CytoSport, Inc. v. Vital Pharmaceuticals, Inc.

Filing 223

ORDER signed by Judge John A. Mendez on 9/6/2012 GRANTING CytoSport's 193 Motion for Summary Judgment on VPX's Counter-Claims; DENYING CytoSport's 195 Motion for Summary Judgment on Claims 5 through 8; GRANTING CytoSport's 194 Motion to Exclude the Testimony of Gabriel Gelb; DENYING CytoSport's 196 Motion to Exclude the Testimony of Robert Klein; DENYING VPX's 203 Motion for Emergency Stay. (Michel, G)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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CYTOSPORT, INC., a California
corporation,
Plaintiff,

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v.
VITAL PHARMACEUTICALS, INC. a
Florida corporation,
Defendant.

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Case No. 2:08-CV-02632-JAM-GGH
ORDER DENYING PLAINTIFF’S
MOTION FOR SUMMARY JUDGMENT ON
ITS CLAIMS, GRANTING
PLAINTIFF’S MOTION FOR SUMMARY
JUDGMENT ON DEFENDANT’S
COUNTER-CLAIMS, AND DENYING
DEFENDANT’S MOTION FOR
EMERGENCY STAY

This matter is before the Court on two motions for summary

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judgment filed by Plaintiff CytoSport, Inc. (“CytoSport”) against

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Defendant Vital Pharmaceuticals, Inc. (“VPX”).

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for judgment on counter-claims raised by VPX in its Amended Answer,

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Affirmative Defenses, and Counterclaim (Doc. # 115-1).

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the motion (Doc. # 199).

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CytoSport’s fifth through eighth causes of action in its Third

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Amended Complaint (“TAC”) (Doc. # 195).

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motion (Doc. # 201).

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stay of these proceedings pending final agency action by the Food

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and Drug Administration (“FDA”) (Doc. # 203), which CytoSport

The first motion is

VPX opposes

The second motion is for judgment on

VPX also opposes this

VPX also filed a motion seeking an emergency

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opposes (Doc. # 207).

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I.

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BACKGROUND

This case originated in 2008 when VPX released a product

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called Muscle Power, a ready-to-drink protein shake. CytoSport

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already marketed a competing product, Muscle Milk.

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used the same base packaging and similar graphics including layout

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and font in the label design for its product.

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claiming that the Muscle Power product infringed on its trademark

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and trade dress for Muscle Milk.

Muscle Power

CytoSport sued VPX

CytoSport also claims that VPX

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created comparative advertisements that constitute false

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advertising.1

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Muscle Power and Muscle Milk are both marketed in octagonal

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tetra-packs, one of the few available FDA approved packages

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available for ready to drink protein drinks.

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from $3-$5 in the same retail establishments, and are targeted

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toward people with active lifestyles like athletes and

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bodybuilders.

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The drinks retail

During the short time that Muscle Milk and Muscle Power were

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both on the market and in direct competition, VPX ran ads that are

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relevant to the parties’ claims.

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that depicted a woman nursing a child with the caption, “MILK IS

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FOR BABIES, MUSCLE POWER IS FOR MEN!” prominently displayed across

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the ad.

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less sugar and 183% less fat than Muscle Milk.

First, Muscle Power ran an ad

VPX also ran ads that claimed Muscle Power contained 600%

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A more comprehensive discussion of the factual background in this
case is available in the Order Granting CytoSport’s Motion for
Preliminary Injunction (Doc. # 72). To avoid duplication, the
factual summary in this order is brief.

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This case was previously assigned to Judge Damrell who issued

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a preliminary injunction in CytoSport’s favor on May 6, 2009 (Doc.

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# 72), finding that CytoSport was likely to prevail on the merits

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of its infringement claims.

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from the market and introduced a new product that did not resemble

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Muscle Milk.

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VPX subsequently withdrew Muscle Power

The parties submitted expert reports and testimony to support

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their respective positions.

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Robert Klein that shows, under the circumstances of his survey,

VPX submitted a survey conducted by

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that 4.1% of consumer respondents mistake Muscle Power for Muscle

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Milk or as a product produced by CytoSport.

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survey conducted by Hal Poret that shows, under the circumstances

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of his survey, that 25.4% of consumer respondents conflate Muscle

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Power and CytoSport products.

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consisting of CytoSport employee declarations that CytoSport

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customers were confused as to the source of the Muscle Milk

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product.

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CytoSport submitted a

There is also evidence in the record

On December 7, 2009, VPX filed counter-claims against

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CytoSport (Doc. 115).

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on Muscle Milk, a product that contains no liquid dairy milk, is

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deceptive.

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shows a mistaken belief amongst consumers, under the conditions of

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that survey, as to whether or not Muscle Milk contains milk.

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also relies heavily on an FDA warning letter dated June 29, 2011

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wherein the FDA preliminarily determined that the mark “Muscle

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Milk” as used by CytoSport is deceptive because CytoSport’s product

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contains no milk.

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was submitted by VPX in a Request for Judicial Notice (Doc. # 199-

VPX claims that the use of the word “milk”

VPX submitted a survey conducted by Gabriel Gelb that

VPX

This warning letter, along with other documents,

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2).

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its defense on CytoSport’s claims because VPX seeks to invalidate

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CytoSport’s mark, thereby making it unenforceable.

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of this order, the FDA has not followed up on its 2011 warning

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letter with a final determination about CytoSport’s compliance with

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applicable FDA regulations.

