Supreme Court supports Sabinsa in ForsLean trademark case

11-Feb-2011 - Last updated on 11-Feb-2011 at 16:24 GMT

The Supreme Court’s decision finalizes the Third Circuit Court July 2010 decision in Sabinsa’s favor

Related tags Supreme court of the united states

The US Supreme Court has denied Creative Compounds’ Petition for Writ of Certiorari in the protracted battle with Sabinsa Corporation’s over trademark infringement of Sabinsa’s ForsLean.

The Supreme Court’s denial of the Petition for Writ of Certiorari - a document which a losing party files with the Supreme Court asking them to review the decision of a lower court – finalizes the Third Circuit Court July 2010 decision in Sabinsa’s favor.

The case centered on Sabinsa’s ForsLean mark and Creative Compounds’ Forsthin. Both products are extracts of Coleus forskohlii intended for use in weight management products.

In July 2010, a Third Circuit ruling confirmed that Creative Compounds created a likelihood of confusion between the two brands.

“This means that the opinion and judgment of the Third Circuit is final and conclusive and we can proceed to the entry of judgment in the district court,” said James Hulme, Esq. of Arent Fox LLP in Washington, DC, who represented Sabinsa in this matter.

The US Court of Appeals decision that was not changed by the Supreme Court stated “it was undisputed that the ForsLean mark is commercially strong. Accordingly, this factor favors Sabinsa as a matter of law.”

“When a company makes a significant investment in developing intellectual property, and then must expend additional resources to protect it, this kind of an outcome is gratifying,” Dr. Muhammed Majeed, Sabinsa’s founder. “It is so important to the future of our industry that companies that make such investments are protected from infringement.”

History of use

According to earlier court papers, ForsLean was Sabinsa's top revenue-generating product for at least five years preceding the trial in the District Court. It remains in the top five ingredients for Sabinsa globally, said Shaheen Majeed, Sabinsa’s marketing director. The company remains the leading supplier of Coleus forskohlii extracts in the US, added Majeed, and its ForsLean ingredients is incorporated into over 100 products in the US.

Sabinsa began research into the potential weight management benefits of forskohlin in 1996. Positive results from a clinical trial led to the filing of an intent-to-use application for the trademark, ForsLean. The product name was derived from "Fors" from forskohlin and "Lean" for lean body mass.

Supply of the product was tested in 2003 when severe drought struck India. Sabinsa is reported to have spent significant resources to ensure supply by helping Indian farmers to cultivate Coleus forskohlii. These initiatives led to the creation of the "ForsLean promise", which ensures the supply of forskohlin in the future.

Creative Compounds entered the forskohlin market in 2002, and adopted the Forsthin name in 2004. Sabinsa sent a cease-and-desist letter to Creative Compounds in the summer of 2004, shortly after adoption of the Forsthin name.