Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged (http://www.marksworksandsecrets.com/2016/04/flanax-protecting-foreign-marks-from-us-unfair-competition-under-section-43a), the 4th Circuit reversed the Eastern District of Virginia’s dismissal for lack of standing, and found that use of the mark in the US is not a prerequisite to suit under § 43(a) for unfair competition or false advertising, or under § 14(3) for cancellation.
In its petition for reconsideration en banc, Belmora argues that the 4th Circuit panel decision warrants en banc review because “it (i) overlooked material facts and legal considerations; (ii) conflicts with decisions of the United States Supreme Court, this Court, and other U.S. circuit courts of appeal; and (iii) raises questions of exceptional importance regarding the scope of 15 U.S.C. §§1051 et. seq. (“the Lanham Act”).
The petition goes on:
In holding that a claimant need neither own nor have used a trademark in U.S. commerce to maintain a cause of action under either § 14(3) or § 43(a) of the Lanham Act, the panel decision appeared to be motivated by a sense of ethical outrage – misplaced, as will be shown – directed at one party as a result of which the Court, it is respectfully submitted, was regrettably too quick to throw out the legal baby with the equitable bathwater. In doing so, it jettisoned its own precedent, failed to address substantively significant authority that is in accord with that approach, and, by giving short shrift to the plain language of the statute and a forced reading of Lexmark Int’l Inc. v. Static Control Component, Inc., 134 Ct. 1377 (2014) threatened to undermine the integrity of the federal trademark system by widening any extant circuit split on this issue with a crowbar.
No doubt, more to come.
