S.C. Johnson & Son, Inc. v. Nutraceutical Corp., Case No. 11-C-861
| Decision Date | 14 January 2014 |
| Docket Number | Case No. 11-C-861 |
| Court | U.S. District Court — Eastern District of Wisconsin |
| Parties | S.C. JOHNSON & SON, INC., Plaintiff, v. NUTRACEUTICAL CORPORATION and NUTRAMARKS, INC., Defendants. |
The expression "bug off" is not novel;1 this trademark infringement action relates to the use of the pithy phrase "BUG OFF" in conjunction with insect repellant products. The Plaintiff, S.C. Johnson & Son, Inc. ("SCJ"), claims that the Defendants, Nutraceutical Corporation ("Nutraceutical") and NutraMarks, Inc. ("NutraMarks") (collectively the "Defendants") have engaged in: trademark counterfeiting in violation of the Lanham Act, 15 U.S.C. § 1114 (count I); trademark infringement in violation of 15 U.S.C. § 1114 (count II); false designation of origin in violation of 15 U.S.C. § 1125 (count III); unfair competition in violation of 15 U.S.C. § 1125 (count IV); and unfair competition under Wisconsin common law (count V). (ECF No. 1.)
Asserting that their ownership of nationwide common law rights to BUG OFF predates SCJ's rights, the Defendants' counterclaim against SCJ for false designation of origin under § 43(a) of the Lanham Act (first counterclaim); declaratory judgment of trademark invalidity pursuant to 15 U.S.C. § 1052(d) and 28 U.S.C. §§ 2201 and 2202 (second counterclaim); and for trademark cancellation pursuant to 15 U.S.C. § 1119 (third counterclaim). (ECF No. 5.)
This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121; 28 U.S.C. § 1331; and 28 U.S.C. § 1338(a), and over the Wisconsin unfair competition cause of action under 28 U.S.C. 1338(b) and 28 U.S.C. § 1367. Venue in this District is proper pursuant to 28 U.S.C. § 1391(b) and (c).
This matter is before the Court on several motions. Before addressing SCJ's motion for summary judgment dismissing the Defendants' counterclaims against it and finding in its favor on all claims, the Court resolves the Defendants' motions to seal and for leave to file a sur-reply.
Pursuant to General L.R. 79(d) (E.D. Wis.), the Defendants seek an order sealing exhibits K, L, M, N, U, Y, BB, CC, EE, FF, GG, JJ, and KK (ECF Nos. 45-39 through 45-52) to the declaration of Timothy P. Getzoff ("Getzoff") in support of their response brief to SCJ's summary judgment motion. (ECF No. 42.) No brief accompanies the motion and the motion does not address the standards for sealing documents that are filed.
The Court's August 20, 2013, Decision and Order (ECF No. 36), stated that a party seeking to seal items has the burden of showing cause and must "analyze in detail, document by document, the propriety of secrecy, providing reasons and legal citations." Baxter Int'l, Inc. v. Abbott Labs., 297 F.3d 544, 548 (7th Cir. 2002). "[N]arrow, specific requests will be granted when based on articulated, reasonable concerns for confidentiality." KM Enter., Inc. v. Global Traffic Techs., Inc., 725 F.3d 718, 734 (7th Cir. 2013) ().
With the sole exception of exhibit U, and despite this well-articulated burden, the Defendants only identify the source of the documents: either a third-party, Frontier National Products Co-op ("Frontier"); SCJ; or the Defendants, and state that the source has designated the document as containing confidential information.
With respect to exhibit U, the Defendants' pricing and sales figures for 2011 and 2013, the information is recent enough to establish good cause for sealing. However, sealing may be just a gesture. The font size of exhibit U is so small that it is impossible to read without magnification or enlarging it 200 times its original size. Consistent with controlling case law, the order will expressly state that any party and any interested member of the public may challenge the sealing of the subject document. See Cnty. Materials Corp. v. Allan Block Corp., 502 F.3d 730, 740 (7th Cir. 2007).
With respect to the dozen other documents for which sealing is sought, theDefendants' have not presented articulated concerns for confidentiality or cited any cases to support the request to seal them; rather they rely on the conclusory statement that the documents are confidential. The Defendants have not established that those 12 exhibits should be sealed.