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The theory underlying VPX’s counter-claim is also central to

As of the date

CystoSport seeks entry of judgment on five claims in its

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complaint: Claim Five, Trademark Infringement, Violation of 15

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U.S.C. § 1114(a); Claim Six, Trademark Infringement, Violation of

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Cal. Bus. & Prof. Code § 14245; Claim Seven, False Advertising,

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Violation of 15 U.S.C. § 1125(a) and Cal. Bus. & Prof. Code §§

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17200, 17500; and Claim Eight, Cancellation of U.S. Trademark Reg.

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Nos. 3,551,076 and 3,547,541 Pursuant to 15 U.S.C. § 1119.

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CytoSport does not move for judgment on its first through fourth

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claims.

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CytoSport also seeks entry of judgment in its favor on the

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five counter-claims raised by VPX in its Answer to the TAC: 1)

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False Advertising, Violation of 15 U.S.C. § 1125(a); 2) False

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Advertising, Violation of Cal. Bus. & Prof. Code § 17500; 3)

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Unlawful Trade Practice, Violation of Cal. Bus. & Prof. Code §

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17200; 4) Cancellation of Trademark Registrations Pursuant to 15

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U.S.C. § 1119 for Violation of 15 U.S.C. § 1052(a); and 5)

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Declaratory Judgment Pursuant to 28 U.S.C. § 2201.

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A hearing on these matters was held on August 8, 2012.

At

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that hearing, the Court ordered additional briefing on two issues:

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1) the effect of a recent Ninth Circuit decision, Pom Wonderful LLC

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v. Coca-Cola Co., 679 F.3d 1170, 1176 (9th Cir. 2012), on VPX’s FDA

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warning letter based counter claims, and 2) the potential impact of
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a final FDA decision determining that CytoSport’s use of the Muscle

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Milk mark on a product that contains no milk is deceptive.

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Court also granted CytoSport’s motion to exclude the Gelb survey

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and denied the motion to exclude the Klein survey for the reasons

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discussed below in this order.

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The

In sum, the following motions have been presented to the Court

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for decision and are discussed below: 1) CytoSport’s Motion for

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Summary Judgment on Claims Five, Six, Seven and Eight; 2)

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CytoSport’s Motion for Summary Judgment on VPX’s Counter-Claims; 3)

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CytoSport’s Motions to Exclude the Expert Testimony of Gelb and

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Klein; 4) VPX’s Request for Judicial Notice; and 5) VPX’s Emergency

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Motion to Stay.

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II.

OPINION

A. Evidentiary Motions
CytoSport filed two motions to exclude VPX’s expert witnesses.

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The first motion is to exclude the testimony of Robert L. Klein

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(Doc. # 196) who conducted a survey about customer confusion

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between the Muscle Power and Muscle Milk marks.

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exclude the testimony of Gabriel M. Gelb (Doc. # 194) who conducted

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a survey about consumer confusion created by the use of the Muscle

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Milk mark on a product that contains no milk.

The second is to

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Under Federal Rule of Evidence 702, the district court is the

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“gatekeeper” in order to “ensur[e] that an expert’s testimony both

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rests on a reliable foundation and is relevant to the task at

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hand.”

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(1993).

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“relevant,” or not conducted according to accepted principles.

Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597
A district court must exclude evidence that is either not

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Wendt v. Host Int'l, Inc., 125 F.3d 806, 814 (9th Cir. 1997)

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(citing E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280,

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1292 (9th Cir. 1992)).

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admitted in trademark cases so long as they are conducted according

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to accepted principles.

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unreliability goes to the weight accorded a survey, not its

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admissibility.”

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of Cal., 694 F.2d 1150, 1156 (9th Cir. 1982).

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In the Ninth Circuit, surveys are to be

Gallo, 967 F.2d at 1292.

“Technical

Prudential Ins. Co. of Am. v. Gibraltar Fin. Corp.

Under Federal Rule of Evidence 403, relevant and

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otherwise admissible evidence may be excluded when the danger of

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unfair prejudice substantially outweighs its probative value.

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1. Gelb Survey
At the August 8, 2012 hearing, the Court granted CytoSport’s

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motion to exclude evidence of a survey conducted by Gabriel Gelb

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which was done to test confusion created by the Muscle Milk mark,

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i.e., the use of Muscle Milk on a product that contains no milk

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causes consumers to mistakenly believe that the product contains

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milk. The basis for the Court’s decision is as follows.

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The Gelb survey was a series of three questions where

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respondents were presented three brand names without accompanying

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trade dress or images of the products: Muscle Milk, ProMan-X, and

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Lean Body.

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some, or no protein, creatine, and milk.

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“I don’t know” option or another means to indicate lack of

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knowledge.

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is a herbal male enhancement supplement.

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indicate that a high level of guessing occurred.

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ProMan-X, 98% said it contains protein, 92% creatine, and 68% milk.

They were then asked if each product contained a lot,
Consumers did not have an

Lean Body and Muscle Milk are protein drinks, ProMan-X

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The respondent’s answers
For instance, for

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ProMan-X does not contain any of these ingredients.

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Milk, 80% responded that it contained milk.

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deposition that respondents were guessing.

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For Muscle

Gelb admitted in his
Gelb Dep. 221:14-18.

CytoSport cites two cases to support its contention that the

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Gelb survey was not conducted according to accepted principles.

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Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292

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F. Supp. 2d 594, 603 (D.N.J. 2003) (discrediting a survey that does

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not control for respondents’ preexisting beliefs); Procter & Gamble

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Co. v. Ultreo, Inc., 574 F. Supp. 2d 339, 351 (S.D.N.Y. 2008)

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(same).

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the survey, but cites no authority that shows that the methods used

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by Gelb are generally acceptable.

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the admissibility of its survey, Keith v. Volpe, 858 F.2d 467, 480

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(9th Cir. 1988), and it has not met its burden.

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Gelb survey is excluded.

