Health & Sun Research, Inc. v. Australian Gold, LLC, 2013 WL 6038748, M.D.Fla., November 14, 2013 (NO. 8:12-CV-2319-T-33MAP)

In a trademark infringement case between tanning-lotion manufacturers, the Middle District of Florida denied Defendant Australian Gold’s motion for summary judgment, holding that Plaintiff Health & Sun Research, Inc. had not abandoned its Purple Rain and Royal Flush marks for tanning bed lotions.

The plaintiff had made no sales of products under the Royal for three years before the defendant entered the market with a similar mark in 2011. The defendant, therefore, was entitled to a rebuttable presumption of abandonment. Nevertheless, the court found that the plaintiff’s affidavit of its President stating that it had always intended to continue to produce the lotions, “continued to see an interest” in the marks and considered the marks “staples” of its product offering, sufficient to create an issue of fact regarding abandonment.

As to the plaintiff’s Purple Rain mark, the court found that the defendant was entitled to no presumption because the plaintiff had made sales under the mark in 2011 and then in June 2013. Those facts combined with the President’s affidavit and the plaintiff’s efforts to enforce its mark against the defendant precluded a finding that the plaintiff had abandoned its mark.