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

In the

United States Court of Appeals

For the Seventh Circuit

____________________

No. 15-3337

S.C. JOHNSON & SON, INC.,

Plaintiff-Appellee,

v.

NUTRACEUTICAL CORPORATION and

NUTRAMARKS, INC.,

Defendants-Appellants.

____________________

Appeal from the United States District Court for the

Eastern District of Wisconsin.

No. 11-C-861 — Rudolph T. Randa, Judge.

____________________

ARGUED APRIL 12, 2016 — DECIDED AUGUST 25, 2016

____________________

Before WOOD, Chief Judge, and FLAUM and WILLIAMS, Cir-

cuit Judges.

WOOD, Chief Judge. This case is the story of two roads,

which, unlike those in the Robert Frost poem, converged in a

lawsuit. See ROBERT FROST, The Road Not Taken, in MOUNTAIN

INTERVAL 9 (1916). Almost thirty-five years ago, Sandy Maine

came out of the backwoods and entered the business of natu-

2 No. 15-3337

ral insect repellants. She marketed and distributed her prod-

ucts under the mark “BUG OFF” through a company called

Sunfeather. Although her products were commercially suc-

cessful, she never registered the mark. This became a problem

in 1998, when Melvin Chervitz registered it. It became a much

bigger problem in 2011, when S.C. Johnson & Son, Inc., which

had acquired the Chervitz registration, sued Nutraceutical

(Sunfeather’s successor-in-interest) for trademark infringe-

ment.

Nutraceutical defended on the ground of prior and con-

tinuous use. From the time the pleadings were filed through

the trial, the parties all agreed that the period in dispute was

before 1998. But the earth underneath Nutraceutical shifted

after the district court requested post-trial briefing in lieu of

closing argument. For the first time, S.C. Johnson argued that

Nutraceutical had failed to prove continuous use of the mark

after 2012. The district court was persuaded that this was true

and ruled in S.C. Johnson’s favor, granting a permanent in-

junction against Nutraceutical’s use of the mark and ordering

it to destroy all unauthorized products. Nutraceutical ap-

peals, arguing that the district court erred in declining to find

S.C. Johnson’s winning argument estopped or waived. Mean-

while, S.C. Johnson contends that the district court clearly

erred in finding that Nutraceutical established continuity of

use before 2012; the alleged lack of continuity, it says, pro-

vides an alternate ground for the injunction.

I

In 1979, Sandy Maine founded Sunfeather as a sole propri-

etorship in Potsdam, New York. In the early 1980s, while

working as an Adirondack wilderness guide, she developed

and bottled an all-natural bug repellant under the mark “BUG

No. 15-3337 3

OFF.” She did not do any trademark searches before choosing

the mark. In the early 1980s, Maine gave the bug repellant to

some of her wilderness-guide clients for trial on the trail. The

reviews came back from beyond the treeline: she had a hit on

her hands among the GORP-and-granola crowd. She began

selling her BUG OFF through the Potsdam Consumer Co-Op.

In 1992, Maine and Sunfeather began marketing and

selling BUG OFF repellant at twice-yearly craft fairs in

Maryland, West Virginia, and Virginia. The fairs each drew

30,000–60,000 attendees from around the region. Sunfeather

also began selling BUG OFF through its own wholesale

catalog and website around this time. The next year,

Sunfeather marketed BUG OFF at trade shows in New York,

Arkansas, Atlanta, California, Chicago, Denver, Miami, New

York City (including at the New York International Gift Fair,

now called NY NOW, see www.nynow.com), Ohio,

Philadelphia, Seattle, and Tennessee. From 1992 to 1997,

Sunfeather offered BUG OFF at between 24 and 40 trade

shows per year. It also developed a catalog, which it

distributed at trade fairs, and a website. Between 1992 and

1998, Sunfeather printed between 5,000 and 20,000 copies of

its catalog per year. During this period, Sunfeather took

orders for BUG OFF from every state in the union.

In 1994, Sunfeather was pleased when Smith & Hawken, a

national gardening retailer, chose to carry Sunfeather’s BUG

OFF products in its catalog and stores. Although those

products were featured in Smith & Hawken’s brick-and-

mortar stores only through 1996, they stayed in its catalog

until 2004. Smith & Hawkin’s catalog had a circulation of

more than 200,000. To stay in the catalog, BUG OFF had to sell

more than 700 units per season. Sunfeather made it into

4 No. 15-3337

Frontier Natural Products Co-op, another catalog, starting in

1997. Frontier’s catalog was distributed to roughly 15,000

wholesalers, and featured Sunfeather’s BUG OFF products

until 2007. By 1998, Sunfeather had more than $1 million in

sales per year; BUG OFF products represented roughly 15

percent of the total.

