United States District Court, M.D. Florida, Orlando Division
GREGORY A. PRESNELL UNITED STATES DISTRICT JUDGE
Matter comes before the Court on Shaklee's Motion for
Summary Judgment (Doc. 178); Superior's Motion for
Summary Judgment (Doc. 187); Shaklee's Response in
Opposition (Doc. 248); Superior's Memorandum in
Opposition (Doc. 249); Shaklee's Reply (Doc. 258); and
Superior's Reply (Doc. 259).
Factual and Procedural Background
owns two Florida fictitious business entities called
“Your Future Health” and “YFH”
(collectively “Superior”). Doc. 20 ¶ 5.
Eleanor Cullen owns and operates Superior. Superior's
“primary objective is the early detection of disease,
through performing certain laboratory tests, including blood
tests, for consumers.” Id. ¶ 7. Superior
accomplishes its objective by creating a profile
“customized to a client's unique biochemistry,
” called a “Healthprint.” Id.
¶ 11. Superior has registered the mark
“Healthprint” twice with the United States Patent
and Trademark Office (“USPTO”). Registration
number 2646571 was obtained on November 5, 2002, and
registration number 2928465 was obtained on March 1, 2005.
Doc. 20 ¶¶ 14, 16. The USPTO did not require proof
of a secondary meaning for either mark. Id. ¶
18. On November 8, 2008, and February 5, 2011, Superior filed
declarations of incontestability for the marks.
8, 2016, Shaklee, a corporation that manufactures and
distributes nutrition supplements, beauty products, and
household-cleaning products, filed a trademark application
with the USPTO claiming a similar “Healthprint”
mark. Shaklee's Healthprint refers to a free, online
survey that consists of twenty-two questions about a
client's personal characteristics, habits, and goals.
Doc. 43-8 ¶ 13. Once the client answers all of the
questions, he or she is presented with “a customized
set of Shaklee products that fits [his or her] health goals,
needs and budget.” Doc. 43- 7, Ex. 1 at 1.
December 14, 2017, Superior filed its Second Amended
Complaint. Doc. 159. Count I of the Second Amended Complaint
alleges Direct Federal Trademark Infringement; Count II
alleges Vicarious Federal Trademark Infringement; Count III
alleges violation of the Florida Deceptive and Unfair Trade
Practices Act, or, in the alternative, common law unfair
competition; Count IV alleges common law trademark
infringement; Count V alleges statutory trademark dilution in
violation of 15 U.S.C. § 1125 and Florida Statute §
495.001, et seq.; Count VI alleges Federal Trademark
Unfair Competition under 15 U.S.C. § 1125(a); and Count
VII alleges common law tortious interference with
advantageous business relationships. On January 2, 2018,
Shaklee filed its Answer, Affirmative Defenses, and
Counterclaim. Doc. 166. Count I of the Counterclaim alleges
Statutory Trademark Dilution; Count II seeks declaratory
relief for invalidity of the Healthprint mark for nutritional
supplements; and Count III seeks declaratory relief under the
Florida Deceptive and Unfair Trade Practices Act.
is entitled to summary judgment when the party can show that
there is no genuine issue as to any material fact and that
the movant is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56. Which facts are material depends on the
substantive law applicable to the case. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The
moving party bears the burden of showing that no genuine
issue of material fact exists. Clark v. Coats &
Clark, Inc., 929 F.2d 604, 608 (11th Cir. 1991). A court
“must draw all reasonable inferences in favor of the
non-moving party, and it may not make credibility
determinations or weigh the evidence.” Hinson v.
Clinch County, Ga. Bd. Of Educ., 231 F.3d 821, 826-27
(11th Cir. 2000) (quoting Reeves v. Sanderson Plumbing
Prods., Inc., 530 U.S. 133, 150-51 (2000)).
party moving for summary judgment points out an absence of
evidence on a dispositive issue for which the nonmoving party
bears the burden of proof at trial, the nonmoving party must
“go beyond the pleadings and by [his] own affidavits,
or by the depositions, answers to interrogatories, and
admissions on file, designate specific facts showing that
there is a genuine issue for trial.” Celotex Corp.
v. Catrett, 477 U.S. 317, 324-25 (1986) (internal
quotations and citation omitted). Thereafter, summary
judgment is mandated against the nonmoving party who fails to
make a showing sufficient to establish a genuine issue of
fact for trial. Id. at 322, 324-25. The party
opposing a motion for summary judgment must rely on more than
conclusory statements or allegations unsupported by facts.