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VPX responds with general arguments about the adequacy of

VPX bears the burden of showing

Accordingly, the

2. Klein Survey

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CytoSport’s motion to exclude a survey conducted by VPX’s

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expert, Robert Klein was denied by the Court at the August 8, 2012

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hearing for the following reasons.

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The Klein survey was conducted under the guidelines

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established by Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366

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(7th Cir. 1976) (superseded on other grounds).

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respondents to examine a container of Muscle Power and determine

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who made the product.

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to show consumer confusion, indicated that CytoSport or Muscle Milk

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made the product.

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replicate market conditions, failed to determine whether or not

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respondents were aware of CytoSport or Muscle Milk before asking

Klein asked

4.1% of respondents, a number that tends not

CytoSport argues that Klein’s survey failed to

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them questions, and failed to distinguish respondents who believed

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that the Muscle Power product was actually Muscle Milk.

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All of CytoSport’s arguments go to the technical reliability

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of Klein’s survey.

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Ever-Ready surveys are to be accorded diminished weight under

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similar circumstances, but that is not an issue related to the

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initial admissibility of the survey.

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by the Gallo decision, and CytoSport only cites district court

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cases from other circuits to support excluding the survey.

CytoSport does cite case law that finds that

Further, the Court is bound

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CytoSport does not dispute that the Ever-Ready format is a proper

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format under some circumstances, and the survey should be admitted

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because it is relevant to the task at hand and was conducted

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according to accepted principles.

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CytoSport’s technical reliability arguments are meritorious, but

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they go to the issue of weight rather than admissibility.

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Gallo, 967 F.2d at 1292.

CytoSport’s argument under Rule 403 also fails because the

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danger of unfair prejudice does not substantially outweigh the

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probative value of the survey.

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the technical reliability of the survey are persuasive, there is

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little danger of unfair prejudice because CytoSport can attack the

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survey at trial and convince the jury that the survey is to be

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accorded little weight.

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While CytoSport’s arguments about

3. VPX’s Request for Judicial Notice
The Court also considered and granted, in part, VPX’s Request

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for Judicial Notice at the August 8, 2012 hearing.

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consist of preliminary findings of governmental entities, previous

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filings of the parties, and a document from the National

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Advertising Division.
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The documents

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Generally, the Court may not consider material beyond the

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pleadings in ruling on a motion to dismiss for failure to state a

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claim.

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the complaint so long as authenticity is not disputed, or matters

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of public record, provided that they are not subject to reasonable

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dispute.

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(C.D. Cal. Mar. 30, 2009) (citing Lee v. City of Los Angeles, 250

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F.3d 668, 688 (9th Cir. 2001) and Fed. R. Evid. 201).

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The exceptions are material attached to, or relied on by,

E.g., Sherman v. Stryker Corp., 2009 WL 2241664 at *2

The documents submitted from governmental entities are subject

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to judicial notice for the fact that they exist.

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that the governmental entities issued the documents, nor could

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they.

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however, are subject to dispute and the Court does not take

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judicial notice of the contents of the materials.

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for the other documents submitted.

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the documents exist, but not attribute any weight to their contents

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so long as they are disputed by either party.

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therefore granted in part and denied in part.

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No party disputes

The legal conclusions and other findings in the documents,

The same goes

The Court may take notice that

VPX’s motion is

B. Legal Standard for Summary Judgment
Summary judgment is proper “if the pleadings, depositions,

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answers to interrogatories, and admissions on file, together with

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affidavits, if any, show that there is no genuine issue of material

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fact and that the moving party is entitled to judgment as a matter

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of law.”

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“is to isolate and dispose of factually unsupported claims or

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defenses.”

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Fed. R. Civ. P. 56(c).

The purpose of summary judgment

Celotex v. Catrett, 477 U.S. 317, 323-324 (1986).

The moving party bears the initial burden of demonstrating the
absence of a genuine issue of material fact for trial.
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Anderson v.

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Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986).

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party meets its burden, the burden of production then shifts so

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that “the non-moving party must set forth, by affidavit or as

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otherwise provided in Rule 56, ‘specific facts showing that there

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is a genuine issue for trial.’”

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Pacific Electric Contractors Ass’n, 809 F.2d 626, 630 (9th Cir.

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1987) (quoting Fed. R. Civ. P. 56(e)).

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facts and draw inferences in the manner most favorable to the non-

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moving party.

If the moving

T.W. Electrical Services, Inc. v.

The Court must view the

United States v. Diebold, Inc., 369 U.S. 654, 655

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(1962).

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issue of material fact exists will not preclude the grant of

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summary judgment”.

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Cir. 1987).

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“[M]ere disagreement or bald assertion that a genuine

Harper v. Wallingford, 877 F. 2d 728, 731 (9th

The mere existence of a scintilla of evidence in support of

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the non-moving party’s position is insufficient: “There must be

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evidence on which the jury could reasonably find for [the non-

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moving party].”

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applies to either a defendant’s or plaintiff’s motion for summary

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judgment the same standard as for a motion for directed verdict,

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which is “whether the evidence presents a sufficient disagreement

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to require submission to a jury or whether it is so one-sided that

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one party must prevail as a matter of law.”

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Anderson, 477 U.S. at 252.

This Court thus

Id.

Federal Rule of Civil Procedure 56(d) permits a court, upon a

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sufficient showing of specific reasons why a nonmovant cannot

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present facts essential to its opposition, to defer consideration

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of or deny a pending motion for summary judgment.

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C. VPX’s Counter-claims
1. Claims Barred By Deference to the FDA
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VPX’s first and fourth counter-claims are for alleged

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violations of the Lanham Act by CytoSport.

