Trademark Infringement – Continuity of Use

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7^th Circuit Court of Appeals

Case Name: S.C. Johnson & Son, Inc., v. Nutraceutical Corporation, et al.

Case No.: 15-3337

Officials: WOOD, Chief Judge, and FLAUM and WILLIAMS, Circuit Judges

Focus: Trademark Infringement – Continuity of Use

District Court abused discretion by entertaining SC Johnson post-trial argument that respondent did not have continuity of use as to their mark.

“S.C. Johnson points to cases noting that sporadic or de minimis use generally may not establish trademark rights. See, e.g., Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1196 (11th Cir. 2001). But these cases are properly understood as ferreting out situations where the use “may indicate the mere intent to reserve a mark for later use rather than the present commercial utilization of the mark.” Allard Enterprises, 146 F.3d at 359 (discussing La Société Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974)). Such use cannot qualify as “the kind of bona fide use intended to afford a basis for trademark protection.” Id. (quoting Le Galion, 495 F.2d at 1272); see also Planetary Motion, 261 F.3d at 1196 (noting that putative owner did not make the product available “merely to a discrete or select group”); Blue Bell, 508 F.2d at 1265 (noting that “[s]ecret, undisclosed internal shipments are generally inadequate to support the denomination ‘use’”).”

Reversed with instructions to vacate

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Attorney Derek A. Hawkins is the managing partner at Hawkins Law Offices LLC, where he heads up the firm’s startup law practice. He specializes in business formation, corporate governance, intellectual property protection, private equity and venture capital funding and mergers & acquisitions. Check out the website at www.hawkins-lawoffices.com or contact them at 262-737-8825.