S.C. Johnson & Son, Inc. v. Nutraceutical Corporation ( 2016 )

In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 15-3337
S.C. JOHNSON & SON, INC.,
Plaintiff-Appellee,
v.
NUTRACEUTICAL CORPORATION and
NUTRAMARKS, INC.,
Defendants-Appellants.
____________________
Appeal from the United States District Court for the
Eastern District of Wisconsin.
No. 11-C-861 — Rudolph T. Randa, Judge.
____________________
ARGUED APRIL 12, 2016 — DECIDED AUGUST 25, 2016
____________________
Before WOOD, Chief Judge, and FLAUM and WILLIAMS, Cir-
cuit Judges.
WOOD, Chief Judge. This case is the story of two roads,
which, unlike those in the Robert Frost poem, converged in a
lawsuit. See ROBERT FROST, The Road Not Taken, in MOUNTAIN
INTERVAL 9 (1916). Almost thirty-five years ago, Sandy Maine
came out of the backwoods and entered the business of natu-
2 No. 15-3337
ral insect repellants. She marketed and distributed her prod-
ucts under the mark “BUG OFF” through a company called
Sunfeather. Although her products were commercially suc-
cessful, she never registered the mark. This became a problem
in 1998, when Melvin Chervitz registered it. It became a much
bigger problem in 2011, when S.C. Johnson & Son, Inc., which
had acquired the Chervitz registration, sued Nutraceutical
(Sunfeather’s successor-in-interest) for trademark infringe-
ment.
Nutraceutical defended on the ground of prior and con-
tinuous use. From the time the pleadings were filed through
the trial, the parties all agreed that the period in dispute was
before 1998. But the earth underneath Nutraceutical shifted
after the district court requested post-trial briefing in lieu of
closing argument. For the first time, S.C. Johnson argued that
Nutraceutical had failed to prove continuous use of the mark
after 2012. The district court was persuaded that this was true
and ruled in S.C. Johnson’s favor, granting a permanent in-
junction against Nutraceutical’s use of the mark and ordering
it to destroy all unauthorized products. Nutraceutical ap-
peals, arguing that the district court erred in declining to find
S.C. Johnson’s winning argument estopped or waived. Mean-
while, S.C. Johnson contends that the district court clearly
erred in finding that Nutraceutical established continuity of
use before 2012; the alleged lack of continuity, it says, pro-
vides an alternate ground for the injunction.
I
In 1979, Sandy Maine founded Sunfeather as a sole propri-
etorship in Potsdam, New York. In the early 1980s, while
working as an Adirondack wilderness guide, she developed
and bottled an all-natural bug repellant under the mark “BUG
No. 15-3337 3
OFF.” She did not do any trademark searches before choosing
the mark. In the early 1980s, Maine gave the bug repellant to
some of her wilderness-guide clients for trial on the trail. The
reviews came back from beyond the treeline: she had a hit on
her hands among the GORP-and-granola crowd. She began
selling her BUG OFF through the Potsdam Consumer Co-Op.
In 1992, Maine and Sunfeather began marketing and
selling BUG OFF repellant at twice-yearly craft fairs in
Maryland, West Virginia, and Virginia. The fairs each drew
30,000–60,000 attendees from around the region. Sunfeather
also began selling BUG OFF through its own wholesale
catalog and website around this time. The next year,
Sunfeather marketed BUG OFF at trade shows in New York,
Arkansas, Atlanta, California, Chicago, Denver, Miami, New
York City (including at the New York International Gift Fair,
now called NY NOW, see www.nynow.com), Ohio,
Philadelphia, Seattle, and Tennessee. From 1992 to 1997,
Sunfeather offered BUG OFF at between 24 and 40 trade
shows per year. It also developed a catalog, which it
distributed at trade fairs, and a website. Between 1992 and
1998, Sunfeather printed between 5,000 and 20,000 copies of
its catalog per year. During this period, Sunfeather took
orders for BUG OFF from every state in the union.
In 1994, Sunfeather was pleased when Smith & Hawken, a
national gardening retailer, chose to carry Sunfeather’s BUG
OFF products in its catalog and stores. Although those
products were featured in Smith & Hawken’s brick-and-
mortar stores only through 1996, they stayed in its catalog
until 2004. Smith & Hawkin’s catalog had a circulation of
more than 200,000. To stay in the catalog, BUG OFF had to sell
more than 700 units per season. Sunfeather made it into
4 No. 15-3337
Frontier Natural Products Co-op, another catalog, starting in
1997. Frontier’s catalog was distributed to roughly 15,000
wholesalers, and featured Sunfeather’s BUG OFF products
until 2007. By 1998, Sunfeather had more than $1 million in
sales per year; BUG OFF products represented roughly 15
percent of the total.