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CytoSport’s use of the term “Milk” to refer to a product that

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contains no milk, as defined by FDA regulations, is deceptive.

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therefore contends that CytoSport’s trademark “Muscle Milk” is

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invalid because it violates 15 U.S.C. § 1125(a)’s proscription of

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deceptive marks and should therefore be cancelled.

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primarily to the warning letter sent from the FDA to CytoSport

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describing the FDA’s position that CytoSport’s use of “Muscle Milk”

VPX claims that

VPX

VPX points

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violates 21 U.S.C. § 343(a)(1) because it is false or misleading,

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and asks the Court to accept the FDA’s analysis.

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VPX RJN Ex. 1.

Preliminary, the Court must consider whether or not VPX’s

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Lanham Act claims are barred.

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Act (“FDCA”), 21 U.S.C. § 301 et seq., the FDA regulates and

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enforces food labeling requirements.

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regulates the definition of certain foods, including milk.

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§ 131.110.

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does not act to enforce its regulations, the Lanham Act may not be

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used by a private party to “usurp, preempt, or undermine FDA

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authority.”

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1176 (9th Cir. 2012).

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by FDA authority is dependent on the facts of a particular case.

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Id.

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Under the Food, Drug, and Cosmetics

21 U.S.C. § 343.

The FDA
21 CFR

When the FDA extensively regulates a certain area and

Pom Wonderful LLC v. Coca-Cola Co., 679 F.3d 1170,
Whether or not a Lanham Act claim is barred

In Pom, Pom sought to challenge Coca-Cola’s use of the term

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“Pomegranate Blueberry Flavored Blend of 5 Juices” under the Lanham

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act contending that the name misled consumers.

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argued that since the Coke product only contained .3% pomegranate

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juice and .2% blueberry juice, it was misleading for the product to
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Id. at 1172-73. Pom

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prominently display pomegranate and blueberry on its label when it

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primarily consisted of other cheaper juices.

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that the Lanham Act claim was barred because the labeling did not

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obviously violate FDA regulations.

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did not hold that the label conformed to FDA regulations or that it

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was not misleading, but instead deferred to the FDA’s ability to

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act against Coca-Cola if and when it determined that the Coke label

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violated FDA regulations.

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The Pom court held

Id. at 1178.

The Pom court

Id.

This case is nearly indistinguishable from the situation

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presented in Pom.

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“milk” on food labels.

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and has not acted.

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the term “Muscle Milk” is misleading to consumers, despite the

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“Contains No Milk” disclaimer on the label, it will act to enforce

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the labeling requirement.

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letter to CytoSport concerning its labeling does not require a

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different finding.

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and do not amount to an FDA action.

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Line Med. Instruments Co., 922 F. Supp. 299, 306 (C.D. Cal. 1996)

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(holding that FDA warning letters do not amount to an FDA position

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on a matter because the FDA can change its final determination

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based on further investigation).

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Here, the FDA regulates the use of the term
The FDA is aware of CytoSport’s labeling

If the FDA determines that CytoSport’s use of

The fact that the FDA sent a warning

FDA warning letters are informal and advisory,
Summit Tech., Inc. v. High-

VPX’s first and fourth counter-claims require a finding that

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CytoSport’s Muscle Milk label is deceptive or misleading under the

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FDCA and the associated regulations.

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claims are barred by the holding in Pom as the FDA is the entity

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that must make that determination in the first instance.

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F.3d at 1178 (“[W]e must keep in mind that we lack the FDA’s
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The Court finds that the

Pom, 679

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expertise in guarding against deception in the context of . . .

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beverage labeling.”).

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granting judgment until the FDA issues a final decision on

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CytoSport’s use of “Muscle Milk,” but the FDA’s eventual decision

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may support CytoSport, VPX, or fall somewhere in the middle.

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Deferring consideration of the present motion based on what the FDA

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may or may not do is inappropriate for two reasons.

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discussed below CytoSport is entitled to judgment on the merits of

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VPX’s counter-claims for other reasons.

VPX argues that the Court should defer

First, as

Second, the Pom holding is

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clear that the claims are barred until the FDA issues its decision,

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not that they are stayed or deferred.

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entitled to judgment as a matter of law on VPX’s first and fourth

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counter-claims.

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CytoSport is accordingly

VPX also brings two state law claims which reference the FDA

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regulations to show that CytoSport’s use of the term “Milk” is

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inconsistent with FDA regulations.

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the ruling in Pom because the FDA specifically permits states to

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create labeling requirements that are identical to the FDA’s and

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establish independent causes of actions for those claims.

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v. Cytosport, Inc., No. C 11–3532 CW, 2012 WL 2563857, 7, Slip Copy

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(N.D. Cal. June 28, 2012) (citing 21 U.S.C. § 343–1).

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These claims are not barred by

Delacruz

2. Statute of Limitations
CytoSport argues that VPX’s state law claims for False

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Advertising and Unfair Competition are barred by their statutes of

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limitations.

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UCL claims under the UCL, which has a four year statute of

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limitations.

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Balance, Inc., 733 F. Supp. 2d 1117, 1130 (C.D. Cal. 2010).

VPX brings both its False Advertising Law (“FAL”) and

Cal. Bus. & Prof. Code § 17208; Yumul v. Smart

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To

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have standing to sue under the UCL, “a plaintiff must . . . have

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suffered injury and lost money or property.”

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eMachines, Inc., 402 F. Supp. 2d 1133, 1136 (C.D. Cal. 2005).

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Anunziato v.

In this case, VPX did not have standing to pursue its FAL and

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UCL claims against CytoSport until it suffered an injury.

