Antitrust Law Daily Wrap Up, ADVERTISING—S.D. Fla.: Supplement maker’s use of rival’s mark in advertising not likely to confuse, (Feb 23, 2016)

By Thomas Long, J.D.

Sports nutrition supplement makers were not entitled to a preliminary injunction, barring competitors from using the mark “BPI” or the tagline “B Original B Genuine B More” on product labels or in any advertising or marketing, including keyword or banner advertising on Amazon, the federal district court in Fort Lauderdale has decided. The complaining supplement makers failed to establish a likelihood of initial interest confusion resulting from the defendants’ keyword advertising activities or that the defendants’ tagline was confusingly similar to the plaintiffs’ mark “Be Better. Be Stronger. BPI.” (USA Nutraceuticals, Inc. v. BPI Sports, LLC, February 22, 2016, Bloom, B.).

Keyword advertising—initial interest confusion. Plaintiffs BPI Sports, LLC, and BPI Sports Holdings, LLC (collectively, “BPI”) and defendants USA Nutraceuticals Group, Inc., and Ultra-Lab Nutrition, Inc. d/b/a Beast Sports (collectively, “Beast”) sold their competing supplement products online, including through web retailer Amazon, as well as through brick and mortar locations, such as GNC. BPI alleged that Beast had used the “BPI” mark to advertise Beast Products on Amazon by purchasing the mark as an advertising keyword, so that Amazon users conducting a search on “BPI” were shown a banner ad linking to an Amazon page listing Beast’s products. Beast also allegedly purchased keywords consisting of other registered marks owned by BPI. BPI contended that Beast intentionally used the BPI mark to mislead and confuse potential BPI customers as to the origin of Beast’s products, as well as to the relationship between BPI and Beast.

According to BPI, Beast’s keyword advertising was likely to result in “initial interest” confusion, which occurs when a customer is lured to a product by the similarity of the defendant’s mark to the plaintiff’s mark, even if the customer realizes the true source of the goods before the sale is consummated. BPI pointed to no case indicating that the simple purchase of advertising keywords, without more, may constitute initial interest confusion, the court said. In the court’s view, the use of a keyword encompassing a competitor’s terms did not necessarily produce an infringing advertisement; it was the content of the ad and the manner in which the mark was used that created initial interest confusion.

Beast’s banner ads were uniform, each containing Beast’s house “B” logo, the phrase “Click to Save on Fitness Supplements,” and a clear identification of the ad’s sponsor, “Beast Sports Nutrition.” Additionally, the ad’s link allowing consumers to “shop now” and a distinct line in the display between Beast’s ad and the consumer’s Amazon search results alerted the consumer viewing the page to the fact that the banner image was an ad for products separate from those listed in the organic search results. Therefore, the court concluded, Beast’s ads would not confuse consumers into believing that the proponent of the ad was affiliated with the general search results displayed on the web page. Because BPI failed to establish a likelihood of confusion—and therefore a likelihood of success as to its infringement claim—it was denied a preliminary injunction with respect to Beast’s keyword advertising practices regarding the “BPI” mark.

Tagline—traditional likelihood of confusion. The court also held that more traditional confusion was not likely to result from Beast’s tagline, “B Original B Genuine B More.” Although BPI’s “Be Better Be Stronger” mark was inherently distinctive, it was suggestive of the intended results of consuming BPI’s supplements—that is, to be “better” and “stronger.” Therefore, the mark was not particularly strong, which weighed against a likelihood of confusion. Moreover, the parties’ respective marks were dissimilar, particularly because each incorporated the party’s house mark. Both the “Be Better Be Stronger” mark and the “B Original” tagline appeared exclusively alongside Beast and BPI’s respective house marks. Despite the fact that there were some similarities, the house marks incorporated therein distinguished each mark from the other and clearly designated the source of each good bearing the respective marks.

Other likelihood of confusion factors were either neutral or did not weigh heavily in the analysis. While Beast and BPI utilized similar trade channels and advertising methods, there was no evidence of actual confusion and no evidence that Beast adopted its tagline to capitalize on BPI’s reputation. Therefore, BPI was denied preliminary injunctive relief.

The case is No. 9:15-cv-80352-BB.

Attorneys: Ryan M. Kaiser (Amin Talati & Upadhye, LLC) for USA Nutraceuticals Group, Inc. and Ultra-Lab Nutrition, Inc. d/b/a Beast Sports. John C. Carey (Carey Rodriguez O'Keefe Milian Gonya, LLP) and Lynette Ebeoglu McGuinness (Krinzman, Huss & Lubetsky, LLP) for BPI Sports, LLC and BPI Sports Holdings, LLC.

Companies: USA Nutraceuticals Group, Inc.; Ultra-Lab Nutrition, Inc. d/b/a Beast Sports; BPI Sports, LLC; BPI Sports Holdings, LLC

Cases: Advertising FloridaNews