The second road entered the picture on June 22, 1998,
when Chervitz filed an application for the BUG OFF
trademark. His application stated that the mark was first used
in commerce on January 26, 1998. Just over two years later, on
July 25, 2000, the U.S. Patent and Trademark Office (PTO)
registered Chervitz’s mark. Six days after Chervitz’s
application, on June 28, 1998, DeJay Corporation submitted
an intent-to-use application to register BUG OFF. Later that
summer, DeJay was acquired by Kaz, Inc. In 1999, Kaz sold
millions of BUG OFF wristbands throughout the United
States.
In 2001, apparently unaware of its competition for the
mark, Sunfeather added several products to its BUG OFF line
of natural insect repellants, including a balm, spritzer, soy
candle, and soap and shampoo bar. Meanwhile, Kaz attacked
Chervitz’s registration: in January 2001, it petitioned to cancel
the Chervitz registration for lack of actual use in commerce.
In December 2002, Sunfeather filed three applications to
register the BUG OFF mark. The PTO refused them based on
the Chervitz and Kaz registrations, and the PTO’s Trademark
Trial and Appeal Board affirmed over Sunfeather’s protest
that its goods were different from those offered by Chervitz
and Kaz. Sunfeather did not at that point assert that it owned
trademark rights predating the Chervitz and Kaz
registrations.
No. 15-3337 5
On January 29, 2003, S.C. Johnson entered the picture,
filing an intent-to-use application for various bug repellant
products using the BUG OFF mark. On June 23, 2003, S.C.
Johnson and Sunfeather’s paths momentarily crossed: S.C.
Johnson received a letter from Sunfeather’s attorney
expressing concern over the application and informing it that
Sunfeather had been using the BUG OFF mark since at least
1992. The letter asked several questions intended to reveal
whether there would be a likelihood of confusion if S.C.
Johnson’s application was granted. In response, S.C. Johnson’s
corporate counsel for pest control called Sunfeather’s attorney
and told her that Sunfeather was infringing on another of S.C.
Johnson’s trademarks: the “OFF!” label. Sunfeather’s attorney
promised to review the company’s rights and respond, but
never followed up. In July 2003, the PTO refused S.C.
Johnson’s application to register “BUG OFF,” based on
likelihood of confusion with the Chervitz registration and
Kaz application. Meanwhile, in April 2004, the Kaz-Chervitz
battle was settled: Chervitz assigned his rights and
registration in BUG OFF to Kaz.
In 2005, S.C. Johnson began a campaign against Kaz’s
registration of the BUG OFF mark. First, on July 22, it filed a
petition against Kaz for cancellation of the Chervitz
registration. Then, on October 25, it opposed Kaz’s application
for its own registration. The Kaz application nevertheless
advanced to registration in 2007. Finally, on January 18, 2007,
S.C. Johnson and Kaz settled. Kaz assigned its rights in the
Chervitz and Kaz registrations to S.C. Johnson for
$1.1 million. S.C. Johnson then licensed the Chervitz
registration back to Kaz royalty-free until December 31, 2009.
In 2008, S.C. Johnson conducted a focus group for an insect
6 No. 15-3337
repellant wristband concept and prototype, but it did not
develop the potential product further.
In March 2010, S.C. Johnson began using the BUG OFF
mark, placing it on nine and 11 oz. cans of “OFF! Deep
Woods” spray. This represented two of S.C. Johnson’s 12 to 15
insect repellant products. The mark appeared—and continues
to appear—on the back of the can, next to the OFF! mark. On
August 4, 2010, an S.C. Johnson in-house paralegal advised
S.C. Johnson that it should “keep using these [wristbands] in
order to keep the registration [for wristbands for repelling
insects] active.”
In February 2011, Sunfeather sold its assets (including the
BUG OFF mark rights) to Nutraceutical for $285,000. While
Sunfeather still manufactures BUG OFF soap, Nutraceutical
makes all other Sunfeather BUG OFF products.
