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No. 15-1335
BELMORA LLC,
Plaintiff-Appellee,
v.
BAYER CONSUMER CARE AG and BAYER HEALTHCARE LLC,
Defendants-Consolidated Plaintiffs-Appellants
v.
BELMORA LLC, et al.
Consolidated Defendants-Appellees, and
MICHELLE K. LEE, Undersecretary Of Commerce For Intellectual Property and
Director Of The United States Patent And Trademark Office,
Intervenor,
Of Counsel:
THOMAS W. KRAUSE
Acting Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
BENJAMIN T. HICKMAN
Associate Solicitors
United States Patent and
Trademark Office
BENJAMIN C. MIZER
Principal Deputy Assistant
Attorney General
DANA J. BOENTE
United States Attorney
MARK R. FREEMAN
LEWIS S. YELIN, (202) 514-3425
Attorneys, Appellate Staff
Civil Division, Room 7233
U.S. Department of Justice
950 Pennsylvania Ave., N.W.
Washington, D.C. 20530
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TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................................................................. iii
INTRODUCTION AND SUMMARY ..................................................................2
ARGUMENT ............................................................................................................8
I.
II.
A.
B.
III.
A.
B.
C.
IV.
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A.
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B.
CONCLUSION ......................................................................................................38
CERTIFICATE OF COMPLIANCE
CERTIFICATE OF SERVICE
- ii -
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TABLE OF AUTHORITIES
Cases
American Steel Foundries v. Robertson,
269 U.S. 372 (1926) .............................................................................................21
Armstrong Paint & Varnish Works v. Nu-Enamel Corp.,
305 U.S. 315 (1938) .............................................................................................22
B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293 (2015) .........................................................................................24
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,
330 F.3d 617 (4th Cir.2003) .................................................................................8
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave.,
284 F.3d 302 (1st Cir. 2002) ...............................................................................18
Cuban Cigar Brands N.V. v. Upmann Intl, Inc.,
457 F. Supp. 1090 (S.D.N.Y. 1978) ...................................................................25
Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23 (2003) .............................................................................. 3, 13, 20, 24
Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha,
754 F.2d 591 (5th Cir. 1985) ................................................................................8
H.H. Scott, Inc. v. Annapolis Electroacustic Corp.,
195 F. Supp. 208 (D. Md. 1961) ........................................................................25
Harrods Ltd. v. Sixty Internet Domain Names,
302 F.3d 214 (4th Cir. 2002) ..............................................................................23
In re GNC Corp.,
789 F.3d 505 (4th Cir. 2015) ..............................................................................16
- iii -
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- iv -
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15 U.S.C. 1119......................................................................................................34
15 U.S.C. 1125(a)(1) & (A) .................................................................................31
15 U.S.C. 1125(a)(1)(B) .......................................................................................11
15 U.S.C. 1127............................................................................................. 3, 9, 32
Administrative Decisions
Global Maschinen Gmbh v. Global Banking Sys., Inc.,
227 U.S.P.Q. 862, 1985 WL 71943 (T.T.A.B. 1985) ................................. 25, 30
Osterreichischer Molkerei-Und Kasereiverband Registriete Genossenschaft Mit
Beschrankter Haftung v. Marks and Spencer, Ltd.,
203 U.S.P.Q. 793, 1979 WL 25355 (T.T.A.B. 1979) .........................................30
Otto Intl, Inc. v. Otto Kern GMBH,
83 U.S.P.Q.2d 1861, 2007 WL 1577524 (T.T.A.B. 2007).......................... 26, 30
Paul Sullivan Tennis Sportswear, Inc. v. Balth. Blickles Wwe,
213 U.S.P.Q. 390, 1982 WL 54199 (T.T.A.B. 1982) .........................................30
The E.E. Dickinson Co. v. The T.N. Dickinson Co.,
221 U.S.P.Q. 713, 1984 WL 63740 (T.T.A.B. 1984) .........................................26
International Material
Joint Recommendation Concerning Provisions on the Protection of WellKnown Marks, WIPO Doc. 833(E), art. 2(3)(a)(i), Sept. 29, 1999 ................37
United States-Singapore Free Trade Agreement, art. 16.1(2)(b)(i), signed
May 6, 2003 .........................................................................................................37
- vi -
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Other Authorities
Brief for the Appellees/Cross-Appellants, Lamparello v. Falwell, 420 F.3d 309
(4th Cir. 2005) (No. 04-2011) ............................................................................29
G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property (1969) .............................................................36
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th
ed. 2014) ..............................................................................................................20
Websters Third New International Dictionary (2002) ..........................................18
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No. 15-1335
BELMORA LLC,
Plaintiff-Appellee,
v.