The second road entered the picture on June 22, 1998,

when Chervitz filed an application for the BUG OFF

trademark. His application stated that the mark was first used

in commerce on January 26, 1998. Just over two years later, on

July 25, 2000, the U.S. Patent and Trademark Office (PTO)

registered Chervitz’s mark. Six days after Chervitz’s

application, on June 28, 1998, DeJay Corporation submitted

an intent-to-use application to register BUG OFF. Later that

summer, DeJay was acquired by Kaz, Inc. In 1999, Kaz sold

millions of BUG OFF wristbands throughout the United

States.

In 2001, apparently unaware of its competition for the

mark, Sunfeather added several products to its BUG OFF line

of natural insect repellants, including a balm, spritzer, soy

candle, and soap and shampoo bar. Meanwhile, Kaz attacked

Chervitz’s registration: in January 2001, it petitioned to cancel

the Chervitz registration for lack of actual use in commerce.

In December 2002, Sunfeather filed three applications to

register the BUG OFF mark. The PTO refused them based on

the Chervitz and Kaz registrations, and the PTO’s Trademark

Trial and Appeal Board affirmed over Sunfeather’s protest

that its goods were different from those offered by Chervitz

and Kaz. Sunfeather did not at that point assert that it owned

trademark rights predating the Chervitz and Kaz

registrations.

No. 15-3337 5

On January 29, 2003, S.C. Johnson entered the picture,

filing an intent-to-use application for various bug repellant

products using the BUG OFF mark. On June 23, 2003, S.C.

Johnson and Sunfeather’s paths momentarily crossed: S.C.

Johnson received a letter from Sunfeather’s attorney

expressing concern over the application and informing it that

Sunfeather had been using the BUG OFF mark since at least

1992. The letter asked several questions intended to reveal

whether there would be a likelihood of confusion if S.C.

Johnson’s application was granted. In response, S.C. Johnson’s

corporate counsel for pest control called Sunfeather’s attorney

and told her that Sunfeather was infringing on another of S.C.

Johnson’s trademarks: the “OFF!” label. Sunfeather’s attorney

promised to review the company’s rights and respond, but

never followed up. In July 2003, the PTO refused S.C.

Johnson’s application to register “BUG OFF,” based on

likelihood of confusion with the Chervitz registration and

Kaz application. Meanwhile, in April 2004, the Kaz-Chervitz

battle was settled: Chervitz assigned his rights and

registration in BUG OFF to Kaz.

In 2005, S.C. Johnson began a campaign against Kaz’s

registration of the BUG OFF mark. First, on July 22, it filed a

petition against Kaz for cancellation of the Chervitz

registration. Then, on October 25, it opposed Kaz’s application

for its own registration. The Kaz application nevertheless

advanced to registration in 2007. Finally, on January 18, 2007,

S.C. Johnson and Kaz settled. Kaz assigned its rights in the

Chervitz and Kaz registrations to S.C. Johnson for

$1.1 million. S.C. Johnson then licensed the Chervitz

registration back to Kaz royalty-free until December 31, 2009.

In 2008, S.C. Johnson conducted a focus group for an insect

6 No. 15-3337

repellant wristband concept and prototype, but it did not

develop the potential product further.

In March 2010, S.C. Johnson began using the BUG OFF

mark, placing it on nine and 11 oz. cans of “OFF! Deep

Woods” spray. This represented two of S.C. Johnson’s 12 to 15

insect repellant products. The mark appeared—and continues

to appear—on the back of the can, next to the OFF! mark. On

August 4, 2010, an S.C. Johnson in-house paralegal advised

S.C. Johnson that it should “keep using these [wristbands] in

order to keep the registration [for wristbands for repelling

insects] active.”

In February 2011, Sunfeather sold its assets (including the

BUG OFF mark rights) to Nutraceutical for $285,000. While

Sunfeather still manufactures BUG OFF soap, Nutraceutical

makes all other Sunfeather BUG OFF products.

On May 17, 2011, S.C. Johnson’s application for a BUG OFF

trademark for insect repellants finally advanced to

registration. That August, in an internal S.C. Johnson email,

an employee recommended adding the mark to insect

repellant candles, pads, lamps, and candle lanterns to protect

the BUG OFF mark for those products. In the meantime,

Nutraceutical continued to sell and distribute Sunfeather-

branded BUG OFF bug repellant soap, herbal oil, spritzer, and

balm.

