USA Nutraceuticals Grp., Inc. v. BPI Sports, LLC, Case No. 15-CIV-80352-Bloom/Valle

• Decision Date: 22 February 2016
• Docket Number: Case No. 15-CIV-80352-Bloom/Valle
• Citation: 165 F.Supp.3d 1256
• Parties: USA Nutraceuticals Group, Inc., and Ultra-Lab Nutrition, Inc., d/b/a Beast Sports, Plaintiffs, v. BPI Sports, LLC and BPI Sports Holdings, LLC, Defendants.
• Court: U.S. District Court — Southern District of Florida

165 F.Supp.3d 1256

USA Nutraceuticals Group, Inc., and Ultra-Lab Nutrition, Inc., d/b/a Beast Sports, Plaintiffs,

v.BPI Sports, LLC and BPI Sports Holdings, LLC, Defendants.

Case No. 15-CIV-80352-Bloom/Valle

United States District Court, S.D. Florida.

Signed February 22, 2016

Ryan M. Kaiser, Amin Talati & Upadhy, LLC, Chicago, IL, Adam Douglas Palmer, Schoeppl & Burke, Boca Raton, FL, for Plaintiffs.

John C. Carey, Carey Rodriguez Greenberg O'Keefe LLP, Lynette Ebeoglu McGuinness, Cary Alan Lubetsky, Krinzman, Huss & Lubetsky, LLP, Michael Bruce Chavies, Akerman Senterfitt, Frank S. Hedin, Carey Rodriguez Milian Gonya, LLP, Miami, FL, for Defendants.

ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION

BETH BLOOM

, UNITED STATES DISTRICT JUDGE

This cause is before the Court upon Defendants, BPI Sports, LLC and BPI Sports Holdings, LLC's Motion for Preliminary Injunction, ECF No. [48] (“Motion”). The Court has reviewed the Motion, all supporting and opposing filings, the record in this case, and convened the parties for oral argument on February 18, 2016 in Miami, Florida. Accordingly, the Court is now fully advised as to the premises. After thorough review of the submitted evidence and the parties' arguments, the Court finds that the Motion must be denied.

I. BACKGROUND

This case initially involved the alleged misappropriation and use of Plaintiffs/Counter-Defendants, USA Nutraceuticals Group, Inc., and Ultra-Lab Nutrition, Inc. d/b/a Beast Sports' trade dress and related false advertising and unfair competition claims. See generally Amended Complaint, ECF No. [47]. Specifically, Plaintiffs/Counter-Defendants, USA Nutraceuticals Group, Inc., and Ultra-Lab Nutrition, Inc. d/b/a Beast Sports (collectively, “Beast”) assert eight claims against Defendants/Counter-Plaintiffs, BPI Sports, LLC and BPI Sports Holdings, LLC (collectively, “BPI”): trade-dress infringement and false advertisement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)

(Counts I, IV, and VI); unfair competition under both federal and state law (Counts II, III, and VIII); and a violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), Fla. Stat. § 501.204 (Count VII).¹

Id. On June 4, 2015, BPI filed its Answer and Affirmative Defenses, ECF No. [32], which was subsequently amended to assert five counterclaims mimicking those claims brought by Beast: trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(a), and Florida common law (Counterclaims I and III, respectively); false designation of origin and unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and Florida common law (Counterclaims II and IV, respectively); and a violation of FDUTPA, Fla. Stat. § 501.204 (Counterclaim V). See Amended Answer, Affirmative Defenses, and Counterclaims (“BPI Counterclaims”), ECF No. [44].

Beast develops, markets, and sells a wide range of sports nutrition supplements (the “Beast Products”). Amended Complaint (“Amend. Compl.”), ECF No. [47] at ¶¶ 2, 13. Throughout the years, the Beast Products have been branded with various trademarks, including, but not limited to, “Beast,” “Beast Sports,” “Beast Mode,” and “Train Like a Beast.” Id. Since approximately 2013, the Beast Products have been packaged using the color “Beast Blue,” as well as various trademarks and “a prominent 'B' in black lettering.” Id. The stylized “B” represents Beast's house mark, which Beast has used since 2008. See Declaration of Anthony Altieri (“Altieri Decl.”), ECF No. [54-3] at ¶ 3. According to the Amended Complaint, the Beast Products have had substantial success and have been awarded “Break Out Brand of the Year” in 2014 by BodyBuilding.com. Amend. Compl. at ¶ 15. Beast contends that this success “has been based largely on its unique and distinctive Beast Blue trade dress.” Id. at ¶ 17. Similarly, BPI manufactures, markets, and sells competing products (the “BPI Products”) using the marks “BPI” and “Be Better. Be Stronger. BPI.” (the “BPI Mark” and the “Be Better Be Stronger Mark,” respectively). See BPI Counterclaims at ¶¶ 6-8. The BPI Mark is the subject of a valid and subsisting trademark registration, U.S. Registration No. 4,252,316, which was obtained on December 4, 2012. Id. at ¶ 7; see also Declaration of Derek Ettinger (“Ettinger Decl.”), ECF No. [48-1] at ¶ 3. The BPI Mark has been in use since approximately January 2009. Ettinger Decl. at ¶ 3. On April 7, 2015, BPI began using the Be Better Be Stronger Mark on its products. BPI Counterclaims at ¶ 8; Ettinger Decl. at ¶ 4. According to BPI's CEO, BPI invested over $2.5 million on marketing and advertising related expenses for the purpose of building name recognition and public association with the Be Better Be Stronger Mark, and over $10 million on marketing and advertising related expenses with respect to the BPI Mark. Ettinger Decl. at ¶ 5. Both BPI and Beast sell and market their products online, including Amazon.com, as well as through brick and mortar locations such as GNC. Id. at ¶ 7.