BAYER CONSUMER CARE AG and BAYER HEALTHCARE LLC,
Defendants-Consolidated Plaintiffs-Appellants
v.
BELMORA LLC, et al.
Consolidated Defendants-Appellees, and
MICHELLE K. LEE, Undersecretary Of Commerce For Intellectual
Property and Director Of The United States Patent And Trademark Office,
Intervenor,
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(2014) (quoting Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,
29 (2003)). The Lanham Act includes not only a cause of action for
common law trademark infringement, but also a broad range of federal
protections against deceptive practices in commerce, including false
advertising, false association, and passing off. Indeed, Belmoras
construction of the Act would leave unactionable the very conduct
Congress enacted the Lanham Act to prevent: the use of a trademark to
deceive U.S. consumers about the source of the goods the mark identifies.
See 15 U.S.C. 1127 (The intent of this chapter is to regulate commerce
within the control of Congress by making actionable the deceptive and
misleading use of marks in such commerce.).
Our opening brief demonstrated that Bayers complaint properly
states claims under Sections 43(a)(1)(A) and (B) and that Bayer properly
obtained cancellation of Belmoras trademark registration under Section
14(3). First, the Supreme Courts and this Courts precedent make clear
that the Lanham Acts false-advertising provision, Section 43(a)(1)(B),
provides a cause of action to any party, such as Bayer, who alleges injury to
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No. 7727, which requires member states to provide protection for wellknown foreign marks when the owner of a domestic mark attempts to pass
off its goods as those of the foreign trademark owner. Br. 56-60.
Belmoras contrary arguments lack merit. Belmora broadly contends
that recognizing Bayers claims in this case under Section 43(a)(1) and
upholding the TTABs cancellation of Belmoras trademark registration
under Section 14(3) would require the Court to create an exception to the
territoriality doctrine that is basic to trademark law. Resp. 25-29. That is
not so. Because Bayer has alleged that its FLANAX mark enjoys a
reputation among Mexican-American consumers of pain relievers in the
United States, recognizing Bayers claims creates no exception to the
territoriality doctrine.
The heart of Belmoras argument is its insistence that a party may not
maintain a cause of action for false association or seek administrative
cancellation of anothers trademark registration unless that party itself
asserts technical trademark rights. Resp. 25-65. But Belmora nowhere
addresses the Supreme Court and court of appeals decisions recognizing a
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common law claim for passing off, regardless of whether either party has
rights in a trademark. That omission is fatal because both the falseassociation and administrative-cancellation provisions codified the
common law claim of passing off, which did not require technical
trademark rights and instead can be based reputational interests.
Belmora also asserts that Bayer may not maintain a false-advertising
claim against it because Bayer Consumer Care AG (the producer of
FLANAX brand analgesic in Mexico) is not its competitor in the United
States and because any business injury suffered by Bayer is speculative.
Resp. 73-79; see POM Wonderful, 134 S. Ct. at 2234 (using the term
competitor . . . to indicate all those within the class of persons
protected by the Lanham Act). As the Supreme Court has made clear,
however, all that Bayer must allege to state a claim under Section
43(a)(1)(B) is that it has suffered a business injury from Belmoras deceptive
conduct. And Belmoras factual objections miss the mark because the
district court dismissed Bayers claims at the pleading stage. Belmora also
contends that Bayer may not maintain a false-advertising claim because
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ARGUMENT
I.
25-29) that any interpretation of the Lanham Act that would provide
remedies to the owners of foreign marks not registered or used in the
United States would violate the territorial nature of trademark rights. That
contention reflects Belmoras basic misconception about the scope of the
Lanham Act.
