The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court’s grant of summary judgment in favor of SmithKline Beecham and GlaxoSmithKline Consumer Healthcare (collectively GSK), the maker of a smoking-cessation product named Commit Lozenges, and rejected trademark infringement and false advertising claims brought by Natural Answers. Natural Answers, Inc. v. SmithKline Beecham Corp., Case No. 06-15084 (11th Cir., June 13, 2008).

Plaintiff Natural Answers tried to enforce its HERBAQUIT LOZENGES mark against GSK's COMMIT LOZENGES mark. Natural Answers sold HERBAQUIT LOZENGES, designed to help satisfy cravings related to smoking, from 2000 to 2002. The lozenges were sold in drugstores, supermarkets, convenience stores and over the internet under the mark HERBAQUIT LOZENGES. In 1994 and 1995, Natural Answers filed unsuccessful federal trademark applications directed to HERBAQUIT LOZENGES. GSK began developing its Commit Lozenges as a stop-smoking aid in 1998 and begin advertising and selling them nationally in 2003 under the federally-registered COMMIT LOZENGES mark.

The Eleventh Circuit held that in order for Natural Answers to bring its trademark claim, as well as its claims for violations of Florida's common law and statutes, it had to own a “valid trademark.” Under the Lanham Act, a trademark is deemed abandoned, and thus no longer valid, “when its use has been discontinued with intent not to resume such use.” According to the Court, Natural Answers had not used its mark in commerce for well over three years, and thus GSK was entitled to a rebuttable presumption that Natural Answers did not intend to resume its use. The burden of production, although not the ultimate burden of persuasion, shifted to Natural Answers to produce evidence that it used the mark or intended to resume use. Natural Answers’ only response was its “bare assertion” by its CEO that it intended to resume use if it could find ample funding and that one company had requested more information about potential funding. The Court stated, “quite simply, that is not enough.” It noted that, if all a party had to do to avoid a finding of abandonment was to aver it never intended to abandon the trademark, then no trademark would ever be abandoned. The Court granted summary judgment on the basis of abandonment of the trademark and consequently granted summary judgment on all counts since they depended on the validity of the trademark, including unfair competition under both federal and Florida law.

Practice Note: Companies should be careful not to let otherwise valid marks become abandoned because they will bear the burden of proving an intent to resume use of the mark if it is not used regularly in commerce.