USCA4 Appeal: 18-2183 Doc: 70 Filed: 02/02/2021 Pg: 1 of 24
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`PUBLISHED
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`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
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`No. 18-2183
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`Plaintiff – Appellee,
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`v.
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`Defendants – Consolidated Plaintiffs – Appellants,
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`BELMORA LLC,
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`BAYER CONSUMER CARE AG, a Swiss Corporation; BAYER HEALTHCARE LLC,
`a Delaware Limited Liability Company,
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`v.
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`BELMORA LLC, a Virginia Limited Liability Company; JAMIE BELCASTRO, an
`individual,
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`Consolidated Defendants – Appellees,
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`and
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`DOES, 1 – 10, inclusive,
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`Consolidated Defendants.
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`------------------------
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`UNITED STATES OF AMERICA
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`Amicus Supporting Appellant.
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`USCA4 Appeal: 18-2183 Doc: 70 Filed: 02/02/2021 Pg: 2 of 24
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`No. 18-2232
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`Plaintiff – Appellant,
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`v.
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`Defendants – Consolidated Plaintiffs – Appellees,
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`BELMORA LLC,
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`BAYER CONSUMER CARE AG, a Swiss Corporation; BAYER HEALTHCARE LLC,
`a Delaware Limited Liability Company,
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`v.
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`BELMORA LLC, a Virginia Limited Liability Company; JAMIE BELCASTRO, an
`individual,
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`Consolidated Defendants – Appellants,
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`and
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`DOES, 1 – 10, inclusive,
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`Consolidated Defendants.
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`Appeals from the United States District Court for the Eastern District of Virginia, at
`Alexandria. Claude M. Hilton, Senior District Judge. (1:14-cv-00847-CMH-JFA)
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`Argued: October 26, 2020
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`Before AGEE, FLOYD, and THACKER, Circuit Judges.
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`Decided: February 2, 2021
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`Affirmed in part, vacated in part, and remanded with instructions by published opinion.
`Judge Floyd wrote the opinion, in which Judge Agee and Judge Thacker joined.
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`2
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`ARGUED: Jessica Andrea Ekhoff, PATTISHALL, MCAULIFFE, NEWBURY,
`HILLIARD & GERALDSON LLP, Chicago, Illinois, for Appellants/Cross-Appellees.
`Lewis Yelin, UNITED STATES DEPARTMENT OF JUSTICE, Washington, D.C., for
`Amicus United States of America.
` Joel Geoffrey MacMull, MANDELBAUM
`SALSBURG, PC, New York, New York; Ronald David Coleman, DHILLON LAW
`GROUP, New York, New York, for Appellees/Cross-Appellants. ON BRIEF: Phillip
`Barengolts, Bradley L. Cohn, PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD &
`GERALDSON LLP, Chicago, Illinois; Robert J. Shaughnessy, WILLIAMS &
`CONNOLLY LLP, Washington, D.C., for Appellants/Cross-Appellees. Craig C. Reilly,
`LAW OFFICES OF CRAIG C. REILLY, Alexandria, Virginia, for Appellees/Cross-
`Appellants. Joseph H. Hunt, Assistant Attorney General, Mark R. Freeman, Civil Division,
`UNITED STATES DEPARTMENT OF JUSTICE, Washington, D.C.; Thomas S. Krause,
`Solicitor, Christina J. Hieber, Associate Solicitor, Mary Beth Walker, Associate Solicitor,
`Benjamin T. Hickman, Associate Solicitor, UNITED STATES PATENT AND
`TRADEMARK OFFICE, Alexandria, Virginia; G. Zachary Terwilliger, United States
`Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for
`Amicus United States of America.
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`3
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`FLOYD, Circuit Judge:
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`This appeal arises out of an action brought by Bayer Consumer Care AG (Bayer)
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`alleging that Belmora LLC (Belmora) engaged in unfair competition in violation of § 43(a)
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`of the Lanham Act. The district court held that Bayer’s § 43(a) claims were time-barred.