On May 17, 2011, S.C. Johnson’s application for a BUG OFF
trademark for insect repellants finally advanced to
registration. That August, in an internal S.C. Johnson email,
an employee recommended adding the mark to insect
repellant candles, pads, lamps, and candle lanterns to protect
the BUG OFF mark for those products. In the meantime,
Nutraceutical continued to sell and distribute Sunfeather-
branded BUG OFF bug repellant soap, herbal oil, spritzer, and
balm.
In September 2011, S.C. Johnson sued Nutraceutical for
trademark counterfeiting, trademark infringement, false
designation of origin, unfair competition under federal law,
and unfair competition under Wisconsin law. Nutraceutical
denied wrongdoing, alleged that it was the senior user of the
BUG OFF mark, and asserted several counterclaims. In late
No. 15-3337 7
2013, the scope of the case took shape. According to the
pretrial report, Nutraceutical relied on a prior-and-
continuous use defense, while S.C. Johnson maintained that
Nutraceutical could not “establish prior good faith use …
before June 22, 1998.”
At the conclusion of the two-day bench trial, the district
court requested post-trial briefs instead of oral argument. It
was in that brief that S.C. Johnson for the first time asserted
that Nutraceutical had failed to prove continuous use after
2012. The district court accepted that dramatic shift in focus,
finding that while Nutraceutical had proved that “it was the
senior user of the BUG OFF mark and it was using the mark
nationally from … [April 10, 1995] until June 22, 1998,” and
continued sales through 2012, it did “not demonstrate
continued sales after 2012, which constitutes non-use for more
than one year.” Based on this finding, the district court held
that Nutraceutical had failed to prove its prior-and-
continuous use defense and was liable for infringement on
S.C. Johnson’s trademark.
Nutraceutical filed a motion to alter the judgment. The
motion argued, in relevant part, that (1) evidence of sales was
unnecessary to prove continuous use, and Nutraceutical had
provided undisputed evidence of continuous, nationwide use
after 2012; (2) the district court committed legal error by
requiring Nutraceutical to provide sales records to show
continuous use, which Nutraceutical had otherwise proved;
and (3) the district court erred when it did not estop S.C.
Johnson from presenting its argument about post-2012
continuous use. The district court denied the motion, and
Nutraceutical appealed.
8 No. 15-3337
II
It is a “bedrock principle[] of trademark law” that trade-
mark ownership “is not acquired by federal or state registra-
tion,” but rather “from prior appropriation and actual use in
the market.” Allard Enterprises, Inc. v. Advanced Programming
Res., Inc., 146 F.3d 350, 356 (6th Cir. 1998) (quoting Homeowners
Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1105 (6th
Cir. 1991)). To that end, “[r]egistration itself establishes only a
rebuttable presumption of use as of the filing date.” Zazu De-
signs v. L’Oreal, S.A., 979 F.2d 499, 504 (7th Cir. 1992). “[A]
trademark application is always subject to previously estab-
lished common law trademark rights of another party.”
Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d
427, 435 (7th Cir. 1999).
Under 15 U.S.C. § 1115(b)(5), a party rebuts that presump-
tion by proving that the mark “was adopted without
knowledge of the registrant’s prior use and has been continu-
ously used by such party or those in privity with him from a
date prior to … the registration of the mark.” This defense is
limited to “the area in which such continuous prior use is
proved.” Id. To establish appropriation, a party “must show
first, adoption, and second, ‘use in a way sufficiently public
to identify or distinguish the marked goods in an appropriate
segment of the public mind as those of the adopter of the
mark.’” Johnny Blastoff, 188 F.3d at 433–34 (quoting New West
Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir.
1979)). This appeal centers on whether Nutraceutical ade-
quately proved this defense.
In determining whether a party has established rights in a
trademark, we take into account all relevant facts—the total-
No. 15-3337 9
ity of the circumstances, as it is usually put. “Evidence of ac-
tual sales is not necessary to establish ownership.” Id. at 434
(citing New West, 595 F.2d at 1200). A wide variety of sources
may demonstrate “use” sufficient for public identification of
a mark, including “advertising brochures, catalogs, newspa-
per ads, and articles in newspapers and trade publications, as
well as in media outlets such as television and radio.” Id. (ci-
tations omitted). So long as the trademarked goods or services
are actually provided through or in connection with it, “a
website that bears a trademark may constitute a bona fide use
in commerce.” Specht v. Google Inc., 747 F.3d 929, 934–35 (7th
Cir. 2014) (citing N. Am. Med. Corp. v. Axiom Worldwide, Inc.,
522 F.3d 1211 (11th Cir. 2008)).
Ownership and notoriety are two different things. Thus,
to prove ownership, a party need not show that the item in
question has gained wide public recognition. Blue Bell, Inc. v.
Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975). “It is enough
… if the article with the adopted brand upon it is actually a
vendible article in the market, with intent by the proprietor to
continue its production and sale. It is not essential that its use
has been long continued, or that the article should be widely
known, or should have attained great reputation.”
Kathreiner’s Malzkaffee Fabriken Mit Beschraenkter Haftung v.
Pastor Kneipp Med. Co., 82 F. 321, 326 (7th Cir. 1897); see also
Sheila’s Shine Products, Inc. v. Sheila Shine, Inc., 486 F.2d 114, 123
(5th Cir. 1973) (“The mere fact that a business is small and its
trade modest does not necessarily militate against its being an
established business capable of acquiring goodwill and rights
in a trademark.”(citing Kathreiner’s, supra)); Blue Bell, 508 F.2d
at 1265 (noting that a “single use in trade may sustain trade-
mark rights if followed by continuous commercial utiliza-
tion”); Allard Enterprises, 146 F.3d at 358 (same).
10 No. 15-3337
A
We might not be here if the district court had not unex-
pectedly allowed S.C. Johnson to shift its focus at the eleventh
hour to the question whether Nutraceutical proved continu-
ous use of BUG OFF products after 2012. We thus turn imme-
diately to the question whether the court abused its discretion
in doing so. See Grochocinski v. Mayer Brown Rowe & Maw, LLP,
719 F.3d 785, 795 (7th Cir. 2013). We evaluate de novo the re-
lated question whether S.C. Johnson waived this argument.
RK Co. v. See, 622 F.3d 846, 850 (7th Cir. 2010).
Nutraceutical accuses S.C. Johnson of pulling off a bait-
and-switch maneuver, and that is just what it did. First, S.C.
Johnson admitted, in numerous pretrial filings, Nutraceuti-
cal’s continuous use of the BUG OFF mark from at least June
1998 through the present. Then, in its post-trial filing, it ar-
gued for the first time that Nutraceutical had failed to prove
that its use of the BUG OFF mark was continuous from 2012
to the present.
In its complaint, S.C. Johnson alleged that Nutraceutical
owned and operated Sunfeather.com, which “advertises and
offers for sale numerous insect repellant products under the
Infringing BUG OFF mark.” Nutraceutical admitted this alle-
gation. Nutraceutical produced sales records showing contin-
uous nationwide sales through 2012 during fact discovery.
Later, when S.C. Johnson moved for summary judgment, it
stated as an undisputed fact that “Nutraceutical Corporation
has continued selling products produced by SunFeather, in-
cluding Bug Off insect repellants.” (Indeed, Nutraceutical had
said the same in its complaint.) In Nutraceutical’s opposition
to summary judgment, it identified as undisputed the fact
that since February 2011, Nutraceutical “distributes” BUG
No. 15-3337 11
OFF products online and “at retail shops around the country.”
It also stated that “Nutraceutical sales records demonstrate
continued sale of Sunfeather BUG OFF … through [the] pre-
sent.” In its response, S.C. Johnson acknowledged these facts
as undisputed, though “immaterial.”
S.C. Johnson listed the issues for trial in its pretrial report.
They all related to whether Nutraceutical could “establish
prior good faith use … before June 22, 1998.” While S.C. John-
son mentioned continuity of use, it was only with regard to
the period “prior to June of 1998.” Nowhere did it mention
continuous use post-2012. Nor did Nutraceutical’s pretrial re-
port bring up post-2012 continuous use. In its order denying
S.C. Johnson summary judgment, the district court noted as a
fact that “sales records demonstrate continued sale of Sun-
feather BUG OFF, from the time of acquisition to the present.”
Although S.C. Johnson challenged Nutraceutical’s continuity
and amount of sales in general during its opening statement
at trial, at no point did it challenge its use of the mark post-
2012.
Fact 85 of Nutraceutical’s post-trial proposed findings of
fact was practically a copy-paste of the allegations and sum-
mary judgment facts that S.C. Johnson had twice previously
admitted. Nutraceutical must therefore have felt bush-
whacked when it read S.C. Johnson’s response. There, S.C.
