Monday, June 16, 2008

Eleventh Circuit Decision Highlights Importance of Expeditious Prosecution of Trademark Applications

Rebecca Tushnet’s 43(B)log has a good summary (link here) of the Eleventh Circuit Court of Appeals decision in Natural Answers, Inc. v. SmithKline Beecham Corp., Case No. 06-15084 (11th Cir. June 13, 2008) affirming a lower court’s decision granting summary judgment in favor of SmithKline Beecham, the maker of a stop-smoking lozenge named Commit Lozenges, and rejecting trademark infringement and false advertising claims brought by Natural Answers, which at one time sold a stop-smoking lozenge under the name HERBAQUIT.

The case demonstrates once again the importance of obtaining federal registration for trademarks and service marks early and expeditiously. Here, Natural Answers’ case was hurt in part because it had not followed through with its two trademark applications for the marks HERBAQUIT and HERBAQUIT LOZENGES (both for dietary supplements). The court’s opinion notes that neither of these federal trademark applications were approved, which left Natural Answers with the uphill task of having to prove common law trademark rights

What is strange is that if you look more closely at the actual prosecution history of the applications, both of the applications did receive notices of allowances from the PTO. However, because both were filed as Section 1(b) intent-to-use applications, the marks could not be registered until Natural Answers submitted specimens of use.

The HERBAQUIT mark was allowed February 29, 2000. Natural Answers filed a statement of use on August 29, 2000 (the last day without requesting an extension of time). Unfortunately, the statement of use was defective and the case went abandoned because Natural Answers did not file an extension of time to file a statement of use, which it could have done even though a statement of use was filed (lesson to be learned -- better safe than sorry).

According to the court’s decision, HerbaQuit Lozenges entered the market in January 2000 and were sold by Natural Answers in drugstores, supermarkets, convenience stores, and over the Internet. If this indeed was the case, one wonders how come Natural Answers was unable to provide a specimen of use in March 2000 promptly after the notice of allowance was issued.

A similar question is raised for the HERBAQUIT LOZENGES mark, which was allowed September 5, 2000. The application was abandoned about a year later when no statement of use was ever filed. However, according to the court’s decision, Natural Answers did not discontinue selling its HerbaQuit Lozenges until March 2002. Again, one wonders why Natural Answers was unable to provide a specimen of use in September 2000 promptly after the notice of allowance was issued.

Would having registrations had made a difference in the outcome of the case? Probably not given the evidence of abandonment, which would have been just as relevant had Natural Answers actually obtained registrations for its marks. Nonetheless, the court does suggest in dicta that actual registrations might have been an additional factor which would have favored Natural Answers (“On this record, it is undisputed that the HERBAQUIT LOZENGES mark (which has never been registered) has not been used in commerce since, at the latest, March 2002.”). Instead, the fact that Natural Answers allowed both applications to go abandoned only reinforced the notion that Natural Answers intended to abandon use of the marks.

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