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`Because the Lanham Act does not include a limitations period for § 43(a) claims, the
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`district court borrowed the statute of limitations from the most analogous state law,
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`declining to apply the equitable doctrine of laches to those claims.
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`For the reasons set forth below, we conclude that laches, rather than a statute of
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`limitations, is the appropriate defense to Bayer’s § 43(a) claims. We also conclude that the
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`district court failed to consider whether Bayer’s related state-law claims were subject to
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`tolling. Accordingly, we vacate the district court’s judgment on Bayer’s § 43(a) and related
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`state-law claims and remand for further proceedings consistent with this opinion. We
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`affirm the district court’s judgment in all other respects.
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`I.
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`A.
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`Since the 1970s, Bayer’s Mexican affiliate has sold naproxen sodium pain relievers
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`under the trademark “FLANAX” in Mexico and other parts of Latin America. Bayer, a
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`Swiss entity, owns a Mexican registration for the FLANAX mark.1 Bayer neither owns an
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`1 Bayer’s Mexican affiliate, which is not a party to this case, distributes FLANAX
`in that country through a licensing agreement with Bayer.
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`American registration for the mark nor sells pain relievers under the FLANAX name in the
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`United States. Rather, Bayer’s American sister company, Bayer Healthcare LLC (BHC),
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`sells naproxen sodium pain relievers in the United States under the “ALEVE” name.2
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`Bayer’s FLANAX is a top-selling pain reliever in Mexico. The drug is therefore
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`well known among consumers in the United States who have spent time in Mexico and
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`other parts of Latin America.
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`Given the familiarity with FLANAX among a large subset of consumers in the
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`United States, Belmora saw an opportunity to sell naproxen sodium pain relievers under
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`the FLANAX name to American consumers. To that end, Belmora began selling naproxen
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`sodium pain relievers under the FLANAX name in the United States in 2004.
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`Belmora’s early marketing materials targeted Hispanic American consumers
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`familiar with FLANAX. Belmora’s founder, Jamie Belcastro, described the company’s
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`business model as “provid[ing] a user-friendly menu of . . . drug products for common
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`ailments to U.S. residents of Hispanic background.” J.A. 85. Belmora also associated its
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`FLANAX pain relievers with Bayer’s FLANAX sold in Mexico. For example, a
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`telemarketer script identified Belmora as “the direct producers of FLANAX” in the United
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`States and described its product as “a very well-known medical product in the Latino
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`2 BHC is also a party to this case. Bayer and BHC are separate entities asserting
`slightly different claims. But because any distinction between the two entities is irrelevant
`to our analysis in this opinion, we refer to Bayer and BHC collectively as “Bayer,” unless
`otherwise noted.
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`5
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`American market [that is] sold successfully in Mexico.” J.A. 94. Belmora’s packaging
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`used a color scheme, font size, and typeface similar to Bayer’s FLANAX packaging.
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`On October 6, 2003, Belmora petitioned the U.S. Patent and Trademark Office
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`(PTO) to register the FLANAX mark. On February 27, 2004, Bayer filed a competing
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`application with the PTO to register the mark.3 The PTO published Belmora’s application
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`for opposition on August 3, 2004. On September 19, 2004, the PTO sent a letter to Bayer
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`suspending its application, citing Belmora’s earlier application. The PTO issued the
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`registration to Belmora on February 1, 2005.
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`On June 29, 2007, Bayer petitioned the U.S. Trademark Trial and Appeal Board
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`(TTAB) to cancel Belmora’s registration. Bayer’s petition sought cancellation under
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`§ 14(3) of the Lanham Act, alleging that Belmora misrepresented the source of its goods
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`bearing the FLANAX mark.4 The parties litigated the matter before the TTAB for nearly
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`seven years. On April 17, 2014, the TTAB granted Bayer’s petition and canceled
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`Belmora’s registration. The TTAB concluded that the evidence “readily establish[ed]
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`blatant misuse of the FLANAX mark [by Belmora] in a manner calculated to trade in the
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`United States on the reputation and goodwill of [Bayer’s] mark created by its use in
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`Mexico.” J.A. 90. Specifically, the TTAB found that Belmora (1) knew that the FLANAX
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`mark was in use in Mexico when it adopted the mark in the United States, (2) copied
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`3 In actuality, Bayer’s predecessor-in-interest filed the application. Bayer acquired
`the rights to the mark in September 2005.