In September 2011, S.C. Johnson sued Nutraceutical for

trademark counterfeiting, trademark infringement, false

designation of origin, unfair competition under federal law,

and unfair competition under Wisconsin law. Nutraceutical

denied wrongdoing, alleged that it was the senior user of the

BUG OFF mark, and asserted several counterclaims. In late

No. 15-3337 7

2013, the scope of the case took shape. According to the

pretrial report, Nutraceutical relied on a prior-and-

continuous use defense, while S.C. Johnson maintained that

Nutraceutical could not “establish prior good faith use …

before June 22, 1998.”

At the conclusion of the two-day bench trial, the district

court requested post-trial briefs instead of oral argument. It

was in that brief that S.C. Johnson for the first time asserted

that Nutraceutical had failed to prove continuous use after

2012. The district court accepted that dramatic shift in focus,

finding that while Nutraceutical had proved that “it was the

senior user of the BUG OFF mark and it was using the mark

nationally from … [April 10, 1995] until June 22, 1998,” and

continued sales through 2012, it did “not demonstrate

continued sales after 2012, which constitutes non-use for more

than one year.” Based on this finding, the district court held

that Nutraceutical had failed to prove its prior-and-

continuous use defense and was liable for infringement on

S.C. Johnson’s trademark.

Nutraceutical filed a motion to alter the judgment. The

motion argued, in relevant part, that (1) evidence of sales was

unnecessary to prove continuous use, and Nutraceutical had

provided undisputed evidence of continuous, nationwide use

after 2012; (2) the district court committed legal error by

requiring Nutraceutical to provide sales records to show

continuous use, which Nutraceutical had otherwise proved;

and (3) the district court erred when it did not estop S.C.

Johnson from presenting its argument about post-2012

continuous use. The district court denied the motion, and

Nutraceutical appealed.

8 No. 15-3337

II

It is a “bedrock principle[] of trademark law” that trade-

mark ownership “is not acquired by federal or state registra-

tion,” but rather “from prior appropriation and actual use in

the market.” Allard Enterprises, Inc. v. Advanced Programming

Res., Inc., 146 F.3d 350, 356 (6th Cir. 1998) (quoting Homeowners

Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1105 (6th

Cir. 1991)). To that end, “[r]egistration itself establishes only a

rebuttable presumption of use as of the filing date.” Zazu De-

signs v. L’Oreal, S.A., 979 F.2d 499, 504 (7th Cir. 1992). “[A]

trademark application is always subject to previously estab-

lished common law trademark rights of another party.”

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d

427, 435 (7th Cir. 1999).

Under 15 U.S.C. § 1115(b)(5), a party rebuts that presump-

tion by proving that the mark “was adopted without

knowledge of the registrant’s prior use and has been continu-

ously used by such party or those in privity with him from a

date prior to … the registration of the mark.” This defense is

limited to “the area in which such continuous prior use is

proved.” Id. To establish appropriation, a party “must show

first, adoption, and second, ‘use in a way sufficiently public

to identify or distinguish the marked goods in an appropriate

segment of the public mind as those of the adopter of the

mark.’” Johnny Blastoff, 188 F.3d at 433–34 (quoting New West

Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir.

1979)). This appeal centers on whether Nutraceutical ade-

quately proved this defense.

In determining whether a party has established rights in a

trademark, we take into account all relevant facts—the total-

No. 15-3337 9

ity of the circumstances, as it is usually put. “Evidence of ac-

tual sales is not necessary to establish ownership.” Id. at 434

(citing New West, 595 F.2d at 1200). A wide variety of sources

may demonstrate “use” sufficient for public identification of

a mark, including “advertising brochures, catalogs, newspa-

per ads, and articles in newspapers and trade publications, as

well as in media outlets such as television and radio.” Id. (ci-

tations omitted). So long as the trademarked goods or services

are actually provided through or in connection with it, “a

website that bears a trademark may constitute a bona fide use

in commerce.” Specht v. Google Inc., 747 F.3d 929, 934–35 (7th

Cir. 2014) (citing N. Am. Med. Corp. v. Axiom Worldwide, Inc.,

522 F.3d 1211 (11th Cir. 2008)).

Ownership and notoriety are two different things. Thus,

to prove ownership, a party need not show that the item in

question has gained wide public recognition. Blue Bell, Inc. v.

Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975). “It is enough

… if the article with the adopted brand upon it is actually a

vendible article in the market, with intent by the proprietor to

continue its production and sale. It is not essential that its use

has been long continued, or that the article should be widely

known, or should have attained great reputation.”

Kathreiner’s Malzkaffee Fabriken Mit Beschraenkter Haftung v.

Pastor Kneipp Med. Co., 82 F. 321, 326 (7th Cir. 1897); see also

Sheila’s Shine Products, Inc. v. Sheila Shine, Inc., 486 F.2d 114, 123

(5th Cir. 1973) (“The mere fact that a business is small and its

trade modest does not necessarily militate against its being an

established business capable of acquiring goodwill and rights

in a trademark.”(citing Kathreiner’s, supra)); Blue Bell, 508 F.2d

at 1265 (noting that a “single use in trade may sustain trade-

mark rights if followed by continuous commercial utiliza-

tion”); Allard Enterprises, 146 F.3d at 358 (same).

10 No. 15-3337

A

We might not be here if the district court had not unex-

pectedly allowed S.C. Johnson to shift its focus at the eleventh

hour to the question whether Nutraceutical proved continu-

ous use of BUG OFF products after 2012. We thus turn imme-

diately to the question whether the court abused its discretion

in doing so. See Grochocinski v. Mayer Brown Rowe & Maw, LLP,

719 F.3d 785, 795 (7th Cir. 2013). We evaluate de novo the re-

lated question whether S.C. Johnson waived this argument.

RK Co. v. See, 622 F.3d 846, 850 (7th Cir. 2010).

Nutraceutical accuses S.C. Johnson of pulling off a bait-

and-switch maneuver, and that is just what it did. First, S.C.

Johnson admitted, in numerous pretrial filings, Nutraceuti-

cal’s continuous use of the BUG OFF mark from at least June

1998 through the present. Then, in its post-trial filing, it ar-

gued for the first time that Nutraceutical had failed to prove

that its use of the BUG OFF mark was continuous from 2012

to the present.

In its complaint, S.C. Johnson alleged that Nutraceutical

owned and operated Sunfeather.com, which “advertises and

offers for sale numerous insect repellant products under the

Infringing BUG OFF mark.” Nutraceutical admitted this alle-

gation. Nutraceutical produced sales records showing contin-

uous nationwide sales through 2012 during fact discovery.

Later, when S.C. Johnson moved for summary judgment, it

stated as an undisputed fact that “Nutraceutical Corporation

has continued selling products produced by SunFeather, in-

cluding Bug Off insect repellants.” (Indeed, Nutraceutical had

said the same in its complaint.) In Nutraceutical’s opposition

to summary judgment, it identified as undisputed the fact

that since February 2011, Nutraceutical “distributes” BUG

No. 15-3337 11

OFF products online and “at retail shops around the country.”

It also stated that “Nutraceutical sales records demonstrate

continued sale of Sunfeather BUG OFF … through [the] pre-

sent.” In its response, S.C. Johnson acknowledged these facts

as undisputed, though “immaterial.”

S.C. Johnson listed the issues for trial in its pretrial report.

They all related to whether Nutraceutical could “establish

prior good faith use … before June 22, 1998.” While S.C. John-

son mentioned continuity of use, it was only with regard to

the period “prior to June of 1998.” Nowhere did it mention

continuous use post-2012. Nor did Nutraceutical’s pretrial re-

port bring up post-2012 continuous use. In its order denying

S.C. Johnson summary judgment, the district court noted as a

fact that “sales records demonstrate continued sale of Sun-

feather BUG OFF, from the time of acquisition to the present.”

Although S.C. Johnson challenged Nutraceutical’s continuity

and amount of sales in general during its opening statement

at trial, at no point did it challenge its use of the mark post-

2012.

Fact 85 of Nutraceutical’s post-trial proposed findings of

fact was practically a copy-paste of the allegations and sum-

mary judgment facts that S.C. Johnson had twice previously

admitted. Nutraceutical must therefore have felt bush-

whacked when it read S.C. Johnson’s response. There, S.C.

Johnson for the first time asserted that “there is no testimonial

evidence supporting continuous use” (a false statement), and

that Nutraceutical “submitted documentary evidence of sales

… only for 2011 and 2012, not for 2013 and 2014.” The district

court accepted these assertions and, relying on them, granted

judgment for S.C. Johnson.

