United States District Court, E.D. Wisconsin
S.C. JOHNSON & SON, INC., Plaintiff,
NUTRACEUTICAL CORPORATION, and NUTRAMARKS, INC., Defendants.
ORDER REQUIRING PLAINTIFF TO SUBMIT SUPPLEMENTAL
BRIEFING ON DEFENDANT'S MOTION FOR JUDGMENT CONSISTENT
WITH SEVENTH CIRCUIT'S OPINION (DKT. NO. 119), AND
REQURING BOTH PARTIES TO SUBMIT SUPPLEMENTAL BRIEFING ON THE
DEFENDANT'S MOTION FOR ATTORNEYS' FEES (DKT. NO.
PAMELA PEPPER UNITED STATES DISTRICT JUDGE
motions remain pending in this case: (1) the defendants'
November 28, 2016 motion for judgment consistent with the
Seventh's Circuit opinion, dkt. no. 119; and (2) the
defendants' motion for attorney fees, dkt. no. 130. On
February 21, 2017, the court issued an order addressing many
of the parties' arguments, but reserving ruling on the
amount of disgorgement of profits to award the defendants.
Dkt. No. 127. The court conducted a hearing on these issues
on March 15, 2017, and ordered briefing on whether to award
attorneys' fees to the defendants. Dkt. No. 128. Despite
all of this, the court needs the parties to submit additional
materials on both pending motions.
parties participated in a two-day bench trial in front of the
late Judge Rudolph Randa in February 2014. Dkt. No. 71. After
post-trial briefing, Judge Rudolph Randa decided in favor of
the plaintiff and dismissed the case. Dkt. No. 89. The
defendants appealed, dkt. no. 109, and in October of 2016,
the Seventh Circuit issued a decision remanding the case back
to this court, dkt. no. 117. A month and a half
later-November 28, 2016-the defendants filed a motion asking
this court to enter judgment in accordance with the Seventh
Circuit's opinion. Dkt. No. 119.
February 21, 2017, after a full set of briefing, the court
issued a decision in favor of the defendants. Dkt. No. 127.
After recounting the procedural history of the case and
addressing the parties' arguments, the court:
(1) declared that “the defendants have prior and senior
nationwide common law rights to the mark BUG OFF in the
United States; they own exclusive rights in the BUG OFF mark;
the plaintiff's trademarks in BUG OFF are invalid,
” id. at 3;
(2) ordered that “The United States Patent and
Trademark Office shall cancel all trademark registrations for
insect repellants owned by the plaintiff that use the term
BUG OFF, including but not limited to Registration Nos. 3,
963, 304 for BUG-OFF; 3, 303, 024 for BUGOFF! and design (the
‘Kaz Registration'); 2, 369, 898 for BUG-OFF (the
‘Chervitz Registration')” and that “the
United States Patent and Trademark Office  issue final
rejections and refusals to any pending trademark applications
owned by SCJ that use the term BUG OFF for insect repellants,
including application serial nos. 78/208, 245 for BUG-OFF and
78/981, 457 for BUG-OFF, ” id. at 3-4;
(3) found that “the public would be best served by
granting the defendants' request for permanent injunctive
relief against the plaintiff, ” id. at 6;
(4) found that “[i]n order to deter the plaintiff from
viewing its conduct as a mere cost of doing business . . .
the equities favor an award of profits, ” id.
at 8; and
(5) concluded that “awarding over $5.8 million-the
plaintiff's entire profit on the two products using the
BUG OFF mark on the back of the can-would be a windfall to
the defendants, ” id. at 9.
end of its order, the court set a date for oral argument, at
which the court would take up “the award of profits,
the award of costs and fees, and the question of who is to
draft the proposed judgment.” Id.
court heard argument on March 15, 2017. Dkt. No. 128. The
defendants revised their argument according to the
court's February 21, 2017 order, and asked the court to
award them approximately $4.4 million of the plaintiff's
profits. Id. The plaintiff, on the other hand, did
not revise its argument, continuing to assert that the court
should award the defendants zero dollars of the
plaintiff's profits. Id. As to costs, the
plaintiff stated that it would not contest the
defendants' entitlement to costs, but forecast that it
might contest the amount of those costs when the defendants
filed their bill of costs. Id. As to attorneys'
fees, the court asked the parties to provide briefing on the
subject. Id. The parties conceded their preference
that the court draft the judgment. Id.
weeks later, on April 7, 2017, the defendants filed a motion
for attorney fees. Dkt. No. 130. The plaintiff responded on
April 24, 2017, dkt. no. 132, and the defendants replied on
May 15, 2017, dkt. no. 134.
Motion for Judgment Consistent with the Seventh ...