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`4 Bayer’s cancellation petition also asserted the following claims: (1) likelihood of
`confusion under § 2(d) of the Lanham Act, (2) a claim under Article 6bis of the Paris
`Convention, and (3) fraud. The TTAB dismissed those claims with prejudice.
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`6
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`Bayer’s packaging, and (3) “repeatedly invoked” the reputation of Bayer’s product in its
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`marketing materials. J.A. 91–93.
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`On June 9, 2014—less than two months after the TTAB issued its ruling—Bayer
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`B.
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`sued Belmora in the Central District of California. The complaint asserted claims for false
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`association and false advertising under § 43(a) of the Lanham Act. The complaint also
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`asserted three related claims under California law for unfair competition and false
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`advertising.5
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`Meanwhile, Belmora sought review of the TTAB decision in the Eastern District of
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`Virginia pursuant to 15 U.S.C. § 1071(b). The Central District of California transferred
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`Bayer’s suit to the Eastern District of Virginia pursuant to 28 U.S.C. § 1404(a), where it
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`was consolidated with Belmora’s action. Belmora moved to dismiss Bayer’s § 43(a)
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`claims under Federal Rule of Civil Procedure 12(b)(6) and moved for judgment on the
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`pleadings as to Bayer’s § 14(3) claim litigated in the TTAB proceedings. The district court
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`granted Belmora’s motion. Bayer appealed.
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`We vacated the district court’s dismissal and remanded for further proceedings.
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`Belmora LLC v. Bayer Consumer Care AG (Belmora I), 819 F.3d 697, 715 (4th Cir. 2016),
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`cert. denied, 137 S. Ct. 1202 (2017). On remand, Belmora filed an answer to Bayer’s
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`5 BHC joined Bayer as a plaintiff in the Central District of California action. Bayer
`alone brought the § 43(a) false association claim. Both Bayer and BHC brought the § 43(a)
`false advertising claim and the state-law claims.
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`7
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`complaint and brought seven counterclaims. Both parties moved for summary judgment.
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`Bayer sought summary judgment on each of Belmora’s counterclaims and affirmance of
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`the TTAB decision. Belmora sought summary judgment on Bayer’s § 43(a) and related
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`state-law claims, arguing that those claims were barred by the statute of limitations and
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`laches. In response to Belmora’s motion, Bayer argued that laches, not a statute of
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`limitations, governed its § 43(a) claims. Bayer also argued that its state-law claims were
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`subject to tolling.
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`The district court granted both parties’ motions. As to Belmora’s motion, the court
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`concluded that Bayer’s claims were time-barred, reasoning that Bayer had “misse[d] the
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`statute of limitations by almost a decade” on its § 43(a) claims, implicitly rejecting Bayer’s
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`laches arguments. J.A. 888. The district court further concluded that Bayer’s state-law
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`claims were time-barred but did not address Bayer’s contention that its cancellation petition
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`with the TTAB tolled those claims. As to Bayer’s motion, the district court concluded that
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`Belmora failed to marshal evidence to support each of its counterclaims. This cross-appeal
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`followed.
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`We review the district court’s summary judgment rulings de novo. Synergistic Int’l,
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`II.
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`LLC v. Korman, 470 F.3d 162, 170 (4th Cir. 2006). “Summary judgment is appropriate
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`when there is no genuine issue of material fact and the moving party is entitled to judgment
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`8
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`as a matter of law.” Ray Cmmc’ns, Inc. v. Clear Channel Commc’ns, Inc., 673 F.3d 294,
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`299 (4th Cir. 2012) (citing Fed. R. Civ. P. 56(a)).