12 No. 15-3337

S.C. Johnson contends that Nutraceutical was on notice

that it would have to prove continuity between 2012 and the

present because S.C. Johnson was challenging its continuity

of use generally, and because it mentioned recent sales in its

opening argument. It also says that a challenge to post-2012

continuity was “subsumed in and implicit in the issues” in its

pretrial report.

This will not do. S.C. Johnson’s issues for trial not only

failed to allude to the post-2012 period, but also expressly

stated that they were limited to the pre-1998 period. If S.C.

Johnson meant to include the post-2012 period, its statements

did not convey that fact—indeed, they were misleading. Be-

cause issues for trial are ordinarily limited to those disputed

at summary judgment, any reasonable litigant would have as-

sumed that it was not required to prove post-2012 continuity

at trial. In its summary judgment response, S.C. Johnson spe-

cifically took the position that Nutraceutical’s post-2012 facts

were immaterial. By that time, it had already twice admitted

the very facts it disputed for the first time post-trial, after the

presentation of evidence had concluded, when Nutraceutical

had no chance to respond.

S.C. Johnson also argues that its own admissions were not

sufficient to establish Nutraceutical’s continuity of use after

2012. Sales sufficient for use, it argues, are not the same as

sales sufficient for infringement. This would be a closer call if

it mattered, but it does not. The evidence at trial, coupled with

the admissions, is sufficient to show use. Moreover, read in

conjunction with S.C. Johnson’s pretrial report, the admis-

sions deceptively described the scope of the issues for trial.

Whether we use the theory of waiver or estoppel, the re-

sult is the same: S.C. Johnson raised its argument about post-

No. 15-3337 13

2012 continuity too late. Nutraceutical was entitled to rely on

S.C. Johnson’s admission of the facts necessary to establish

Nutraceutical’s post-2012 continuous use. S.C. Johnson also

affirmatively misled Nutraceutical about the scope of trial,

and then struck only after Nutraceutical could no longer pre-

sent relevant evidence. We cannot permit it to profit from this

tactic. The district court abused its discretion in allowing S.C.

Johnson to argue that Nutraceutical failed to prove continu-

ous use post-2012.

B

Our holding that S.C. Johnson is estopped from relying on

the argument that prevailed in the district court is sufficient

to sustain our disposition of this case. For the sake of com-

pleteness, however, we add a few words about the merits. In

short, even if we did not think S.C. Johnson’s argument es-

topped, our result would be the same: the district court com-

mitted reversible error in finding that Nutraceutical failed to

prove continuous use after 2012.

The parties dispute the standard of review under which

this conclusion should be evaluated. Nutraceutical argues

that the district court applied the wrong legal standard, and

thus that we must approach the case de novo. Morisch v. United

States, 653 F.3d 522, 528 (7th Cir. 2011). S.C. Johnson counters

that the district court’s conclusion was actually an application

of law to fact, which is reviewed for clear error. Id.

We agree with Nutraceutical. The district court relied ex-

clusively on Nutraceutical’s lack of sales records proving sales

after 2012, but “[e]vidence of actual sales is not necessary to

establish ownership.” Johnny Blastoff, 188 F.3d at 434. Even if

we characterized this as a ruling on a mixed question, it was

14 No. 15-3337

clearly erroneous. In focusing exclusively on the Sunfeather

sales records, the district court missed the forest while look-

ing for one specific kind of tree. In fact, the record does contain

evidence of sales after 2012. On cross-examination, Nutraceu-

tical’s Executive Vice President testified that since 2011

Nutraceutical had sold BUG OFF products, and continued to

do so through the commencement of the lawsuit. He also tes-

tified that Maine still “manufactures the soap under the Sun-

Feather line,” and that Nutraceutical subsidiaries “manufac-

ture[] the BUG OFF repellant.” Although BUG OFF products

were no longer listed in Smith & Hawken and Frontier’s cata-

logs, they continued to be available for purchase on the Sun-

feather website. These facts are sufficient in themselves to es-

tablish continuous use after 2012. S.C. Johnson admitted as

much in its summary judgment response, where it said that

Nutraceutical “distributes” BUG OFF products online and “at

retail shops around the country,” and that “Nutraceutical

sales records demonstrate continued sale of Sunfeather BUG

OFF … through [the] present.”

