North American Bioproducts Corp. - AGG's Creative Thinking Leads to a Cost-effective Solution and Trademark Protection Win

Challenge

North American Bioproducts Corp. (NABC) applied for trademark protection for “Bactinex 100,” an anti-bacterial agent used in the production of ethanol. Pharmaceutical giant Bayer, owner of the trademark for “Bactine,” objected to the application, claiming infringement. NABC had been unaware of “Bactine,” a consumer antiseptic spray, and had been advised that it should proceed with litigation against Bayer. But, concerned with defense costs and its chances of winning, NABC sought a second opinion from litigator Jeff Lewis, whose creative thinking led to a surprising, cost-effective solution.

Approach

Over lunch with two NABC executives, Mr. Lewis began doodling on the back of a napkin and wondered whether a switch of two of the letters in “B-a-c-t-i-n-e-x” might provide the solution — “B-a-c-t-e-n-i-x”. He explained to the client that “bacte” derives from the Latin root of the word “bacterium,” thus cannot be trademarked, and that the suffix “nix” comes from the German “nichts,” and, similarly, cannot be trademarked. Mr. Lewis had apparently found a quick solution that would save the client tens of thousands of dollars in litigation costs, alleviate the concerns about losing, and allow the company to focus on business. NABC liked the elegant proposal because its customers typically referred to the product by its number rather than its name. But would Bayer accept the remedy?

Result

Mr. Lewis contacted Bayer’s counsel, who quickly agreed that switching the letters satisfied Bayer’s concerns. The parties reached a settlement whereby NABC withdrew the “Bactinex” proposal and resubmitted under “Bactenix.” Both sides went away satisfied, and NABC (now owned by Lallemand Biofuels & Distilled Spirits) easily won trademark protection for “Bactenix.”