Except for exhibit U, the Defendants' motion falls far short of fulfilling their burden of establishing good cause. These deficiencies are perplexing given the explanation provided in the Court's earlier decision in this case addressing a similar issue. The Defendants' motion to seal (ECF No. 42) is granted with respect to exhibit U (ECF No. 45-44) and denied with respect to the other 12 exhibits (ECF Nos. 45-39 through 45-43 & 45-45 through 45-52).
The Defendants' request leave to file a sur-reply brief. (ECF No. 54.) SCJ opposes the request. The Defendants' sur-reply addresses new arguments and evidence presented by SCJ's reply brief. Therefore, in an exercise of the Court's discretion, the motion is granted. The next motion for resolution is SCJ's motion for summary judgment. Initially, the Court sets forth the summary judgment standard.
Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322(1986). Summary judgment should be granted when a party that has had ample time for discovery fails to "make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. If the moving party establishes the absence of a genuine issue of material fact, the non-moving party must demonstrate that there is a genuine dispute over the material facts of the case. Id. at 323-24. "In determining whether a genuine issue of material fact exists, all facts are construed in favor of the nonmoving party." Springer v. Durflinger, 518 F.3d 479, 483-84 (7th Cir. 2008).
SCJ is a corporation organized under Wisconsin law with its principal place of business located in Racine, Wisconsin. SCJ makes, distributes, and sells dozens of insect repellant products, including various formulations of aerosol sprays and spritzers (such as Off!, Naturals, Deep Woods Off, and Deep Woods Dry), as well as candles, clip-ons, and other products all of which fall under the "primary" Off! brand. Several of these products are also sold under the "sub-brand" name "Deep Woods." Promoting the Off! brand is "priority number one," followed by promotion of the Deep Woods sub-brand. (ECF No. 45-28.)
Nutraceutical and NutraMarks are Delaware corporations with their principal place of business in Park City, Utah. Nutraceutical manufactures and markets a variety of products that are primarily geared to consumers with an interest in natural and organic products. NutraMarks holds the rights to the intellectual property of Nutraceutical.
SCJ owned a federal registration for the BUG OFF mark in connection with insect repellent, U.S. Registration No. 1,506,763 (the "'763 registration"). The '763 registration was issued on October 4, 1988, based on use in commerce dating back to October 10, 1985, and was in effect until April 10, 1995, when the United States Patent and Trademark Office ("PTO") cancelled the mark for failure to file an acceptable declaration of use under Section 8 of the Lanham Act, 15 U.S.C. § 1058.
On June 22, 1998, Melvin Chervitz ("Chervitz") filed an application for U.S. Registration No. 2,369,898 () for the mark BUG OFF used with "wristbands for repelling insects," providing January 26, 1998, as the date of first use in commerce and a priority date of June 22, 1998, based on the PTO filing date. The '898 registration issued on July 25, 2000.
To support the claim that BUG OFF was used in commerce as of June 22, 1998, Chervitz relied on a price list from Seven C's International Liquid Crystal Products, which included a listing for a "BUG OFF ™ Bracelet." The price list does not include information indicating any actual sales; the purchasers or the locationswhere sales took place. To support his use-based trademark registration for BUG OFF, Chervitz also submitted a supplemental declaration dated February 5, 2003, with exhibits that provide additional information regarding his sales activity.3
On June 23, 1998, DeJay Corporation ("DeJay") filed an intent-to-use application to register the mark BUG OFF and an accompanying design. In August 1998, DeJay was acquired by Kaz, Inc. ("Kaz"). The PTO examiner cited the Chervitz registration as a basis to refuse to register the Kaz application. In January 2001, Kaz responded with a petition to cancel the Chervitz registration.
As a part of the Trademark Trial and Appeal Board ("TTAB") cancellation proceeding, Chervitz was deposed. He testified that he had sold approximately one gross of product to a "variety store" in St. Louis in 1998. However, he had "no documentation that reflect[ed] that sale;" the variety store did not appear on Chervitz's customer list for 1998; and he could not recall the unit price. (Getzoff Decl., Ex. X (Chervitz testimony) SCJ006964-65.) (ECF No. 45-22.) The only sales records Chervitz has for 2007 and 2008 are summaries; they do not show that the product was branded as BUG OFF, or provide the location or the identity of the purchasers.
The TTAB did not rule on the merits of Kaz's petition to cancel. Instead the parties settled, and Chervitz assigned his rights and registration in the BUG OFF trademark to Kaz in April 2004. After that, the PTO office advanced the Kazapplication to registration in 2007 as U.S. Registration No. 3,303,024 ...
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