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`Because the district court “disposed of cross-motions for summary judgment, ‘we
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`consider each motion separately on its own merits to determine whether either of the parties
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`deserves judgment as a matter of law.’” Defenders of Wildlife v. N.C. Dep’t of Transp.,
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`762 F.3d 374, 392 (4th Cir. 2014) (quoting Bacon v. City of Richmond, 475 F.3d 633, 638
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`(4th Cir. 2007)). “In considering each motion, we ‘resolve all factual disputes and any
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`competing, rational inferences in the light most favorable to the party opposing that
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`motion.’” Id. (quoting Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003)).
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`On appeal, Bayer contends that the district court erred in concluding that its § 43(a)
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`III.
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`and related state-law claims were time-barred. In its cross-appeal, Belmora argues that the
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`district court erred in holding that its counterclaims failed as a matter of law. Belmora also
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`contends that the district court erred in affirming the TTAB decision.
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`We begin with Bayer’s claims under § 43(a) of the Lanham Act. “While much of
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`A.
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`the Lanham Act addresses the registration, use, and infringement of trademarks and related
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`marks, § 43(a) . . . goes beyond trademark protection.” Dastar Corp. v. Twentieth Century
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`Fox Film Corp., 539 U.S. 23, 28–29 (2003). That provision “sets forth unfair competition
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`causes of action for false association and false advertising.” Belmora I, 819 F.3d at 706;
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`9
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`see also Advanced Res. Int’l, Inc. v. Tri-Star Petrol. Co., 4 F.3d 327, 334 (4th Cir. 1993)
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`(“The typical § 43(a) Lanham Act claim is brought by a plaintiff who is in competition
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`with the defendant, and charges the defendant with using a mark . . . so similar to that of
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`the plaintiff’s that the public may be confused as to the source of the good or service.”).
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`Here, Bayer asserts that Belmora’s use of the FLANAX mark in the United States amounts
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`to false association and false advertising in violation of § 43(a).
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`Because the Lanham Act does not contain an explicit limitations period for § 43(a)
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`claims, the district court “follow[ed] the traditional practice of borrowing the most
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`analogous statute of limitations from state law.” J.A. 887. The district court concluded
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`that the statute of limitations began running on Bayer’s claims as early as September 19,
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`2004—the date on which the PTO suspended Bayer’s competing application to register the
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`FLANAX mark. And because Bayer filed its complaint in the Central District of California
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`in June 2014, the district court held that Bayer “misse[d] the statute of limitations by almost
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`a decade.” J.A. 888. Bayer contends that the district court erred by reading a limitations
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`period into the Lanham Act where none exists for § 43(a) claims. Bayer argues that laches,
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`rather than a statute of limitations, is the appropriate defense to its claims.
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`Before proceeding further, we pause to clarify which circuit’s law guides our inquiry
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`1.
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`into whether Bayer’s § 43(a) claims are time-barred. Bayer’s claims arrived in the Eastern
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`District of Virginia following a transfer of venue from the Central District of California
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`10
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`pursuant to 28 U.S.C. § 1404(a). Accordingly, both parties invite us to apply the law of
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`the transferor court—here, the law of the Ninth Circuit—to resolve the matter.
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`A transfer under § 1404(a) from one federal district court to another results in
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`nothing more than “a change of courtrooms.” Van Dusen v. Barrack, 376 U.S. 612, 639
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`(1964). Thus, in diversity cases, the transferee court applies the state law that the transferor
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`court would have applied absent the transfer. Id. Otherwise, “initiating a transfer under
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`§ 1404(a) [would] change[] the state law applicable to a diversity case,” Ferens v. John
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`Deere Co., 494 U.S. 516, 526 (1990), which would violate the federalism principles
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`underlying Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938).
