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Superior Consulting Services, Inc. v. Shaklee Corp.

United States District Court, M.D. Florida, Orlando Division

April 17, 2018

SUPERIOR CONSULTING SERVICES, INC., Plaintiff,
v.
SHAKLEE CORPORATION and SHAKLEE U.S., LLC, Defendants.

          ORDER

          GREGORY A. PRESNELL UNITED STATES DISTRICT JUDGE

         This 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).

         I. Factual and Procedural Background

         Superior 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.

         On June 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.

         On 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.

         II. Legal Standards

         A party 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)).

         When a 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.

         III. Analysis

         Shaklee 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 Counterclaim.[1]

         A. Trademark Infringement, FDUPTA, and Unfair Competition: Counts I, II, III, IV, and VI of the Second Amended Complaint

         Title 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).

         The 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.

         Shaklee 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.

         1. Similarity of the Services

         “This 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 survey responses.

         Still, 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 reasonably debatable.

         2. Intent

         A 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.

         3. Actual Confusion

         Shaklee 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 ...


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