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VPX did introduce its competing Muscle Power product, its cause of

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action only accrued at that time because it could not previously

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show that it suffered an injury and lost money or property due to

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CytoSport’s practices.

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Since

VPX’s 2009 FAL and UCL counter-claims were

therefore filed well within the four year statute of limitations.2

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3. CytoSport’s Arguments Regarding the Remaining State Law

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Claims

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CytoSport also argues that it is entitled to summary judgment

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on all of VPX’s counter-claims, including the remaining FAL and UCL

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state law claims, because VPX failed to produce sufficient evidence

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to support its claims.

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letter discussed above as well as preliminary actions taken by

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other federal agencies, non-governmental organizations, and

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Canadian intellectual property authorities.

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VPX responds by citing the FDA warning

In order to survive summary judgment on a Lanham Act false

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CytoSport raises a similar argument based on laches with respect
to VPX’s federal claims, arguing that they too are time barred.
Although these claims are barred by the Pom holding, they are not
barred by laches for the same reasons that VPX’s state law counterclaims were filed within the statute of limitations. See Barrus v.
Sylvania, 55 F.3d 468, 470 (9th Cir. 1995) (citing Halicki v.
United Artists Communications, Inc., 812 F.2d 1213, 1214 (9th
Cir.1987)) (holding that a party has standing under the Lanham act
when it suffers a “commercial injury based upon a misrepresentation
about a product, and also that the injury was ‘competitive,’ i.e.,
harmful to the plaintiff's ability to compete with the
defendant.”).

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advertising claim, a claimant must show:
(1) Defendants made a false or misleading statement of
fact in commercial advertising or promotion about
their own or another's goods or services;
(2) that the statement actually deceives or is likely
to deceive a substantial segment of the intended
audience;
(3) that the deception is material in that it is
likely to influence purchasing decisions;
(4) that Defendant caused the statement to enter
interstate commerce; and
(5) that the statement results in actual or probable
injury to Plaintiff.

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24
25
26
27
28

Brosnan v. Tradeline Solutions, Inc., 681 F. Supp. 2d 1094, 1099
(N.D. Cal. 2010).

“In the Ninth Circuit, claims of unfair

competition and false advertising under [the FAL and UCL] are
substantially congruent to claims made under the Lanham Act[,]” and
the analyses of VPX’s federal and state law claims are consolidated
for the purposes of this order.

Walker & Zanger, Inc. v. Paragon

Indus., Inc., 549 F. Supp. 2d 1168, 1182 (N.D. Cal. 2007) (internal
quotations omitted).
a. False or Misleading Statement of Fact
In order to survive summary judgment, VPX must produce
evidence that CytoSport’s use of the Muscle Milk mark was either
literally false or actually misled a substantial segment of the
intended audience.

William H. Morris Co. v. Group W, Inc., 66 F.3d

255, 258 (9th Cir. 1995).

In order to show that a statement is

literally false, it must be unambiguously false.

Novartis Consumer

Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290
F.3d 578, 586–87 (3d Cir. 2002).
Here, VPX contends that the following evidence shows that
CytoSport’s use of the mark “Muscle Milk” is false:
15

1

1.

The FDA Warning Letter;

2

2.

CytoSport’s decision to add the disclaimer “Contains No

3
4
5
6
7

Milk” to its Muscle Milk labels;
3.

The US Patent and Trademark Offices’s Initial Rejection

of CytoSport’s attempt to register the mark “MUSCLE MILK ACTIVE;”
4.

CytoSport’s registration of “MUSCLE MILK CONTAINS NO

MILK;”

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

5.

The National Advertising Division’s (“NAD”) decision to

refer CytoSport to the FDA and FTC after CytoSport failed to
participate in proceedings with Nestle USA related to the accuracy
of the “MUSCLE MILK” mark; and
6.

A challenge to CytoSport’s mark in Canada.

First, as discussed above, the FDA warning letter is not a
final decision by the FDA and its position may change after further
investigation.

Thus, there is no evidence in the record that the

FDA has determined or will determine that CytoSport’s mark is
deceptive.

Likewise, the material submitted by VPX from the USPTO

is a preliminary review of CytoSport’s application for “MUSCLE MILK
ACTIVE” wherein the USPTO requests more information, but does not
come to any conclusion concerning the use the term “MILK.”

The

NAD’s decision to refer CytoSport to the FTC and FDA does not
constitute a decision by either agency that CytoSport’s product is
deceptively mislabeled.

Canada’s pending decision on CytoSport’s

mark in Canada is also a pending decision and does not constitute
evidence that the mark is deceptive.
VPX next argues that CytoSport’s decision to add a disclaimer,
“Contains No Milk” to the front of it its Muscle Milk labels
16

1

constitutes an admission that its previous label, which did not

2

display the disclaimer, was deceptive.

3

authority to support this conclusion, however, and one of the cases

4

it does cite indicates that a disclaimer may be sufficient to cure

5

a misleading label.

6

VPX does not cite any

Novartis, 290 F.3d at 599.

In any event, none of the proffered evidence shows that the

7

use of the term “Muscle Milk” along with the other content on the

8

label, including the accurate ingredient list, is unambiguously

9

false.

In the alternative, VPX attempts to rely on evidence that a

10

substantial segment of the intended audience was deceived by

11

CytoSport.

12

based on consumer surveys to support their contentions/positions.

13

Since the Court excluded VPX’s expert report, the Gelb Survey,

14

CytoSport’s expert report by Kent D. Van Liere (Doc. # 193-7), Ex.

15

A, is uncontradicted.

16

consumers were no more confused by the Muscle Milk label then by a

17

generic control bottle label.

18

evidence to support its position, and no material dispute exists

19

with regard to this element.

