Benjamin Appelbaum, Attorney at Law

Higher court rejects "bait and switch" trademark argument

New Jersey companies that need to protect a trademark may be interested in the outcome of one case that dealt with insect repellent products using the name "Bug Off". One was first sold in the early 1990s by a company called SunFeather. However, when SunFeather filed a federal trademark application in 2002, it was rejected on the grounds that two other companies had filed trademark applications for the same name in 1998. A fourth company, S.C. Johnson & Son, Inc., also filed an application in 2003 but was rejected for the same reason.

The two companies that filed in 1998 finally settled in 2004, and a year later, S.C. Johnson acquired those registrations although SunFeather continued to sell products under the name Bug Off. In 2011, SunFeather's assets were acquired by Nutraceutical Corporation, and a few months later, Nutraceutical was sued by S.C. Johnson for unfair competition and trademark infringement.

Nutraceutical argued continued and prior use. S.C. Johnson said that Nutraceutical could not establish this prior to 1998. However, it then shifted after the court asked for a post-trial briefing and said Nutraceutical had to prove it used Bug Off continually after 2012. The court agreed, but on appeal, a higher court said that S.C. Johnson could not shift course in this way. It found that under trademark law, Nutraceutical had common law rights to Bug Off.

As this case demonstrates, registering a trademark can be an important step when setting up a new business or selling a new product, and it should be done early on. While demonstrating longtime use may allow a company to continue using a trademark, avoiding litigation altogether is an even more desirable goal. A company with important trademarks might want to consult an attorney to discuss how to protect these assets.

No Comments

Leave a comment
Comment Information
Benjamin Appelbaum, Attorney at Law - Intellectual Property

27 Bennington Drive
Flanders, NJ 07836

Toll Free: 877-649-6002
Fax: 973-584-2621
Map & Directions