On or about October 18, 2015, BPI purportedly discovered that Beast had begun using the BPI Mark to advertise the Beast Products on Amazon.com (hereinafter, “Amazon”). BPI Counterclaims at ¶ 14; Ettinger Decl. at ¶ 8. Amazon permits entities to purchase advertising keywords, which link Amazon users seeking to purchase a particular product with advertisements tailored to the user's search. See BPI Counterclaims at ¶ 15; Ettinger Decl. at ¶ 8. Beast allegedly purchased the advertising keyword “BPI” from Amazon's marketing department. BPI Counterclaims at ¶ 15; Ettinger Decl. at ¶ 8. Additionally, on approximately November 19, 2015, BPI discovered that Beast had purchased the advertising keywords “BPI Sports” (another federally registered mark owned by BPI), as well as “Best BCAA,” “Best Creatine,” and “Whey HD,” each of which represents a product sold by BPI. See Declaration of Frank Hedin (“Hedin Decl.”), ECF No. [48-2] at ¶¶ 3-4. When an individual searches for the term “BPI,” “BPI Sports,” “Best BCAA,” “Best Creatine,” or “Whey HD” on Amazon, “a banner advertisement for [the Beast Products] is immediately displayed at the top of the search results page, even above the search results displaying the actual BPI [P]roducts that the user sought.” BPI Counterclaims at ¶ 16; Ettinger Decl. at ¶ 8; Hedin Decl. at ¶ 4; see also Amazon.com Screenshot, Ettinger Decl. at Exhibit “C,” ECF No. [48-1] at 12; Amazon.com Screenshot, Hedin Decl. at Composite Exhibit “A,” ECF No. [48-2] at 4-8 (reproduced below).statement

According to Beast, when the Amazon user clicks on the banner, he or she is immediately directed to a website operated by Beast. See Hedin Decl. at ¶ 5; Ettinger Decl. at ¶ 8. This statement appears to be contradicted; when a user clicks on Beast's banner advertisement they are directed to a web page within Amazon listing Beast's nutrition products. See Declaration of Jennifer Jalovec (“Jalovec Decl.”), ECF No. [54-4] at ¶ 5. Regardless, BPI contends that Beast is intentionally using the BPI Mark “for the purpose of misleading and confusing potential customers of BPI [P]roducts as to the origin of the Beast [ ] [P]roducts advertised in the banner advertisement and sold at the linked website, as well as to the relationship between BPI and [Beast].” BPI Counterclaims at ¶ 20.

In addition to purchasing BPI-related keywords from Amazon, Beast has also allegedly commenced infringing activities related to the Be Better Be Stronger Mark. Since August 29, 2015, Beast began marketing their products using a tagline which, according to BPI, is likely to cause confusion among consumers. Id. at ¶¶ 21-24. Specifically, in September 2015, Beast initiated a campaign using a tagline incorporating the stylized “B” followed by the words “Original,” “Genuine,” and “More” (the “B Original Tagline” or “Tagline”). Id. ; see also Ettinger Decl. at ¶ 10; Examples of B More Tagline, Composite Exhibit D to Ettinger Decl., ECF No. [48-1] at 14-16. BPI avers that the alliterative nature of the Be Better Be Stronger Mark, as well as the repetitive use of the “B” sound, results in a unique cadence or rhythm, which “provides an auditory commercial impression that is understood by consumers to signify the products of BPI.” See BPI Counterclaims at ¶ 22. Because the B Original Tagline could be interpreted to read as “B Original B Genuine B More,” BPI contends that the Tagline misappropriates the elements of BPI's Be Better Be Stronger Mark and is likely to cause confusion or mistake, or is likely to deceive consumers when used in connection with advertising and selling nutritional supplements

. Id. at ¶ 23.

Based on these alleged acts of infringement, BPI seeks a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure

, enjoining Beast from using the BPI Mark or the B Original Tagline on any product labels or in any advertising or marketing, and from using any keyword advertising on Amazon involving the keyword “BPI,” any registered mark belonging to BPI, or any BPI product name. See generally Motion.

II. DISCUSSION

To obtain a preliminary injunction, a party must demonstrate “(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on the non-movant; and (4) that the entry of the relief would serve the public interest.” Schiavo ex. rel Schindler v. Schiavo , 403 F.3d 1223, 1225–26 (11th Cir.2005)

; see also

Palmer v. Braun , 287 F.3d 1325, 1329 (11th Cir.2002) (citing Suntrust Bank v. Houghton Mifflin Co. , 268 F.3d 1257, 1265 (11th Cir.2001) ); Levi Strauss & Co. v. Sunrise Int'l. Trading Inc. , 51 F.3d 982, 985 (11th Cir.1995). “Because a preliminary injunction is a 'drastic remedy,' the plaintiff bears the burden to 'clearly establish' each of the four elements.” Michael Caruso & Co. v. Estefan Enterprises, Inc. , 994 F.Supp. 1454, 1458 (S.D.Fla.19...