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`That rationale collapses in federal question cases that require a transferee court to
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`do nothing more than interpret federal law. Unlike state law, federal law is a “single body
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`of law,” which each federal court “has an obligation to . . . independently” interpret. In re
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`Korean Air Lines Disaster of Sept. 1, 1983, 829 F.2d 1171, 1175–76 (D.C. Cir. 1987), aff’d
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`on other grounds sub nom. Chan v. Korean Air Lines, Ltd., 490 U.S. 122 (1989) (quoting
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`H.L. Green Co. v. MacMahon, 312 F.2d 650, 652 (2d Cir. 1962)). And “every Circuit . . .
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`has concluded that when one district court transfers a case to another, the norm is that the
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`transferee court applies its own Circuit’s cases on the meaning of federal law.” AER
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`Advisors, Inc. v. Fidelity Brokerage Servs., LLC, 921 F.3d 282, 288 (1st Cir. 2019); accord
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`Bradley v. United States, 161 F.3d 777, 782 n.4 (4th Cir. 1998) (declining to “apply the
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`law of another circuit simply because the case was transferred from the other circuit”).
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`This appeal requires us to decide whether to apply a statute of limitations borrowed
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`from the most analogous state law or instead some other “timeliness rule[] drawn from
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`federal law” to claims under § 43(a) of the Lanham Act, which does not expressly contain
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`a limitations period for those claims. DelCostello v. Int’l B’hood of Teamsters, 462 U.S.
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`151, 162 (1983). Whether to read a limitations period into a federal law is a garden-variety
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`question of federal statutory interpretation. See Menowitz v. Brown, 991 F.2d 36, 40 (2d
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`Cir. 1993) (per curiam) (“Whether or not courts apply a state limitations period to a federal
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`claim, ‘the choice of a limitations period for a federal cause of action is itself a question of
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`federal law.’” (quoting DelCostello, 462 U.S. at 159 n.13)). Because § 43(a) is part of a
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`single body of federal law, we apply Fourth Circuit law to interpret it.
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`We turn to the primary issue raised in this appeal: whether a statute of limitations
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`2.
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`or some other timeliness rule applies to Bayer’s § 43(a) claims. See 15 U.S.C. § 1125(a).
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`“As is often the case in federal law,” the Lanham Act does not expressly incorporate a
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`limitations period for § 43(a) claims. DelCostello, 462 U.S. at 158.6 In the absence of an
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`express limitations period, we typically hold “that Congress intended that the courts apply
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`the most closely analogous statute of limitations under state law.” Id. But “state statutes
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`of limitations can be unsatisfactory vehicles for the enforcement of federal law.” Id. at
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`161; see also Reed v. United Transp. Union, 488 U.S. 319, 324 (1989) (describing the
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`“closely circumscribed exception to the general rule that statutes of limitations are to be
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`6 Unlike § 43(a) claims, infringement claims are expressly subject to “equitable
`principles, including laches, estoppel, and acquiescence.” 15 U.S.C. § 1115(b)(9); see Ray
`Commc’ns, Inc., 673 F.3d at 300 (applying laches to an infringement claim).
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`12
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`borrowed from state law”). In those circumstances, courts “decline[] to borrow state
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`statutes” and “instead use[] timeliness rules drawn from federal law—either express
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`limitations periods from related federal statutes, or such alternatives as laches.”
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`DelCostello, 462 U.S. at 162.
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`We conclude that § 43(a) is one such federal law for which a state statute of
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`limitations would be an unsatisfactory vehicle for enforcement. Rather, the affirmative
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`defense of laches, which applies to claims that are equitable in nature, see White v. Daniel,
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`909 F.2d 99, 102 (4th Cir. 1990), “provides a closer analogy than available state statutes,”
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`DelCostello, 462 U.S. at 172.
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`The text of § 43(a) supports this conclusion. See Broughman v. Carver, 624 F.3d
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`670, 675 (4th Cir. 2010) (“Because Congress’ intent ‘can most easily be seen in the text of
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`the Acts it promulgates,’ we begin with an examination of the statute’s ‘plain text.’”