On this point, both parties produced expert opinions

The Van Liere report tends to show that

Accordingly, VPX is left without

20

b. The Statement Deceived or is Likely to Deceive

21

For the same reasons discussed in the preceding section,

22

CytoSport establishes that no material dispute exists as to this

23

element.

24
25

c. The Deception Was Material
CytoSport argues that there is a complete lack of evidence to

26

support this element.

27

CytoSport’s argument, instead contending that the preliminary

28

injunction issued previously in this case gives VPX standing to

VPX does not respond to the substance of

17

1

bring this claim because it was damaged when Muscle Power was

2

ordered off the market.

3

“In order to withstand a summary judgment motion, there must

4

also be evidence that the injury was ‘competitive’ i.e., that the

5

plaintiff's ability to compete with the defendant was actually

6

harmed.”

7

1094, 1099 (N.D. Cal. 2010) (citing Halicki v. United Artists

8

Communications Inc., 812 F.2d 1213 (9th Cir.1987)).

9

material if it is likely to influence purchasing decisions.

10

Brosnan v. Tradeline Solutions, Inc., 681 F. Supp. 2d

A deception is
Id.

The evidence before the Court, at best, only has a tendency to

11

show that consumers will believe that Muscle Milk contains liquid

12

dairy milk.

13

mark, if it does end up supporting VPX’s position, will only stand

14

for the proposition that the mark causes consumers to believe that

15

Muscle Milk contains milk.

16

mistaken belief actually causes consumers to choose Muscle Milk

17

over a competing product such as VPX’s protein shakes, or that the

18

presence of milk in a protein shake matters to consumers at all.

19

Even if the Gelb study were admissible, that report only speaks to

20

the likelihood of consumer confusion, not that the confusion was

21

material to purchasing decisions.

22

element is fatal to VPX’s counter-claims, accordingly, there is no

23

genuine dispute as to this element, and VPX fails to meet its

24

burden.

25
26
27
28

The pending FDA decision on the use of the Muscle Milk

There is no evidence that such a

The lack of evidence on this

d. CytoSport Caused the Statement to Enter Interstate
Commerce
It is undisputed that CytoSport caused the statement to enter
interstate commerce.
18

1

e. The Statement Resulted in Actual or Probably Injury

2

to VPX

3

For the same reason that the third element is not in genuine

4

dispute, this element is also not genuinely disputed.

5

produced evidence that customers will be induced to purchase

6

CytoSport’s product over its own if they mistakenly believe that

7

Muscle Milk contains liquid dairy milk.

8

VPX has not

f. Summary of VPX’s Counter-claims

9

Because VPX failed to support its counter-claims with

10

admissible evidence, there is no genuine dispute of material fact.

11

CytoSport is entitled to judgment as a matter of law because VPX

12

has not shown that consumers are likely to be confused by

13

CytoSport’s use of the Muscle Milk mark and that, if they are

14

actually confused, that they will be more likely to purchase Muscle

15

Milk as a result.3

16

record in a light favorable to VPX, from which a reasonable jury

17

could find in VPX’s favor.

18

Practice and Cancellation of Trademark are dependent on VPX’s

19

counter-claims for false advertising and a finding that CytoSport’s

20

use of the Muscle Milk mark is deceptive.

21

advertising counter-claims fail, so do VPX’s remaining counter-

22

claims.

23

VPX’s five counter-claims is granted in its entirety.4

There is simply no evidence, viewing the entire

VPX’s counter-claims for Unlawful Trade

Since VPX’s false

Accordingly, CytoSport’s motion for summary judgment on

24
3

25
26
27
28

The analysis applies equally to VPX’s Lanham Act, UCL, and FAL
counter-claims. Thus, CytoSport would be entitled to judgment on
VPX’s Lanham Act Claims even if they were not barred by the Pom
holding.
4
CytoSport is also entitled to judgment on VPX’s fifth counterclaim for Declaratory Judgment. That claim, which is based on the
other counter-claims, fails because there is no genuine dispute as
19

1
2
3

D. CytoSport’s Motion for Summary Judgment on the Third Amended
Complaint
1. CytoSport’s

Infringement and Cancellation Claims

4

CytoSport moves for judgment on its federal and state

5

trademark infringement and cancellation claims (Claims Five, Six

6

and Eight).

7

15 U.S.C. § 1114, CytoSport must establish that: 1) the Muscle Milk

8

mark is valid, 2) CytoSport is the senior mark holder, and 3) VPX’s

9

use of the Muscle Power mark is likely to cause confusion in the

To prevail on a claim of trademark infringement under

10

marketplace.

11

2d 1079, 1087 (C.D. Cal. 2006) (citing Brookfield Commc'ns, Inc. v.

12

W. Coast Entm't Corp., 174 F.3d 1036, 1046 (9th Cir. 1999)).

13

Generally, “trial courts disfavor deciding trademark cases in

14

summary judgments because the ultimate issue is so inherently

15

factual . . . .

16

confusion is routinely submitted for jury determination as a

17

question of fact.”

18

251 F.3d 1252, 1265 (9th Cir. 2001).

19

of VPX’s mark because it infringes on the Muscle Milk mark, meaning

20

that CytoSport is only entitled to judgment on its cancellation

21

claim if it is entitled to judgment on its infringement claims.

22
23
24

Conversive, Inc. v. Conversagent, Inc., 433 F. Supp.

a.

Additionally, the question of likelihood of

Clicks Billiards, Inc. v. Sixshooters, Inc.,
CytoSport seeks cancellation

Validity of Muscle Milk Mark & CytoSport is
Senior Holder

VPX contests the validity of CytoSport’s Muscle Milk mark on

25

the same grounds raised in its counter-claims, raising the validity

26

of the mark as a defense rather than affirmative claim.