Evers v. Gen. Motors Corp., 770 F.2d 984, 986 (11th
Cir. 1985) (“conclusory allegations without specific
supporting facts have no probative value”). The Court
must consider all inferences drawn from the underlying facts
in the light most favorable to the party opposing the motion,
and resolve all reasonable doubts against the moving party.
Anderson, 477 U.S. at 255.
moves for summary judgment on all counts of the Second
Amended Complaint. Superior moves for summary judgment on
Counts I, III, IV, and VI of the Second Amended Complaint;
the third, fourth, fifth, sixth, seventh, eighth, and ninth
(mislabeled as fifteenth) affirmative defenses to the Second
Amended Complaint; and Counts II and III of the
Trademark Infringement, FDUPTA, and Unfair Competition:
Counts I, II, III, IV, and VI of the Second Amended
15 U.S.C. § 1114(a), provides that any person who uses a
“copy, or colorable imitation of a registered
trademark” that is “likely to cause
confusion” will be liable in a civil action by the
registrant. Section 1125(a) provides that anyone who uses a
“word, term, name, symbol . . . or any combination
thereof” that is “likely to cause confusion . . .
as to the affiliation” of one person with another, or
“as to the origin, sponsorship, or approval of his or
her . . . commercial activities” with those of another
person shall be held liable in a civil action for damages
caused by the unauthorized use. The touchstone for trademark
cases is the likelihood of consumer confusion. Frehling
Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d
1330, 1337 (11th Cir. 1999). Counts I and II both raise
federal trademark infringement claims. The analysis of the
common law trademark infringement claim (Count IV) and the
FDUPTA claim (Count III) is the same as that of the federal
trademark infringement claims. See Gift of Learning
Found., Inc. v. TGC, Inc., 329 F.3d 792, 802 (11th Cir.
2003); Rain Bird Corp. v. Taylor, 665 F.Supp.2d
1258, 1267 (N.D. Fla. 2009). Additionally, Courts address
“claim[s] for unfair competition [Count VI] under the
same analysis as used for the trademark infringement
claim[s].” Homes & Land Affiliates, LLC v.
Homes & Loans Magazine, LLC, 598 F.Supp.2d
1248, 1257 n.7 (M.D. Fla. 2009); see also Maurer Rides
USA, Inc. v. Beijing Shibaolia Amusement Equip. Co .,
Ltd., No. 6:10-cv-1718-ORL-37, 2012 WL 2469981, at *4
(M.D. Fla. May 30, 2012), report and recommendation
adopted in part sub nom. Maurer Rides USA, Inc. v. Beijing
Shibaolia Amusement Equip. Co., No. 6:10-cv-1718-ORL-37,
2012 WL 2463834 (M.D. Fla. June 27, 2012).
Eleventh Circuit uses a seven-factor test to analyze
trademark infringement claims. The factors include: (1) the
type of the mark, (2) the similarity of the marks, (3) the
similarity of the products the marks represent, (4) the
similarity of the parties' retail outlets and customer
base, (5) the similarity of advertising media, (6) the
defendant's intent, and (7) actual confusion.
Id. at 1335. The type of mark and the evidence of
actual confusion are the most important factors. Frehling
Enters., Inc., 192 F.3d at 1330.
groups together Counts I, II, III, IV, and VI for purposes of
its Motion for Summary Judgment. See Doc. 178 at 13.
Shaklee argues that it should be awarded summary judgment on
these counts, contending that “no reasonable jury could
find a likelihood of confusion on these facts, because: (i)
the services the marks represent are demonstrably different;
(ii) there is no evidence of Shaklee's intent to trade on
Superior's Healthprint mark or otherwise harm Superior;
and (iii) there is absolutely no evidence of actual consumer
confusion.” Id. at 14. Shaklee assumes, for
purposes of its Motion, that some of the seven factors,
including “strength of the mark and similarity of the
mark, ” favor Superior. Id. In effect, Shaklee
contends that no reasonable jury could find in favor of
Superior because three out of seven factors favor Superior.
Because the Court finds that genuine issues of fact remain as
to all three of those factors, Shaklee is not entitled to
summary judgment on the trademark infringement or unfair
competition claims. Additionally, under these circumstances,
the disputed posture of those three factors precludes a
finding of summary judgment in favor of Superior as well.
