Precedential No. 29: Finding Applicant's Period Of Nonuse Excusable, TTAB Dismisses EUCALIN Opposition For Failure To Prove Priority

Published date04 October 2022
Subject MatterIntellectual Property, Trademark
Law FirmWolf, Greenfield & Sacks, P.C.
AuthorMr John L. Welch

Finding Applicant Salud Natural Mexicana's long period of nonuse of its mark EUCALIN for nutritional supplements to be excusable, the Board dismissed this Section 2(d) opposition because Opposer ARSA Distributing was unable to prove priority. Deemed a Specially Designated Narcotics Trafficker (SDNT), applicant was banned from doing business in the United States from 2008 to 2015. Although it did not resume use of the mark for seven years, it commenced TTAB litigation with ARSA in 2016 regarding ownership of the mark. The Board ruled that applicant's nonuse during the ban was excusable and further that applicant maintained an intent to resume use after 2016, negating the presumption of abandonment arising from its nonuse during that period. ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V., 2022 USPQ2d 887 (TTAB 2022) [precedential] (Opinion by Judge Christen M. English).

Opposer ARSA claimed prior common law rights in the mark EUCALIN for dietary and nutritional supplements, but the applicant asserted that ARSA's was its U.S. distributor and therefore the goodwill generated by use of the mark went to the Applicant as the supplier of the product. ARSA argued that there was no distribution agreement, and in any case that applicant had abandoned the mark because it stopped selling product from 2008 to 2015 and failed to produce any evidence of an intent to resume use during that period. Therefore, ARSA claimed, it had priority of use dating back to 2008.

The Board found that, beginning in 1999, applicant began selling its EUCALIN product in the United States. The packaging stated that the product was made by applicant in Mexico and distributed in the United States by ARSA. There was conflicting testimony regarding whether the distribution agreement, and so the Board found that "there was no clear agreement between the parties."

Applicant created the mark and the product, while ARSA was responsible for building up the business in the United States. ARSA solicited customers and fielded customer inquiries. ARSA's website address and telephone number were printed on the packaging.

When applicant was banned as an SDNT in October 2008, ARSA found a new manufacturer for the EUCALIN product, but under a different formulation, since ARSA did not have access to the original formulation. That same month, ARSA filed its application to register the mark EUCALIN, and obtained a registration in 2010, which was subsequently cancelled for failure to file the...

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