27
28

to the materiality of CytoSport’s alleged misrepresentations.
20

1

A valid defense to a claim of infringement is that the mark is

2

invalid.

3

“incontestable” after five years of continuous post-registration

4

use.

5

can be canceled are found in 15 U.S.C. §§ 1064(3) and 1064(5).

6

Further, a party may raise the defenses listed in 15 U.S.C. 1115(b)

7

to an infringement claim.

8

that any mark obtained in violation of 15 U.S.C. 1052 may be

9

cancelled after it becomes incontestable.

10
11

Pursuant to 15 U.S.C. § 1065, a mark becomes

Once a mark is incontestable, the only grounds upon which it

15 U.S.C. § 1064(3) in turn indicates

15 U.S.C. § 1052(a)

prohibits registration of a deceptive mark.
Based on the applicable statutes, VPX may raise the

12

deceptiveness of the Muscle Milk mark as a defense.

13

Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d

14

596, 603 (9th Cir. 2005) (“An incontestable registration is still

15

subject to certain defenses or defects . . . .”).

16

also supported by general principles of equity that limit the

17

enforceability of trademarks that deceptively describe the product

18

being sold.

19

837, 847 (9th Cir. 1987); Clinton E. Worden & Co. v. Cal. Fig Syrup

20

Co., 187 U.S. 516, 539-540 (1903) (holding that a mark for a

21

product “Syrup of Figs” that did not contain figs was unenforceable

22

because it was fraudulent).

23

counter-claims because it lacks sufficient evidence, it may raise

24

its arguments as a defense to CytoSport’s affirmative claims.

25

material dispute therefore exists with regard to this element,

26

making summary judgment inappropriate.

27
28

See KP

This finding is

Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d

b.

Even though VPX cannot maintain its

A

Likelihood of Confusion

CytoSport moves for judgment on this element arguing that the
21

1

legal factors used to evaluate the likelihood of confusion weigh in

2

favor of CytoSport’s position.

3

of the factors, but does argue that material disputes exist with

4

regard to the similarity of the marks, the likelihood of confusion

5

between the marks, and VPX’s intent in selecting its Muscle Power

6

mark.

7

VPX does not address the majority

Courts use eight factors to determine whether or not an

8

allegedly infringing mark is likely to cause consumer confusion in

9

the marketplace:

10

(1)

strength of the allegedly infringed mark;

11

(2)

proximity or relatedness of the goods;

12

(3)

similarity of the sight, sound, and meaning of the marks;

13

(4)

evidence of actual confusion;

14

(5)

degree to which the marketing channels converge;

15

(6)

type of the goods and degree of care consumers are likely

16
17

to exercise in purchasing them;
(7)

18
19

intent of the defendant in selecting the allegedly
infringing mark; and

(8)

20

likelihood that the parties will expand their product
lines.

21

E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th

22

Cir. 1992) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–

23

54 (9th Cir. 1979)).

24

exhausting, is neither exhaustive nor exclusive.

25

factors are intended to guide the court in assessing the basic

26

question of likelihood of confusion.”

27

omitted).

28

“This list of factors, while perhaps
Rather, the

Id. (internal citations

VPX opposes CytoSport’s motion with regard to 1) the
22

1

similarity of the marks; 2) evidence of actual confusion; and 3)

2

the intent of VPX in selecting its Muscle Power mark, and those

3

factors are analyzed below.

4

CytoSport’s arguments with respect to the other five Sleekcraft

5

factors are unopposed and those factors therefore favor granting

6

judgment.

7

i.

8
9

For the purposes of this motion,

Similarity of the Sight, Sound, and Meaning of
the Marks

CytoSport contends that the marks are similar and that this

10

factor weighs in its favor.

11

distinct marks with little similarity.

12

are many products on the market that contain the word “muscle,”

13

particularly within the protein supplement market.

14

on the USPTO’s determination that the registered “Muscle Power”

15

mark is not likely to cause confusion with another mark.

16

VPX responds that the marks are two
VPX points out that there

VPX also relies

“In analyzing the similarity of the marks, the court is to

17

view the marks as a whole, as they appear in the marketplace.”

18

Gallo, 967 F.2d at 1291.

19

In this case, the evidence shows that Muscle Power and Muscle

20

Milk appeared on nearly identical products in the same stores.

21

Muscle Power used the same font that Muscle Milk used, the

22

packaging was identical, and the placement of the marks was also

23

identical.

24

dispositive because it did not have all of the available evidence

25

in front of it, such as how the products were presented in the

26

marketplace.

27

F.2d 794, 801–802 (9th Cir. 1970) (finding that the USPTO

28

determination is inconclusive because it is made at the lowest

Further, the determination by the USPTO was not

Carter-Wallace, Inc. v. Procter & Gamble Co., 434

23

1
2

administrative level and without all of the available evidence).
VPX’s argument, however, is sufficient to raise a genuine

3

dispute.

4

supplement and protein shake milieu contain the word muscle.

5

Further, VPX argues that the marks are dissimilar enough for a

6

reasonable jury to conclude that the marks are not similar because

7

they consist of different secondary words, power and muscle.

8

Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 903 (9th

9

Cir. 2002) (overruled by statute on other grounds) (finding that a

10

reasonable jury could determine that “TREK” and “ObiTrek” are not

11

similar marks).

12

partially on the trade dress of both parties’ products, and

13

CytoSport does not seek judgment on its trade dress claims.

14

trade dress is relevant to this element insofar as trade dress

15

creates the context for comparison, what confusion stems from the

16

similarity of the marks and what confusion stems from trade dress

17

is primarily a question for a jury to answer.

