Bug-Spray Maker Repels Suit by Top Competitor

CHICAGO (CN) — The Seventh Circuit squashed a lawsuit from the maker of Off bug spray, which sued a far smaller company that has sold a similarly named product, Bug Off, spray for 36 years — but without trademarking it.

Citing the poem, "The Road Not Taken," Chief U.S. Circuit Judge Diane Wood wrote for the three-judge panel: "This case is the story of two roads, which, unlike those in the Robert Frost poem, converged in a lawsuit."

Almost 35 years ago, Judge Wood wrote, wilderness guide Sandy Maine "came out of the backwoods" with a natural bug spray and repellant wristbands that she sold under the name Bug Off, through a company called Sunfeather. It was a big hit "among the Gorp-and-granola crowd," Wood wrote, and Maine sold it through well-attended trade shows and through a catalog.

But she never registered the mark. That was not a problem until 1998, when Melvin Chervitz registered it, Wood wrote in her Aug. 25 ruling. It became a much bigger problem in 2011 when S.C. Johnson & Son, which had acquired Chervitz's trademark, sued Sunfeather's successor, Nutraceutical.

S.C. Johnson & Son, which makes Off, won a long battle over the trademark with parties not involved in this suit in 2011. S.C. Johnson also owns major household brands Pledge, Ziploc, Raid, Windex, Drano and others.

Johnson & Son began using the Bug Off mark in March 2010, and sued Nutraceutical in September 2011 for trademark infringement, false designation and unfair competition.

Nutraceutical fought back, saying it was the prior and continuous user of Bug Off, and filed several counterclaims.

"From the time the pleadings were filed through the trial, the parties all agreed that the period in dispute was before 1998," Wood wrote. "But the earth underneath Nutraceutical shifted after the district court requested post-trial briefing in lieu of closing argument."

Then, for the first time, Johnson argued that Nutraceutical had failed to prove continuous use after 2012. The Eastern District of Wisconsin accepted the argument and ruled for Johnson, ordering Nutraceutical to stop using the mark and destroy all the infringing products.

Nutraceutical argued on appeal that the district court erred by declining to find Johnson's winning argument estopped or waived. Johnson said its argument was merely an alternate ground for the injunction, and that the trial court erred in finding Nutraceutical established continued used before 2012.

The Seventh Circuit last week found that Nutraceutical did show it had used the mark continuously for decades, even if it had low sales volume.

"The district court relied exclusively on Nutraceutical's lack of sales records proving sales after 2012, but 'evidence of actual sales is not necessary to establish ownership,'" Wood wrote.

While the Bug Off products are no longer in certain catalogs, they can be purchased online and are distributed to retail shops around the country.

"Even if sales were relatively low, 'use' is not limited to sales. Not only did Nutraceutical manufacture and sell Bug Off products, but it did so through a publicly available website," Wood wrote.

And if anyone wanted to find out if the mark were still in use, the answer was "only a Google search away," the judge said.

She concluded: "The district court abused its discretion when it entertained S.C. Johnson's post-trial argument that Nutraceutical failed to prove continuous use of the Bug Off mark after 2012. Because the district court did not clearly err in finding that Nutraceutical maintained continuous use prior to 2012, S.C. Johnson's judgment cannot be saved. We therefore reverse and order that the injunction against Nutraceutical be vacated forthwith."

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