S.C. v. Nutraceutical Corp.

When two parties use a federally registered mark, under common law, ownership of the mark (regardless to whomever registered the mark) will be granted to the first party who actually uses the mark in the market place.

Opinion (Randa): S.C. Johnson & Son, Inc. (“SCJ”), a Wisconsin company, manufactures and markets many products including insect repellants. Nutraceutical manufactures natural consumer products and holds trademarks for a “BUG OFF”, a natural bug repellant formerly manufactured by Sandy Maine of New York. SCJ has three registered trademarks for Bug Off dating back to 1998, and the Nutraceutical used the Bug Off trademark in the late 1980s and early 1990s. Both SCJ and Nutraceutical claim to own similar trademarks which may lead to consumer confusion. The Court cited 15 U.S.C. § 1115(b) when it discussed the continued use of a federally registered trademark by stating “[A] defendant may have rights to use that mark in the areas in which it had trademark rights and in good faith used them continuously prior to the plaintiff's registration application." Nutraceutical claims to be the senior user of the mark and SCJ is the junior user, even though SCJ registered a Bug Off mark in 1988. The Court stated that “registration does not give a registrant the benefit of the date of first use alleged in its application” and “trademark priority is determined by the first use in a market area," not by its registration. Ownership of a mark, under the common law, is “conferred upon the person who employs the first actual use of a mark." Yet, in this case, Nutraceutical has not shown a continued use of the mark which is required under common law and SCJ has valid, federally registered marks for Bug Off as well as continued use of the marks.

Therefore, SCJ prevails and the permanent injunction against Nutraceutical’s use of the marks is GRANTED.