Claims go up in smoke in HERBAQUIT LOZENGES Case

In Natural Answers Inc v SmithKline Beecham Corp (Case 06-15084, June 13 2008), the US Court of Appeals for the Eleventh Circuit has affirmed the district court’s grant of summary judgment in favour of SmithKline Beecham Corp and GlaxoSmithKline Consumer Healthcare (collectively GSK).
Natural Answers Inc tried to enforce its mark HERBAQUIT LOZENGES mark against GSK's COMMIT LOZENGES mark. Natural Answers sold a product named Herbaquit Lozenges, which is designed to help satisfy cravings related to smoking, from 2000 to 2002. The lozenges were sold in drugstores, supermarkets, convenience stores and over the Internet under the mark HERBAQUIT LOZENGES. In 1994 and 1995 Natural Answers filed unsuccessful federal trademark applications for the registration of the mark HERBAQUIT LOZENGES. GSK began developing its Commit Lozenges as a stop-smoking aid in 1998; it began advertising and selling them nationally in 2003 under the federally-registered COMMIT LOZENGES mark.
In 2004, Natural Answers filed suit against GSK in the US District Court for the Southern District of Florida claiming, among other things:
  • federal trademark infringement under the Lanham Act; and
  • unfair competition under federal and common law.
GSK moved for summary judgment and the court granted the motion. Natural Answers appealed.
The Eleventh Circuit held that in order for Natural Answers to bring its trademark claim, as well as its claims for violations of Florida's common law and statutes, it had to own a valid trademark. Under the Lanham Act, a trademark is deemed abandoned (and thus no longer valid) “when its use has been discontinued with intent not to resume such use”. According to the court, Natural Answers had not used its mark in commerce for over three years and GSK was thus entitled to a rebuttable presumption that Natural Answers did not intend to resume its use. The burden of production, although not the ultimate burden of persuasion, shifted to Natural Answers to produce evidence that it used the mark or intended to resume use. Natural Answers’ only response was the “bare assertion” by its chief executive officer that:
  • it intended to resume use provided that it could find ample funding; and
  • one company had requested more information about potential funding. 
The court concluded that “quite simply, that [was] not enough”.  It noted that:
if all a party had to do to avoid a finding of abandonment was to aver that it never intended to abandon the trademark, then no trademark would ever be abandoned.”
The court thus granted summary judgment on the basis of abandonment of the trademark. Consequently, it granted summary judgment on all counts since they depended on the validity of the trademark (including unfair competition under both federal and Florida law).
Companies should be careful not to let otherwise valid marks become abandoned, as they will bear the burden of proving an intent to resume use of the mark if it is not used regularly in commerce.
Jeremy T Elman, McDermott Will & Emery, Miami

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