The concept of territoriality is basic to trademark law; trademark
rights exist in each country solely according to that countrys statutory
scheme. Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d
591, 599 (5th Cir. 1985). For that reason, United States courts do not
entertain actions seeking to enforce trademark rights that exist only under
foreign law. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,
330 F.3d 617, 628 (4th Cir.2003). The Lanham Acts provisions, however,
extend beyond the protection of rights stemming from the registration of
trademarks or their use in the United States. Congress enacted the Lanham
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II.
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refurbish spent cartridges. 134 S. Ct. at 1384. Static control asserted a falseadvertising claim against Lexmark, alleging that Lexmarks advertising
had misrepresented the nature, characteristics, and qualities of both
companies products, directly injuring Static Control by diverting sales to
Lexmark and by harming Static Controls business reputation. Id.; see 15
U.S.C. 1125(a)(1)(B) (creating a cause of action for advertising that
misrepresents the nature, characteristic, [or] qualities . . . of his or her or
another persons goods). In upholding Static Controls claim, the
Supreme Court explained that to come within the zone of interest in a suit
for false advertising under 1125(a), a plaintiff must allege an injury to a
commercial interest in reputation or sales. Lexmark, 134 S. Ct. at 1390.
And in light of the common law background against which Congress
legislates when enacting causes of action, the Court further held that a
plaintiff asserting a false-advertising claim ordinarily must show
economic or reputational injury flowing directly from the deception
wrought by the defendants advertising; and that occurs when deception of
consumers causes them to withhold trade from the plaintiff. Id. at 1391.
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viable false-advertising claim. See Resp. 73-74. To the contrary, the Court
in POM Wonderful stressed that while [t]he Lanham Acts trademark
provisions are the primary means of achieving the enumerated purposes
of the statute, the false-advertising provision is a federal remedy that
goes beyond trademark protection. 134 S. Ct. at 2234 (quoting Dastar, 539
U.S. at 29).
In this case, Bayer alleged that Belmoras deceptive advertising
directly caused lost sales of Bayer Healthcare LLCs ALEVE brand of
naproxen sodium sold in the United States. JA 163 ( 55-57). It alleged
that Belmoras marketing and sales directly harmed Bayer Consumer Care
AGs commercial good will in its Mexican mark FLANAX among
American consumers. JA 165 ( 74). And the complaint may fairly be
read to allege that Belmoras false advertising has caused Bayer Consumer
Care AG to lose sales to United States citizens of its FLANAX products in
Mexico. See JA 156 ( 11-13). Because Bayer alleged an injury to a
commercial interest in reputation or sales directly caused by Belmoras
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misleading marketing, the district court erred in dismissing Bayers falseadvertising claim.
B.
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513 (4th Cir. 2015) (explaining that a district court may not dismiss a
complaint for failure to state a claim if the plaintiff has pleaded factual
content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged). Accordingly, Bayer
Consumer Care AG properly has stated a claim against Belmora for false
advertising.
In contrast to Bayer Consumer Care AG, Belmora acknowledges that
Bayer Healthcare LLC is a competitor of Belmoras in the United States
naproxen sodium market. Resp. 77. But Belmora contends that Bayer
failed adequately to allege that Belmoras misrepresentation caused any
injury to Bayer Healthcare LLCs sales of its ALEVE brand naproxen
sodium. Resp. 78. In fact, Bayers complaint alleged that Belmoras
misleading advertising has actually deceived, have the tendency to
deceive, and/or are likely to deceive consumers about the nature of
Belmoras FLANAX product (JA 163, 55; see id. 54); that Belmoras
advertising is likely to influence the purchasing decisions of naproxen
sodium products (id., 56); and that Belmora publicized its false
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marks omitted). But that is not the only way. Any false suggestion in an
advertisementsuch as a misrepresentation that the product is
manufactured by someone elsecan be material if it is likely to influence
the purchasing decision. PBM Products, 639 F.3d at 120.
For example, the Supreme Court in Lexmark upheld the plaintiffs
false advertising claim based on the allegation that the defendant had
misrepresented the legality of the plaintiffs product. See 134 S. Ct. at 1384,
1393-94. While legality is not an inherent characteristic of a product, it is
one that is likely to influence purchasing decisions. See also, e.g., North Am.
Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1226 (11th Cir. 2008)
(upholding district courts determination that false representations of
affiliation with the National Aeronautics and Space Administration and of
approval of device by the Food and Drug Administration were material for
purposes of false-advertising claim). To prevail on the false-advertising
claim, Bayer will have to establish that Belmoras passing off was
reasonably likely to influence purchasing decisions. But Bayers false-
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20
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III.