Similarity of the Services
factor requires a determination as to whether the products
are the kind that the public attributes to a single source,
not whether or not the purchasing public can readily
distinguish between the products of the respective
parties.” Frehling Enterprises, Inc. v. Int'l
Select Grp., Inc., 192 F.3d 1330, 1338 (11th Cir. 1999).
Here, the services the marks represent are not identical.
However, they are similar in some ways. Some record evidence
indicates that Superior's Healthprint requires a blood
test, but other evidence indicates that it does not. See,
e.g., Doc. 224 at 45-46. Further, both products involve,
at least in some way, the recommendation or suggestion of
certain supplements. Superior offers its Healthprint for a
fee, but does not attempt to sell supplements. Shaklee offers
its Healthprint for free, but apparently does so to promote
the supplements it sells. Even though Superior did not sell
the supplements, the suggestion of supplements for purchase
appears to have been an integral part of Superior's
Healthprint. The services are related in that they both
purport to use questionnaires to better the health and/or
lifestyles of their customers at least in part through the
usage of nutritional supplements. Shaklee mentions its sales
of beauty supplies and cleaning products in support of its
argument that the two services would not be related in the
minds of consumers, but Shaklee's Healthprint survey had
nothing to do with cleaning products or beauty supplies.
Rather, Shaklee's Healthprint survey is limited to
suggesting nutritional supplements in response to consumer
despite the similarities between the two services, there are
obvious differences. Superior's Healthprint, even
assuming it did not require a blood test, involved
conversations with Mrs. Cullen, typically over the phone, and
appeared to take a considerable amount of time. Shaklee's
Healthprint was a quick, standardized, online survey that
seemed to involve no personal interaction. One cost a
substantial amount of money, and the other was free. A
reasonable jury could find that the services the marks
represent are similar, and that their similarity contributes
to a likelihood of confusion. However, in light of all the
record evidence, whether this factor favors Superior is
showing of intent can “justify the inference that there
is confusing similarity.” Frehling Enterprises,
Inc., 192 F.3d at 1340. Nevertheless, a showing of
intent is not required to succeed on a claim for trademark
infringement. Sovereign Military Hospitaller Order of
Saint John of Jerusalem of Rhodes & of Malta v. Fla.
Priory of the Knights Hospitallers of the Sovereign Order of
Saint John of Jerusalem, Knights of Malta, The Ecumenical
Order, 809 F.3d 1171, 1188 (11th Cir. 2015). To weigh
this factor, courts must determine whether the defendant
“had a conscious intent to capitalize on the
plaintiff's business reputation, was intentionally blind,
or otherwise manifested improper intent” when it
adopted its mark. Custom Mfg. & Eng'g, Inc. v.
Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007)
(internal quotations and alteration omitted). Superior has
produced evidence that Shaklee knew about Superior's mark
prior to launching Shaklee's own Healthprint. Superior
also argues that Jennifer Steeves-Kiss, a former employee of
both Shaklee and Proctor & Gamble, waited eleven years
after a Proctor & Gamble meeting where Superior's
Healthprint was allegedly discussed to suggest the name
Healthprint to Shaklee for its survey. See Doc. 187 at 12;
Doc. 215 at 189-191; Doc. 178 at 6. At the preliminary
injunction stage, the Court expressed doubts as to
Superior's ability to prove intent. Cf. Superior
Consulting Servs., Inc. v. Shaklee Corp., No.
616-cv-2001-ORL31GJK, 2017 WL 680076, at *6 (M.D. Fla. Feb.
21, 2017), aff'd, 710 Fed.Appx. 850 (11th Cir.
2017). However, at the summary judgment stage, the Court is
not permitted to weigh the evidence, and must draw all
reasonable inferences in favor of the non-movant on each
party's Motion. Superior's evidence does not
establish intent, but it does create a disputed issue of fact
in that regard.
argues that Superior has not provided any evidence of
confusion in someone actually buying Superior's test or
someone filling out Shaklee's Healthprint survey.
However, “[p]roof of actual confusion is not necessary
to prove likelihood of confusion.” Homes & Land
Affiliates, LLC v. Homes & Loans Magazine, LLC, 598
F.Supp.2d 1248, 1264 (M.D. Fla. 2009). There are several ways
to show actual confusion, including “‘inquiries
regarding possible affiliations between the