Superior Consulting Services, Inc. v. Shaklee Corporation
710 F. App'x 850
| 11th Cir. | 2017Background
- Superior Consulting Services (through YFH/Your Future Health) developed and sells a paid diagnostic/service called “HealthPrint,” primarily involving blood tests plus a lifestyle survey; Superior holds two incontestable federal trademarks for “HealthPrint.”
- Shaklee, a supplement manufacturer and former business partner of Superior, launched a free online “Healthprint” questionnaire in 2016 that generates a report with product recommendations (no blood testing).
- Superior sued Shaklee under the Lanham Act seeking a preliminary injunction to stop Shaklee’s use of the mark, alleging likelihood of consumer confusion with Superior’s registered HealthPrint mark.
- The district court denied the preliminary injunction; Superior appealed. The Eleventh Circuit reviews denial for abuse of discretion and focuses on likelihood of success on the merits (likelihood of confusion) as the dispositive preliminary-injunction element.
- The court applied the seven-factor Frehling test (type of mark, similarity of marks, similarity of products, trade channels/customers, advertising similarity, defendant’s intent, and actual confusion) and affirmed the denial, finding no likelihood of consumer confusion on the record before it.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Superior is likely to succeed on trademark-infringement claim (likelihood of confusion) | Superior argued its incontestable HealthPrint marks are strong and consumers will confuse Shaklee’s questionnaire with Superior’s blood-test service | Shaklee argued the services differ (blood tests vs. free questionnaire), shared third-party uses weaken mark strength, and there is no actual confusion | Court held Superior failed to show likelihood of confusion and therefore cannot meet the first preliminary-injunction element |
| Strength/type of the mark | Superior asserted its incontestable registrations entitle the mark to strong protection (at least descriptive with secondary meaning or suggestive) | Shaklee pointed to widespread third-party use of similar terms to rebut distinctiveness | Court held the incontestable registrations create a presumption of distinctiveness; Superior’s mark is at least suggestive/strong and Shaklee failed to rebut that presumption |
| Similarity of products/services | Superior contended both offerings are consumer health assessments called “HealthPrint” and thus likely attributable to same source | Shaklee emphasized that Superior’s HealthPrint centers on laboratory/blood testing while Shaklee’s is an online questionnaire with product recommendations | Court held the products are sufficiently dissimilar (blood-test service vs. free online questionnaire) weighing against confusion |
| Evidence of actual confusion and defendant’s intent | Superior submitted affidavits of customer confusion and pointed to Shaklee’s knowledge of Superior’s mark and a similar logo | Shaklee argued affidavits showed customers knew differences and produced evidence of independent selection and consumer testing for its logo; development occurred years after their 2005 contact | Court found affidavits did not show source confusion, and intent evidence did not clearly show bad faith; these factors weigh for Shaklee |
Key Cases Cited
- Frehling Enter., Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (sets out seven-factor likelihood-of-confusion test)
- Dieter v. B & H Indus. of S.W. Fla., Inc., 880 F.2d 322 (11th Cir. 1989) (incontestable marks presumed descriptive with secondary meaning)
- Forsyth Cty. v. U.S. Army Corps of Eng’rs, 633 F.3d 1032 (11th Cir. 2011) (standard of review for preliminary injunction denial)
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (third-party use considered in mark-strength analysis)
- Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc., 830 F.3d 1242 (11th Cir. 2016) (impact of third-party uses in same field/region on mark strength)
- Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160 (5th Cir. 1982) (weight of actual confusion depends on who is confused)
- Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) (intent and overall weighing of Frehling factors)