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Bayer likewise errs in insisting that Bayer cannot assert a falseassociation claim under Section 43(a)(1)(A) without alleging some form of
infringement of a U.S. trademark. Traditional trademark infringement law
broadly prohibits uses of trademarks, trade names, and trade dress that
are likely to cause confusion about the source of a product or service.
Mosley v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003). But [t]raditional
trademark infringement law is a part of the broader law of unfair
competition. Id. Before Congress enacted the Lanham Act, the common
law of unfair competition recognized a claim of passing off, which
involved a defendants misrepresentation of his own goods or services as
someone elses. See American Steel Foundries v. Robertson, 269 U.S. 372, 380
(1926).
Passing off couldbut often did notinvolve traditional trademark
infringement. A party might engage in passing off by misappropriating
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([The defendant] sought to avail itself of the favorable repute which had
been established for [the plaintiffs] preparation in order to sell its own.).
Section 43(a)(1)(A) of the Lanham Act codified the common law claim
of passing off, among other remedies. Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 778 (1992) (Stevens, J., concurring in the judgment); see also
Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 220 n.2 (4th Cir.
2002). Accordingly, the courts of appeals have consistently recognized that
[t]he existence of a trademark is not a necessary prerequisite to a 43(a)
action. Zyla v. Wadsworth, Div. of Thompson Corp., 360 F.3d 243, 251 (1st
Cir. 2004) (emphasis added); see also, e.g., Schlotzskys Ltd. v. Sterling
Purchasing & Natl Dist. Co., 520 F.3d 393, 398-400 (5th Cir. 2008); Smith v.
Montoro, 648 F.2d 602, 605 (9th Cir. 1981). A plaintiff states a claim of
passing off under Section 43(a)(1)(A) if the plaintiff alleges that its mark
enjoys a reputation in the United States, that the defendant intentionally
adopted its mark to trade off that reputation, and that the plaintiff has
consequently suffered an injury to reputation or sales. It is not necessary
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for the plaintiff to allege that it has used its own mark in commerce in the
United States.
To be sure, the Lanham Acts false-association provision also
encompasses traditional claims of trademark infringement. See B&B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1301 (2015) (discussing
unregistered marks); see also 15 U.S.C. 1114(1)(a) (establishing cause of
action for infringement of registered marks). Any party asserting a claim
of trademark infringement under Section 43(a)(1)(A) must prove that it
possesses a mark. Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005).
But because the false-association provision provides a federal remedy that
goes beyond trademark protection, Dastar, 539 U.S. at 29, the plaintiffs
registration or use of a trademark in the United States is not a requirement
for a claim of passing off.
Bayer therefore states a claim for false association under Section
43(a)(1)(A) by alleging that it has suffered a business injury directly
resulting from Belmoras intentional adoption and use of the same
FLANAX mark as Bayers in a manner designed to trade on the goodwill
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Belmora argues (Resp. 29-54) that a party may not maintain a falseassociation claim under Section 43(a)(1)(A) or seek administrative
cancellation of a trademark registration under Section 14(3) unless the
party itself has rights in a trademark that are infringed by another. But
Belmora again confuses one avenue for seeking Lanham-Act relief for
passing off with the only available mechanism.
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Sullivan Tennis Sportswear, Inc. v. Balth. Blickles Wwe, 213 U.S.P.Q. 390, 1982
WL 54199, *2 (T.T.A.B. 1982)). But in Paul Sullivan, the petitioner alleged
prior use of the mark at issue. See id. Indeed, the petitioner sought
cancellation of the respondents registration because the respondent had
charged petitioner with trademark infringement. Id. The TTAB dismissed
the cancellation petition, in part, because although petitioner had alleged a
right in the mark that the respondent registered, the petitioner had not
alleged any facts that would establish a likelihood of confusion concerning
the parties respective products. Id. at *3. Paul Sullivan, like the cases
Belmora cites in support of its arguments concerning Section 43(a)(1)(A), is
therefore distinguishable and was not controlling on the TTAB. 5
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In fact, as the TTAB itself observed, the TTAB had not considered
before the decision in this case whether a petitioner who has not asserted
use of a mark in United States commerce may seek administrative
cancellation of anothers trademark registration when the mark is used to
pass off its goods as those of the petitioner. See JA 142 (noting that the case
presented a matter of first impression). Belmora has identified no
decision in which a court or the TTAB has rejected a partys passing-off
claim merely because the party bringing the claim did not register a
trademark or use one in commerce in the United States.