Johnson for the first time asserted that “there is no testimonial
evidence supporting continuous use” (a false statement), and
that Nutraceutical “submitted documentary evidence of sales
… only for 2011 and 2012, not for 2013 and 2014.” The district
court accepted these assertions and, relying on them, granted
judgment for S.C. Johnson.
12 No. 15-3337
S.C. Johnson contends that Nutraceutical was on notice
that it would have to prove continuity between 2012 and the
present because S.C. Johnson was challenging its continuity
of use generally, and because it mentioned recent sales in its
opening argument. It also says that a challenge to post-2012
continuity was “subsumed in and implicit in the issues” in its
pretrial report.
This will not do. S.C. Johnson’s issues for trial not only
failed to allude to the post-2012 period, but also expressly
stated that they were limited to the pre-1998 period. If S.C.
Johnson meant to include the post-2012 period, its statements
did not convey that fact—indeed, they were misleading. Be-
cause issues for trial are ordinarily limited to those disputed
at summary judgment, any reasonable litigant would have as-
sumed that it was not required to prove post-2012 continuity
at trial. In its summary judgment response, S.C. Johnson spe-
cifically took the position that Nutraceutical’s post-2012 facts
were immaterial. By that time, it had already twice admitted
the very facts it disputed for the first time post-trial, after the
presentation of evidence had concluded, when Nutraceutical
had no chance to respond.
S.C. Johnson also argues that its own admissions were not
sufficient to establish Nutraceutical’s continuity of use after
2012. Sales sufficient for use, it argues, are not the same as
sales sufficient for infringement. This would be a closer call if
it mattered, but it does not. The evidence at trial, coupled with
the admissions, is sufficient to show use. Moreover, read in
conjunction with S.C. Johnson’s pretrial report, the admis-
sions deceptively described the scope of the issues for trial.
Whether we use the theory of waiver or estoppel, the re-
sult is the same: S.C. Johnson raised its argument about post-
No. 15-3337 13
2012 continuity too late. Nutraceutical was entitled to rely on
S.C. Johnson’s admission of the facts necessary to establish
Nutraceutical’s post-2012 continuous use. S.C. Johnson also
affirmatively misled Nutraceutical about the scope of trial,
and then struck only after Nutraceutical could no longer pre-
sent relevant evidence. We cannot permit it to profit from this
tactic. The district court abused its discretion in allowing S.C.
Johnson to argue that Nutraceutical failed to prove continu-
ous use post-2012.
B
Our holding that S.C. Johnson is estopped from relying on
the argument that prevailed in the district court is sufficient
to sustain our disposition of this case. For the sake of com-
pleteness, however, we add a few words about the merits. In
short, even if we did not think S.C. Johnson’s argument es-
topped, our result would be the same: the district court com-
mitted reversible error in finding that Nutraceutical failed to
prove continuous use after 2012.
The parties dispute the standard of review under which
this conclusion should be evaluated. Nutraceutical argues
that the district court applied the wrong legal standard, and
thus that we must approach the case de novo. Morisch v. United
States, 653 F.3d 522, 528 (7th Cir. 2011). S.C. Johnson counters
that the district court’s conclusion was actually an application
of law to fact, which is reviewed for clear error. Id.We agree with Nutraceutical. The district court relied ex-
clusively on Nutraceutical’s lack of sales records proving sales
after 2012, but “[e]vidence of actual sales is not necessary to
establish ownership.” Johnny Blastoff, 188 F.3d at 434. Even if
we characterized this as a ruling on a mixed question, it was
14 No. 15-3337
clearly erroneous. In focusing exclusively on the Sunfeather
sales records, the district court missed the forest while look-
ing for one specific kind of tree. In fact, the record does contain
evidence of sales after 2012. On cross-examination, Nutraceu-
tical’s Executive Vice President testified that since 2011
Nutraceutical had sold BUG OFF products, and continued to
do so through the commencement of the lawsuit. He also tes-
tified that Maine still “manufactures the soap under the Sun-
Feather line,” and that Nutraceutical subsidiaries “manufac-
ture[] the BUG OFF repellant.” Although BUG OFF products
were no longer listed in Smith & Hawken and Frontier’s cata-
logs, they continued to be available for purchase on the Sun-
feather website. These facts are sufficient in themselves to es-
tablish continuous use after 2012. S.C. Johnson admitted as
much in its summary judgment response, where it said that
Nutraceutical “distributes” BUG OFF products online and “at
retail shops around the country,” and that “Nutraceutical
sales records demonstrate continued sale of Sunfeather BUG
OFF … through [the] present.”