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`(quoting United States v. Wills, 234 F.3d 174, 178 (4th Cir. 2000))). The Lanham Act
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`provides that § 43(a) claims for damages are “subject to the principles of equity,” 15 U.S.C.
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`§ 1117(a), and that courts may grant injunctive relief to remedy § 43(a) violations
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`“according to the principles of equity,” id. § 1116(a). Other circuits have similarly
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`emphasized “the equitable character of § 43(a) actions” in applying a laches defense to
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`§ 43(a) claims. Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 836–37 (9th
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`Cir. 2002); see Santana Prods., Inc. v. Bobrick Washroom Equip., Inc., 401 F.3d 123, 135
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`(3d Cir. 2005); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 822 (7th Cir. 1999).
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`Accordingly, considering “the federal policies at stake and the practicalities of
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`litigation,” Reed, 488 U.S. at 324 (quoting DelCostello, 462 U.S. at 172), we hold that
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`laches is the appropriate defense to § 43(a) claims. Laches is “an equitable defense” that
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`“is distinct from the statute of limitations.” Jarrow, 304 F.3d at 835. Laches “generally
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`applies to preclude relief for a plaintiff who has unreasonably ‘slept’ on his rights.” PBM
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`Prods., LLC v. Mead Johnson & Co., 639 F.3d 111, 121 (4th Cir. 2011) (applying laches
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`to a § 43(a) claim).7
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`The district court held that Bayer’s § 43(a) claims were barred by the most
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`analogous state-law statute of limitations. The district court therefore judged the timeliness
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`of Bayer’s § 43(a) claims under an incorrect legal standard. Accordingly, we vacate the
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`portion of the district court’s order granting summary judgment on Bayer’s § 43(a) claims
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`and remand for the court to determine whether those claims are barred by laches and to
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`make any further factual findings necessary to support that determination. See White, 909
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`7 In addition to properly applying laches to a set of § 43(a) claims, the PBM
`Products, LLC court disposed of a second set of § 43(a) claims as barred per se by the
`analogous state statute of limitations. 639 F.3d at 121. That determination directly
`conflicts with a prior precedential decision of this Court, which acknowledged that Lanham
`Act claims are not controlled by any statute of limitations. See What-A-Burger of Va., Inc.
`v. Whataburger, Inc. of Corpus Christi, Tx., 357 F.3d 441, 449 (4th Cir. 2004) (“Because
`the Lanham Act does not include a limitations period, courts use the doctrine of laches to
`address the inequities created by a trademark owner who, despite having a colorable
`infringement claim, allows a competitor to develop its products around the mark and
`expand its business, only then to lower the litigation boom.”). While What-A-Burger dealt
`with an infringement claim, as we have explained above, the text of § 43(a) similarly does
`not allow courts to borrow a state statute of limitations to bar a plaintiff’s claims. Without
`any other means of reconciling the two decisions, we are bound to apply the principles
`correctly espoused in What-A-Burger. See McMellon v. United States, 387 F.3d 329, 333–
`34 (4th Cir. 2004) (en banc) (“[W]hen there is an irreconcilable conflict between opinions
`issued by three-judge panels of this court, the first case to decide the issue is the one that
`must be followed, unless and until it is overruled by this court sitting en banc or by the
`Supreme Court.”).
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`F.2d at 102 (observing that a laches finding “depends upon the particular circumstances of
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`the case”).
`
`
`
`
`
`On remand, the statute of limitations from the most analogous state law will
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`3.
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`continue to play an important role in the district court’s laches analysis. Laches is
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`presumed to bar § 43(a) claims filed outside the analogous limitations period. See PBM
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`Prods., LLC, 639 F.3d at 121; accord Jarrow, 304 F.3d at 837; Hot Wax, Inc., 191 F.3d at
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`822. But “whether a Lanham Act claim has been brought within the analogous state statute
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`of limitations is not the sole indicator of whether laches may be applied in a particular
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`case.” Hot Wax, Inc., 191 F.3d at 821–22.