Belmora wholly fails to address the common law history of passing
off claims that Congress intended to codify in the Lanham Act. As we have
shown, see supra pp. 21-23; Br. 42-45, at common law, a party could obtain
relief for anothers passing off without alleging trademark infringement.
Belmora acknowledges (Resp. 47) that the text of Section 14(3) does not
expressly require a petitioner seeking administrative cancellation to allege
its own use of a trademark. The same is true of the text of Section
43(a)(1)(A). See 15 U.S.C. 1125(a)(1) & (A) (creating a cause of action
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against any person who . . . uses in commerce any word, term, name,
symbol, or device that is likely . . . to deceive as to . . . the origin . . .
of his or her goods). The text of the statute thus permits an interpretation
that is congruent with the common law claim of passing off, which
Congress codified in Sections 14(3) and 43(a)(1)(A). By contrast, Belmoras
construction would leave unactionable the very conduct Congress enacted
the Lanham Act to prevent: the use of a mark to deceive U.S. consumers
about the source of the goods the mark identifies. See 15 U.S.C. 1127
(The intent of this chapter is to regulate commerce within the control of
Congress by making actionable the deceptive and misleading use of marks
in such commerce.). 6
32
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IV.
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Bayer no longer presses its contention that Article 6bis of the Paris
Convention, as implemented through Subsections 44(b) and (d) of the
Lanham Act, creates an independent ground for the cancellation of a
trademark registration used to misrepresent the source of goods. Thus, it is
unclear whether the Lanham Acts implementation of Article 6bis remains a
live issue in this appeal. Nevertheless, because the district court
erroneously suggested that the United States has failed to implement its
obligations under that treaty provision (JA 503), and because compliance
with its international obligations is a significant concern to the United
States, we briefly recount the Lanham Acts implementation of Article 6bis
and respond to Belmoras contrary arguments.
Article 6bis of the Paris Convention requires member states to cancel
the registration, and to prohibit the use, of a trademark which constitutes a
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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.
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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,
36
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CONCLUSION
For the foregoing reasons, and those stated in our opening brief, the
Court should reverse the judgment of the district court.
Respectfully submitted,
BENJAMIN C. MIZER
Principal Deputy Assistant
Attorney General
Of Counsel:
THOMAS W. KRAUSE
Acting Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
BENJAMIN T. HICKMAN
Associate Solicitors
United States Patent and
Trademark Office
DANA J. BOENTE
United States Attorney
MARK R. FREEMAN
s/ Lewis S. Yelin
LEWIS S. YELIN
(202) 514-3425
Attorneys, Appellate Staff
Civil Division, Room 7233
U.S. Department of Justice
950 Pennsylvania Ave., N.W.
Washington, D.C. 20530
August 7, 2015
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CERTIFICATE OF COMPLIANCE
WITH FEDERAL RULE OF APPELLATE PROCEDURE 32(a)
I hereby certify that this brief complies with the requirements of Fed.
R. App. P. 32(a)(5) and (6) because it has been prepared in 14-point Palatino
Linotype, a proportionally spaced font.
I further certify that this brief complies with the type-volume
limitation of Fed. R. App. P. 32(a)(7)(B) because it contains 6,983 words,
excluding the parts of the brief exempted under Rule 32(a)(7)(B)(iii),
according to the count of Microsoft Word.
s/ Lewis S. Yelin
LEWIS S. YELIN
Counsel for Intervenor
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Pg: 48 of 48
CERTIFICATE OF SERVICE
I hereby certify that on August 7, 2015, I electronically filed the
foregoing brief with the Clerk of the Court for the United States Court of
Appeals for the Fourth Circuit by using the appellate CM/ECF system,
which constitutes service on all parties under the Courts rules.
I further certify that I caused 8 paper copies of this brief to be filed
with the Court by overnight delivery.
s/ Lewis S. Yelin
LEWIS S. YELIN
Counsel for Intervenor