supreme Court’s decisions in Lexmark International, Inc. v. Static Control

Components, Inc. , 134 S. Ct. 1377 (2014), and POM Wonderful LLC v. Coca-

Cola Co. , 134 S. Ct. 2228 (2014). Those decisions provide recent,

authoritative guidance on the scope of the Lanham Act’s false-advertising

provision. Both cases establish that, contrary to Belmora’s 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 Control’s 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 false-

advertising claim against Lexmark, alleging that Lexmark’s 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 Control’s 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 person’s goods”). In upholding Static Control’s 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 defendant’s 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 defendant’s 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

plaintiff’s reliance on the Lanham Act. Id. at 2234. The Supreme Court

explained that, in the absence of that question, the plaintiff’s Lanham Act

claim was “straightforward”: the plaintiff had asserted an injury to a

commercial interest in sales or reputation proximately caused by the

defendant’s 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 rights—what 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 Act’s 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 Belmora’s deceptive advertising

directly caused lost sales of Bayer Healthcare LLC’s ALEVE brand of

naproxen sodium sold in the United States. JA 163 (¶¶ 55-57). It alleged

that Belmora’s marketing and sales directly harmed Bayer Consumer Care

AG’s commercial good will in its Mexican mark FLANAX “among

American consumers.” JA 165 (¶ 74). And the complaint may fairly be

read to allege that Belmora’s 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 Belmora’s



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misleading marketing, the district court erred in dismissing Bayer’s false-

advertising claim.

B. Belmora’s Contrary Arguments Lack Merit.

Belmora’s various arguments supporting the district court’s dismissal

of Bayer’s 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 court’s dismissal at the pleading stage.

Belmora asserts that the district court correctly dismissed Bayer

Consumer Care AG’s 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 defendant’s misrepresentations.” POM Wonderful , 134 S. Ct. at

2234 (quotation and alteration marks omitted). As just noted, Bayer’s

complaint alleges injury to Bayer Consumer Care AG’s 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 Belmora’s 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 Belmora’s misrepresentation. It is, therefore, “within the

class of persons” protected by the Lanham Act.

To the extent Belmora acknowledges Bayer Consumer Care AG’s

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 Belmora’s in the United States

naproxen sodium market.” Resp. 77. But Belmora contends that Bayer

failed adequately to allege that Belmora’s misrepresentation caused any

injury to Bayer Healthcare LLC’s sales of its ALEVE brand naproxen

sodium. Resp. 78. In fact, Bayer’s complaint alleged that Belmora’s

misleading advertising has “actually deceived, have the tendency to

deceive, and/or are likely to deceive consumers” about the nature of

Belmora’s FLANAX product (JA 163, ¶ 55; see id. ¶ 54); that Belmora’s

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 Belmora’s 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 [plaintiff’s] 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 Belmora’s 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 Bayer’s false-advertising claim

because Belmora’s 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: Belmora’s misrepresentation related to the



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manufacturer of the product, and the manufacturer of a product is one of

its characteristics. See Webster’s 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 defendant’s

“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

advertisement—such as a misrepresentation that the product is

manufactured by someone else—can 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 plaintiff’s

false advertising claim based on the allegation that the defendant had

misrepresented the legality of the plaintiff’s 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 court’s 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 Belmora’s passing off was

reasonably likely to influence purchasing decisions. But Bayer’s false-



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advertising claim is not deficient merely because Belmora’s misleading

statements did not relate to an inherent quality of its or Bayer’s products.2

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 Act’s 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 another’s goods as its own) under the false-associationprovision 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 wasdifferent from the plaintiff’s, 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.



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III. A PARTY MAY SEEK RELIEF FOR A DEFENDANT’S PASSING OFF UNDER

THE LANHAM ACT WITHOUT ALLEGING INFRINGEMENT OF THE PARTY’S

OWN TRADEMARK.

A. Bayer Stated a Claim for False Association Under Section43(a)(1)(A).

Bayer likewise errs in insisting that Bayer cannot assert a false-

association 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 defendant’s misrepresentation of his own goods or services as

someone else’s. See American Steel Foundries v. Robertson , 269 U.S. 372, 380

(1926).

Passing off could—but often did not—involve traditional trademark

infringement. A party might engage in passing off by misappropriating



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another’s 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 “Quin-

Coco.” 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 plaintiff’s] 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., Schlotzsky’s Ltd. v. Sterling

Purchasing & Nat’l 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 Act’s 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 plaintiff’s

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 Belmora’s intentional adoption and use of the same

FLANAX mark as Bayer’s in a manner designed to trade on the goodwill



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Bayer’s FLANAX mark enjoys among Mexican-American consumers and

to deceive those consumers into believing that Belmora’s goods are those of

Bayer.

B. Bayer Properly Obtained Administrative Cancellation of

Belmora’s Trademark Registration Under Section 14(3).

Section 14(3), part of the Lanham Act’s 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 party’s

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 Int’l, 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 Int’l, 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 another’s 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

petitioner’s 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 agency’s cancellation

of Belmora’s registration of the FLANAX mark.3

C. Belmora’s Contrary Arguments Lack Merit.

Belmora argues (Resp. 29-54) that a party may not maintain a false-

association 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.

3 As our opening brief explained (Br. 53-56), there is some questionabout 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 Belmora’s passing off directly injured the reputation

of Bayer’s 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 Belmora’s arguments on appeal are limited to whether a

petitioner seeking administrative cancellation of a trademark must itselfuse 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).



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Belmora’s 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 claim—a violation of a

technical right in a trademark—must 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

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.

Belmora’s 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 another’s 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 ,Fallwell’s 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. Blickle’s 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 respondent’s 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

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 petitioner’s contention

that the respondent had misrepresented the source of goods by infringing

the petitioner’s trademark. See Otto Int’l , 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.



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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, Belmora’s

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

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 provisioninvolving a defendant’s 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.



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IV. 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 Act’s 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 Act’s implementation of Article 6bis

and respond to Belmora’s 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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34

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. Belmora’s 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,

Of Counsel:

THOMAS W. KRAUSE

Acting SolicitorCHRISTINA 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

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. YELINCounsel for Intervenor



48/48

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 Court’s 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


Documents

USPTO Reply Brief in passing off case