USA Nutraceuticals Group, Inc. v. BPI Sports, LLC
165 F.Supp.3d 1256, 2016 U.S. Dist. LEXIS 21132, 2016 WL 695596 (2016)
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Rule of Law:
The purchase of a competitor's trademark as an internet advertising keyword does not constitute trademark infringement if the resulting advertisement clearly identifies its source and is unlikely to cause consumer confusion as to affiliation or sponsorship. In the Eleventh Circuit, the doctrine of "initial interest confusion" has not been adopted as an independent basis for a trademark infringement claim.
Facts:
- BPI Sports, LLC (BPI) and USA Nutraceuticals Group, Inc. (Beast) are direct competitors in the sports nutrition supplement market.
- BPI owns the registered trademark for "BPI" and, since April 7, 2015, has used the unregistered slogan "Be Better. Be Stronger. BPI."
- Beast purchased advertising keywords on Amazon.com, including BPI's registered trademarks "BPI" and "BPI Sports," as well as BPI product names.
- When an Amazon user searched for these BPI-related terms, a banner advertisement for Beast's products appeared at the top of the search results page.
- The banner ad clearly identified the sponsor as "Beast Sports Nutrition" and contained Beast's house "B" logo, but did not contain any of BPI's marks.
- In September 2015, Beast began using a new tagline in its marketing: a stylized "B" followed by the words "Original," "Genuine," and "More."
- Both BPI and Beast sell and market their products through similar channels, including online at Amazon.com and in brick-and-mortar stores like GNC.
Procedural Posture:
- USA Nutraceuticals Group, Inc. (Beast) filed a complaint against BPI Sports, LLC (BPI) in the U.S. District Court for the Southern District of Florida for trade dress infringement and false advertising.
- BPI filed an Answer and subsequently amended it to include five counterclaims against Beast, alleging trademark infringement and unfair competition.
- BPI then filed a Motion for a Preliminary Injunction seeking to enjoin Beast from using its marks as advertising keywords on Amazon and from using the "B Original" tagline.
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Issue:
Has BPI established a substantial likelihood of success on the merits of its trademark infringement claims, based on Beast's purchase of BPI-related advertising keywords and use of a similar tagline, to warrant a preliminary injunction?
Opinions:
Majority - Judge Beth Bloom
No, BPI has not established a substantial likelihood of success on the merits for its trademark infringement claims. The court found that Beast's conduct is unlikely to cause the consumer confusion necessary to sustain an infringement claim. Regarding the keyword advertising, the court noted that the Eleventh Circuit has not adopted the "initial interest confusion" doctrine. Even if it were a viable legal theory, there is no confusion here because Beast's banner advertisements clearly identify "Beast Sports Nutrition" as the sponsor, preventing any reasonable consumer from being confused about the source or affiliation of the products. Regarding the tagline, the court applied the seven-factor likelihood of confusion test and found the factors, on balance, weighed against finding infringement. Although the products and trade channels are similar, BPI's mark is only a moderately strong suggestive mark, there is no evidence of actual confusion, and the marks' overall impressions are dissimilar, particularly because each tagline is always used in conjunction with the company's distinct house mark (BPI's name vs. Beast's stylized 'B'), which serves to distinguish the source of the goods.
Analysis:
This case illustrates the judiciary's caution in extending trademark law to common and accepted internet advertising practices. It highlights the Eleventh Circuit's reluctance to adopt the "initial interest confusion" doctrine, which is recognized in other circuits. The decision reinforces the principle that the core of a trademark claim is actual consumer confusion about source, and that clearly labeled competitive advertising, even when triggered by a competitor's trademark, does not automatically meet this standard. The opinion also provides a practical application of the multi-factor confusion test, showing how the prominent use of a house mark can significantly mitigate the risk of confusion between otherwise similar taglines or branding elements.
