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A review on “prior continuous use”

SC Johnson & Son, Inc., v. Nutraceutical Corporation

Bug Off was created in 1979, but the trademark was never registered, instead in 1998 Melvin Chervitz registered it, and finally in 2011 SC Johnson & Son, Inc. acquired Chervitz’s registration and sued Nutraceutical who acquired Bug Off. The issue that came to light towards the end was the concern of continuous use and whether or not Nutraceutical took enough steps to maintain their mark through a continuous use claim. “It is a ‘bedrock principle of trademark law’ that trademark ownership is not acquired by federal or state registration but rather from prior appropriation, but rather from prior appropriation and actual use in the market.”

Appropriation requires: 1) a showing of adoption; and 2) public use and recognition of the adopted mark. The court pointed out that evidence of sales is not determinative of ownership. High sales volumes, nor widespread recognition are not essential to proving that there was continuous use. The court even alluded to taking a simple step like Googling in order to determine whether a mark is in use. Thus, implying that a search result can be enough of a public presence. Effectively, “use is not limited to sales.”

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.