United States District Court, M.D. Florida, Orlando Division
GREGORY A. PRESNELL UNITED STATES DISTRICT JUDGE
Matter comes before the Court without a hearing on
Shaklee's Motion for Bench Trial (Doc. 328) and
Superior's Memorandum in Opposition (Doc. 336).
Factual and Procedural Background
owns two Florida fictitious business entities called
“Your Future Health” and “YFH”
(collectively “Superior”). Doc. 20 ¶ 5.
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.
April 16, 2018, the Court granted Shaklee's Motion for
Summary Judgment with respect to Counts V and VII of the
Second Amended Complaint. Doc. 281.
party demands a jury trial, the Court may make a finding that
on some or all of the issues, there is no federal right to a
jury trial. Fed.R.Civ.P. 39. The Seventh Amendment provides
that, “[i]n Suits at common law, where the value in
controversy shall exceed twenty dollars, the right of trial
by jury shall be preserved. . . .” In order to
ascertain whether a given action is analogous to a suit at
common law, Courts “determine whether a statutory
action is more similar to cases that were tried in courts of
law than to suits tried in courts of equity or admiralty . .
. [by] examin[ing] both the nature of the action and of the
remedy sought.” Tull v. United States, 481
U.S. 412, 417 (1987).
asks the Court to conduct a bench trial on the basis that the
Plaintiff is only entitled to equitable relief: disgorgement
of profits and injunctive relief. Doc. 328 at 1. Although
disgorgement of profits is a type of monetary damages, it is
considered a form of equitable relief. See Waldrop v. S.
Co. Servs., 24 F.3d 152, 157 (11th Cir. 1994). Superior
does not contest Shaklee's characterization of
disgorgement of profits as an equitable remedy. Rather,
Superior points to two legal remedies it sought in its
complaint: (1) statutory damages under the Lanham Act, and
(2) punitive damages. Doc. 336 at 2. Shaklee argues that
Superior waived any claims to statutory or punitive damages
by failing to include them in the Joint Pretrial Statement
notes that the Court issued an Order that requires the
parties to submit an Amended Joint Pretrial Statement by
August 3, 2018. Doc. 329. The purpose of that Order was not
to give Superior a second chance to seek damages that it had
waived in the original Joint Pretrial Statement; rather, the
Court ordered the submission of a new pretrial statement due
to decisions the Court had made on various pretrial motions
since the time the original Joint Pretrial Statement had been
filed. In the original Pretrial Statement, Superior had the
opportunity to state the damages it sought. Superior made no
mention of statutory or punitive damages in the damages
section, instead asserting only an intention to seek
disgorgement of profits. See Doc. 254 at 7-8. The
Local Rules for the Middle District of Florida are clear that
the Pretrial Statement is controlling:
All pleadings filed by any party prior to filing of the
pretrial statement shall be deemed to be merged therein, or
in any subsequent pretrial order entered by the Court. The
pretrial statement and the pretrial order, if any, will
control the course of the trial and may not be amended except
by order of the Court in the furtherance of justice.
Local Rule 3.06(e). To the extent that Superior had claims
for statutory or punitive damages prior to the filing of the
Joint Pretrial Statement, those claims were waived when it
failed to ...