`
`
`
`Should the district court conclude that the presumption applies to Bayer’s § 43(a)
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`claims, the district court should consider the following factors to determine if Bayer can
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`overcome the presumption: (1) whether Bayer knew of Belmora’s adverse use of the
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`FLANAX mark, (2) whether Bayer’s delay in challenging that use “was inexcusable or
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`unreasonable,” and (3) whether Belmora “has been unduly prejudiced” by Bayer’s delay.
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`See Ray Commc’ns, Inc., 673 F.3d at 300.8
`
`
`
`
`8 In addition to applying the statute-of-limitations presumption as a threshold
`inquiry, other circuits also import the presumption into the analysis of the laches factors.
`See, e.g., Jarrow, 304 F.3d at 838–39 (observing that “[t]he reasonableness of the
`plaintiff’s delay is considered in light of the time allotted by the analogous limitations
`period”). But doing so inappropriately double counts the presumption. We therefore
`
`
`
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`B.
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`
`
`In addition to its § 43(a) claims, Bayer brought unfair competition and false
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`advertising claims under California law. At summary judgment, Bayer argued that the
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`filing of its cancellation petition with the TTAB tolled the statute of limitations applicable
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`to those claims.9 The district court held that Bayer’s state-law claims were time-barred but
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`never addressed Bayer’s tolling arguments or made any factual findings to determine
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`whether Bayer’s claims were subject to tolling. Thus, the absence of fact-finding on the
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`tolling question by the district court deprives us of the ability to conduct appellate review
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`on the current record. Accordingly, we vacate the portion of the district court’s order
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`granting summary judgment on Bayer’s state-law claims and remand for the district court
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`to determine in the first instance whether those claims are subject to tolling and to make
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`any further factual findings necessary to support that determination.
`
`
`
`
`
`We next turn to Belmora’s seven counterclaims. Belmora brought the following
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`C.
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`counterclaims against Bayer: (1) trademark infringement in violation of §§ 15 and 33(b) of
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`the Lanham Act, (2) common-law trademark infringement, (3) unfair competition and false
`
`
`conclude that the district court should apply the factors independent of the presumption in
`order to determine if the presumption can be rebutted.
`
`9 Bayer invokes “two distinct types of tolling: (1) tolling based on Bayer’s filing of
`the petition to cancel Belmora’s FLANAX registration[] and (2) equitable tolling under
`California law.” Bayer Resp. Br. at 11–12. Given the absence of fact-finding below, we
`do not reach the merits of either theory of tolling.
`
`
`
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`designation of origin in violation of § 43(a) of the Lanham Act and common law,
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`(4) importation of unauthorized goods in violation of § 526 of the Tariff Act of 1930,
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`(5) importation of infringing goods in violation of § 42 of the Lanham Act,
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`(6) monopolization in violation of § 2 of the Sherman Act, and (7) tortious interference
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`with contract or prospective economic advantage. The district court concluded that
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`Belmora failed to offer evidence to support each of its counterclaims. We have little
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`difficulty affirming that conclusion.
`
`
`
`
`
`We begin with Belmora’s first five counterclaims, which seek to hold Bayer liable
`
`1.
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`for secondary trademark infringement. Belmora contends that Bayer’s Mexican FLANAX
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`product has unlawfully crossed the border and is available for sale in the so-called “gray
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`market” in the United States. See Belmora Opening Br. at 50–55. Belmora seeks to hold
`
`Bayer liable for allegedly turning a blind eye to the unlawful importation and sale of its
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`product. Each of these five counterclaims rests on a slightly different factual and legal
`
`basis, but Belmora’s theory of liability rises and falls on its ability to prove that Bayer
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`(1) “intentionally induce[d] another to infringe” Belmora’s mark or (2) “continue[d] to
`
`supply its product to one whom it kn[ew] or ha[d] reason to know [was] engaging in
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`trademark infringement.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).
