McKee, Voorhees & Sease Attorneys Win Trademark Bench TrialJune 4, 2024

On April 16, 2024, McKee, Voorhees & Sease intellectual property lawyers Michael C. Gilchrist and Christine Lebron-Dykeman obtained a trial victory for their client in Arsa Distributing, Inc. v. Salud Natural Mexicana SA de CV. The United States District Court for the Eastern District of Virginia overturned a Trademark Trial and Appeal Board (TTAB) decision. The TTAB had ruled that the Mexican supplier Salud had priority to the EUCALIN mark in the United States and that Salud had not abandoned its trademark rights by failing to use the mark in the United States while it was banned from doing business between 2008 and 2015 for being a Specially Designated Narcotics Trafficker under the Kingpin Act. After a bench trial, the District Court ruled that Arsa had priority to the mark in the United States from the beginning because of its control of distribution and marketing and ruled that defendant Salud had abandoned any claim to trademark ownership because being banned from conducting business as a narcotics trafficker is not a valid basis for claiming excusable nonuse. As a result of the ruling, Salud’s application for registration of the EUCALIN mark will be denied and Arsa’s application should proceed to registration.