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S.C. Johnson & Son, Inc. v. Nutraceutical Corp.

United States District Court, E.D. Wisconsin

July 17, 2018

S.C. JOHNSON & SON, INC., Plaintiff,
v.
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. 130)

          HON. PAMELA PEPPER UNITED STATES DISTRICT JUDGE

         Two 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.

         I. Background

         The 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.

         On 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.

         At the 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.

         The 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.

         Three 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.

         II. Motion for Judgment Consistent with the Seventh ...


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