`
`
`
`The district court concluded that Belmora failed to show that Bayer “has induced
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`others to sell [FLANAX] in the U.S., or that it has continued to supply the product to a
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`party with knowledge or reason to know that party was selling it in the U.S.” J.A. 892.
`
`
`
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`The district court further concluded that “Belmora has no evidence linking Bayer to the
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`importation of Mexican FLANAX into the U.S.,” and that Belmora failed to marshal any
`
`evidence showing “when, how, where, or what Bayer allegedly imported, or to whom it
`
`provided assistance.” J.A. 892–93. On appeal, Belmora argues that it introduced sufficient
`
`evidence showing that Bayer was “willfully blind” to the unlawful sale and importation of
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`its Mexican product in the United States. Belmora Opening Br. at 52–55. We disagree.
`
`
`
`Given the widespread availability of Bayer’s FLANAX product in Mexico, it is
`
`small wonder that the product has occasionally made its way across the border. Like the
`
`district court, we conclude that Belmora has offered no evidence to show that Bayer had
`
`anything to do with the importation or sales of its Mexican FLANAX product in the United
`
`States. Nor has Belmora shown that Bayer was willfully blind to the unlawful importation
`
`and sales of FLANAX. In support of its argument, Belmora cites to the deposition
`
`testimony of Bayer’s Rule 30(b)(6) witness denying knowledge of the unlawful
`
`importation and sales of FLANAX or of a policy to combat the problem. But that testimony
`
`does not suffice to create a genuine dispute on the issue of Bayer’s willful blindness. See
`
`Louis Vuitton S.A. v. Lee, 875 F.2d 584, 590 (7th Cir. 1989) (describing willful blindness
`
`as a “fail[ure] to inquire further” for fear “of what the inquiry would yield”); Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 252 (1986) (holding that “[t]he mere existence of a
`
`scintilla of evidence” is insufficient to survive summary judgment). Accordingly, we
`
`affirm the district court’s grant of summary judgment to Bayer on Belmora’s first five
`
`counterclaims.
`
`
`
`
`
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`2.
`
`
`
`In its sixth counterclaim, Belmora alleges that Bayer violated § 2 of the Sherman
`
`Act by allegedly using its monopoly power to exert pressure on Bionpharma Inc.
`
`(Bionpharma)—the sole authorized source of naproxen sodium liquidgels with whom
`
`Bayer has an exclusivity agreement—not to sell naproxen sodium liquidgels to Belmora.
`
`To succeed on its § 2 claim, Belmora must show “(1) that [Bayer] possesses monopoly
`
`power in the relevant market and (2) that [Bayer] willfully acquired or maintained that
`
`power ‘as distinguished from growth or development as a consequence of a superior
`
`product, business acumen, or historic accident.’” Cavalier Tel., LLC v. Verizon Va., Inc.,
`
`330 F.3d 176, 183 (4th Cir. 2003) (quoting Eastman Kodak Co. v. Image Tech. Servs., Inc.,
`
`504 U.S. 451, 481 (1992)). The district court concluded that Belmora failed to offer
`
`sufficient evidence establishing a relevant product market.
`
`
`
`“Proof of a relevant market is a threshold for a Sherman Act § 2 claim.” Consul,
`
`Ltd. v. Transco Energy Co., 805 F.2d 490, 493 (4th Cir. 1986). Belmora “bears the burden
`
`of proof on the issue of the relevant product and geographic markets.” Satellite Television
`
`& Associated Res., Inc. v. Cont’l Cablevision of Va., Inc., 714 F.2d 351, 355 (4th Cir.
`
`1983). Belmora defines the relevant product market as one for “branded naproxen
`
`sodium.” J.A. 292–93. To support its definition of the relevant product market, Belmora
`
`proffered the report and testimony of Gordon Rausser, Ph.D., its expert witness on
`
`economic and antitrust matters.
`
`
`
`We agree with the district