S.C. Johnson protests that even if these facts are sufficient
to establish continuous use, they are insufficient to establish
national use after 2012. It points to Sunfeather’s relatively low
sales numbers through 2012. But Nutraceutical did not have
to show either a high volume of sales or widespread recogni-
tion. See Kathreiner’s, 82 F. at 326. Courts do not examine pub-
lic sales because they want to know if a mark is dominant in
a market, but rather because “[p]ublic sales let others know
that they should not invest resources to develop a mark simi-
lar to one already used in the trade.” Zazu Designs, 979 F.2d at
503. With this concern in mind, the fact that BUG OFF prod-
ucts continued to be featured and sold on the Sunfeather web-
site is particularly instructive: if other producers wanted to
No. 15-3337 15
find out whether the mark was already in use, their answer
was only a Google search away.
S.C. Johnson points to cases noting that sporadic or de min-
imis use generally may not establish trademark rights. See,
e.g., Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188,
1196 (11th Cir. 2001). But these cases are properly understood
as ferreting out situations where the use “may indicate the
mere intent to reserve a mark for later use rather than the pre-
sent commercial utilization of the mark.” Allard Enterprises,
146 F.3d at 359 (discussing La Société Anonyme des Parfums Le
Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974)). Such use
cannot qualify as “the kind of bona fide use intended to afford
a basis for trademark protection.” Id. (quoting Le Galion, 495
F.2d at 1272); see also Planetary Motion, 261 F.3d at 1196 (not-
ing that putative owner did not make the product available
“merely to a discrete or select group”); Blue Bell, 508 F.2d at
1265 (noting that “[s]ecret, undisclosed internal shipments are
generally inadequate to support the denomination ‘use’”).
This does not describe Nutraceutical’s use. 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. See Planetary Mo-
tion, 261 F.3d at 1196 (holding posting of software with mark
on publicly available website sufficiently widespread use to
establish ownership rights in mark).
Though the record contains little evidence of where sales
took place during the post-2012 period, that does not matter.
S.C. Johnson’s admission that Sunfeather BUG OFF products
were sold at “retail shops around the country,” together with
evidence of the website, does the trick. The website, while
16 No. 15-3337
passive, was available nationwide. The district court’s deci-
sion that Nutraceutical failed to prove post-2012 continuous
use was clearly erroneous.
C
While defending the district court’s decision with one
hand, S.C. Johnson attacks it with the other. S.C. Johnson con-
tends that the district court clearly erred in finding that
Nutraceutical demonstrated continuing nationwide use be-
fore 2012. (We understand it to be making this argument as an
alternate ground for supporting the district court’s judgment,
rather than as an effort to obtain additional relief.)
S.C. Johnson does not challenge any of the district court’s
underlying factual findings (and that is just as well, given the
clear error standard of review that applies to them). We re-
view the pertinent findings here. The court found that be-
tween 1995 and 1998, Sunfeather’s BUG OFF products were
advertised, promoted, and sold on Sunfeather’s website. It
also mailed between 7,500 and 13,333 catalogs annually to
customers all across the United States. It marketed and sold
BUG OFF products at trade and craft shows across the coun-
try. From 1994 through 2004, Sunfeather products bearing the
mark were included in Smith & Hawken’s catalog, which had
a circulation of 200,000 during that period. From 1997 through
2007, they were included biannually in Frontier’s catalogs,
which were sent to 15,000 wholesalers across the country. Ac-
cording to Nutraceutical’s sales records, BUG OFF products
were sold in 31 states during 2011 and 2012. From 2008–2012,
Sunfeather BUG OFF products were sold in the following
yearly amounts, and in the following numbers of states:
No. 15-3337 17
Year Total Unit Sales States
2008 3,586 35
2009 2,710 38
2010 2,032 40
2011 944 25
2012 501 28
Although sales certainly declined over this time, Sun-
feather BUG OFF products were still being marketed and sold
to a nationwide audience. The district court’s finding that
Nutraceutical demonstrated nationwide, continuing use
through 2012 was not clearly erroneous.
III
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. Be-
cause 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.