USA Nutraceuticals Group, Inc. v. BPI Sports, LLC
165 F. Supp. 3d 1256
S.D. Fla.2016Background
- Beast alleges misappropriation of trade dress and related false advertising and unfair competition by BPI.
- Beast claims protection for its trade dress and marks: “Beast,” “Beast Sports,” “Beast Mode,” and “Train Like a Beast,” with distinctive Beast Blue color and a prominent black “B” house mark.
- BPI holds a registered trademark for the Be Better Be Stronger Mark (BPI Mark) and uses it on products; BPI also adopted the Be Better Be Stronger tagline and uses keyword advertising on Amazon linked to its marks.
- Beast allegedly used the BPI Mark and Be Better Be Stronger cadence in online advertising, including Amazon keyword ads and a Tagline that allegedly imitates BPI’s mark and cadence.
- Beast’s alleged acts include purchasing Amazon keywords such as “BPI” and “BPI Sports” and using a B Original Tagline that imitates the BPI cadence.
- The court denied Beast’s motion for a preliminary injunction after reviewing the evidence and arguments at a hearing in February 2016.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion for Be Better Be Stronger | Beast’s mark is strong and misappropriated | Beast’s use resembles a descriptive/cadence-based tagline | Beast fails to show substantial likelihood of confusion |
| Ownership/priority of Be Better Be Stronger Mark | BPI has common-law rights via adoption and public use | Be Better Be Stronger lacks registration but has public use | Be Better Be Stronger rights established via common law, but not enough for injunction on confusion grounds |
| Initial interest confusion through Amazon keywords | Keywords create initial interest confusion against BPI | Eleventh Circuit does not recognize initial interest confusion at this stage | No actionable initial interest confusion; no likelihood of success on this basis |
| Likelihood of confusion for BPI Mark via Tagline | Tagline appropriates cadence of BPI Mark | Tagline and Be Better Be Stronger mark are sufficiently distinct when presented with house marks | No substantial likelihood of confusion; factors weigh against. |
Key Cases Cited
- TracFone Wireless, Inc. v. Clear Choice Connections, Inc., 102 F. Supp. 3d 1321 (S.D. Fla. 2015) (likelihood of confusion requires priority and likely confusion)
- Crystal Entertainment, Inc. v. Jurado, 643 F.3d 1313 (11th Cir. 2011) (common-law rights require actual public use in commerce for ownership)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) (use in commerce; totality of circumstances; public notice matters)
- Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (strength of mark; the stronger the mark, the greater protection)
- North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (discusses meta-tags vs. likelihood of confusion; source confusion baseline)