S.C. Johnson protests that even if these facts are sufficient

to establish continuous use, they are insufficient to establish

national use after 2012. It points to Sunfeather’s relatively low

sales numbers through 2012. But Nutraceutical did not have

to show either a high volume of sales or widespread recogni-

tion. See Kathreiner’s, 82 F. at 326. Courts do not examine pub-

lic sales because they want to know if a mark is dominant in

a market, but rather because “[p]ublic sales let others know

that they should not invest resources to develop a mark simi-

lar to one already used in the trade.” Zazu Designs, 979 F.2d at

503. With this concern in mind, the fact that BUG OFF prod-

ucts continued to be featured and sold on the Sunfeather web-

site is particularly instructive: if other producers wanted to

No. 15-3337 15

find out whether the mark was already in use, their answer

was only a Google search away.

S.C. Johnson points to cases noting that sporadic or de min-

imis use generally may not establish trademark rights. See,

e.g., Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188,

1196 (11th Cir. 2001). But these cases are properly understood

as ferreting out situations where the use “may indicate the

mere intent to reserve a mark for later use rather than the pre-

sent commercial utilization of the mark.” Allard Enterprises,

146 F.3d at 359 (discussing La Société Anonyme des Parfums Le

Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974)). Such use

cannot qualify as “the kind of bona fide use intended to afford

a basis for trademark protection.” Id. (quoting Le Galion, 495

F.2d at 1272); see also Planetary Motion, 261 F.3d at 1196 (not-

ing that putative owner did not make the product available

“merely to a discrete or select group”); Blue Bell, 508 F.2d at

1265 (noting that “[s]ecret, undisclosed internal shipments are

generally inadequate to support the denomination ‘use’”).

This does not describe Nutraceutical’s use. Even if sales

were relatively low, “use” is not limited to sales. Not only did

Nutraceutical manufacture and sell BUG OFF products, but it

did so through a publicly available website. See Planetary Mo-

tion, 261 F.3d at 1196 (holding posting of software with mark

on publicly available website sufficiently widespread use to

establish ownership rights in mark).

Though the record contains little evidence of where sales

took place during the post-2012 period, that does not matter.

S.C. Johnson’s admission that Sunfeather BUG OFF products

were sold at “retail shops around the country,” together with

evidence of the website, does the trick. The website, while

16 No. 15-3337

passive, was available nationwide. The district court’s deci-

sion that Nutraceutical failed to prove post-2012 continuous

use was clearly erroneous.

C

While defending the district court’s decision with one

hand, S.C. Johnson attacks it with the other. S.C. Johnson con-

tends that the district court clearly erred in finding that

Nutraceutical demonstrated continuing nationwide use be-

fore 2012. (We understand it to be making this argument as an

alternate ground for supporting the district court’s judgment,

rather than as an effort to obtain additional relief.)

S.C. Johnson does not challenge any of the district court’s

underlying factual findings (and that is just as well, given the

clear error standard of review that applies to them). We re-

view the pertinent findings here. The court found that be-

tween 1995 and 1998, Sunfeather’s BUG OFF products were

advertised, promoted, and sold on Sunfeather’s website. It

also mailed between 7,500 and 13,333 catalogs annually to

customers all across the United States. It marketed and sold

BUG OFF products at trade and craft shows across the coun-

try. From 1994 through 2004, Sunfeather products bearing the

mark were included in Smith & Hawken’s catalog, which had

a circulation of 200,000 during that period. From 1997 through

2007, they were included biannually in Frontier’s catalogs,

which were sent to 15,000 wholesalers across the country. Ac-

cording to Nutraceutical’s sales records, BUG OFF products

were sold in 31 states during 2011 and 2012. From 2008–2012,

Sunfeather BUG OFF products were sold in the following

yearly amounts, and in the following numbers of states:

No. 15-3337 17

Year Total Unit Sales States

2008 3,586 35

2009 2,710 38

2010 2,032 40

2011 944 25

2012 501 28

Although sales certainly declined over this time, Sun-

feather BUG OFF products were still being marketed and sold

to a nationwide audience. The district court’s finding that

Nutraceutical demonstrated nationwide, continuing use

through 2012 was not clearly erroneous.

III

The district court abused its discretion when it entertained

S.C. Johnson’s post-trial argument that Nutraceutical failed to

prove continuous use of the BUG OFF mark after 2012. Be-

cause the district court did not clearly err in finding that

Nutraceutical maintained continuous use prior to 2012, S.C.

Johnson’s judgment cannot be saved. We therefore REVERSE

and order that the injunction against Nutraceutical be

VACATED forthwith.