18

factor cannot be resolved through the present motion because it

19

requires the determination of disputed factual issues.

20
21

VPX’s CEO testified that many products in the nutrition

ii.

See

Additionally, CytoSport’s argument rests at least

While

Accordingly, this

Evidence of Actual Confusion

CytoSport submits evidence of actual confusion consisting of

22

declarations made by its employees describing customers who were

23

confused by Muscle Power and Muscle Milk during the short time that

24

the two products were on the market.

25

evidence is inadmissible and should therefore not be considered and

26

that it is insufficient to show actual confusion.

27

relies on its expert’s survey, and VPX responds with the Klein

28

survey.

VPX contends that this

CytoSport also

Finally, CytoSport contends without citation to authority
24

1

that a judicial finding that the marks are similar gives rise to an

2

inference of confusion.

3

VPX’s hearsay objection fails because statements of consumer

4

confusion are admissible under the “state of mind” hearsay

5

exception.

6

2011).

7

jury to be de minimis, thus making summary judgment inappropriate

8

on this issue.

9

Inc. v. Smith, 279 F.3d 1135, 1150 (9th Cir. 2002)).

Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (9th Cir.

Evidence of actual confusion, however, may be found by a

Thane, 305 F.3d at 903 (citing Entrepreneur Media,
Similarly,

10

the two conflicting expert opinions create a material issue of

11

fact.

12

Supp. 2d 815, 836–37 (C.D. Cal. 2010), for the proposition that

13

dueling expert opinions do not necessarily create a triable issue

14

of fact, that case is distinguishable.

15

simple literary works that the trial court analyzed on its own,

16

finding that the expert comparisons were largely superfluous.

17

Here, the experts offer competing surveys which require some

18

technical expertise and familiarity with accepted principles.

19

Accordingly, VPX raises material disputes with regard to this

20

factor, and it weighs against granting judgment.

21
22
23

While CytoSport cites Gable v. Nat'l Broad. Co., 727 F.

iii.

Gable dealt with relatively

Intent of the Defendant in Selecting the
Allegedly Infringing Mark

For this factor, CytoSport cites deposition testimony that

24

VPX’s CEO John H. Owoc compared every Tetra-Pak packaged protein

25

shake before choosing the design used for Muscle Power. Thus,

26

CytoSport argues, Mr. Owoc must have considered Muscle Milk, giving

27

rise to an inference that he considered Muscle Milk and intended to

28

copy its design. VPX, however, points to comparative advertisements
25

1

run by VPX that disparage Muscle Milk and proclaim the superiority

2

of Muscle Power as compared to Muscle Milk.

3

advertisements show intent to distinguish between the products, not

4

pass off its Muscle Power shake as a CytoSport product.

5

VPX argues that these

This factor weighs against granting summary judgment because a

6

reasonable jury could interpret the evidence in either CytoSport’s

7

or VPX’s favor.

8

is contradicted by VPX’s evidence of the comparative advertisements

9

directly contrasting the two products.

CytoSport’s evidence of intentional infringement

Further, Mr. Owoc’s

10

testimony is that he considered the packaging of every protein

11

shake on the market, which does not necessarily lead to an

12

inference that he intended to copy CytoSport’s mark.

13

intended to create a package that was an amalgamation of many

14

competitors’ designs or merely a design that met existing industry

15

expectations.

16

assigned to the evidence, and different reasonable interpretations

17

of that evidence, meaning that a jury must determine if it is met.

18

Based on the foregoing analysis, CytoSport is not entitled to

He may have

This element, therefore, hinges on the weight

19

summary judgment on its infringement or cancellation claims.

20

similarity of the marks, evidence of actual confusion, and the

21

intent of VPX in selecting its Muscle Power mark are crucial

22

factors in the analysis.

23

by VPX with regard to these three factors, it cannot be said that

24

as a matter of law CytoSport is entitled to judgment.

25

is also consistent with the fact-heavy standard applied in

26

trademark infringement cases.

27

Sixshooters, Inc., 251 F.3d 1252, 1265 (9th Cir. 2001).

28

CytoSport’s motion for judgment on claims five, six, and eight is

The

Based on material issues of fact raised

This outcome

Clicks Billiards, Inc. v.

26

1

therefore denied.

2
3

2. CytoSport’s False Advertising Claims (Claim Seven)
CytoSport also seeks summary judgment on its seventh claim for

4

violation of federal and state false advertising law.

5

contends that VPX’s comparative advertisements which claimed that

6

Muscle Power had 600% less sugar and 183% less fat than Muscle Milk

7

were literally false because they described mathematical

8

impossibilities.

9

that VPX’s advertisements conveyed a colloquial message that Muscle

CytoSport

VPX responds that a reasonable jury could find

10

Power contained 1/6th the sugar and 100/183rds the fat of Muscle

11

Milk.

12

understood to mean that Muscle Milk has six times more sugar and

13

183% more fat than Muscle Power.

14

less claims are mathematically nonsensical, they are not literally

15

false or misleading.

16

six times more sugar and 1.83 times more fat than Muscle Power.

17

VPX responds that the 600% and 183% claims are commonly

Further, since the 600% and 183%

The parties agree that Muscle Milk contained

The elements of CytoSport’s false advertising claim are the

18

same as discussed for VPX’s counter-claims.

19

falsity within the meaning of the Lanham Act, a plaintiff may show

20

that the statement was literally false, either on its face or by

21

necessary implication, or that the statement was literally true but

22

likely to mislead or confuse consumers.”

23

Stover Seed Co., 108 F.3d 1134, 1139 (9th Cir. 1997).

24

statement is literally false, a rebuttable presumption is created

25

that consumer deceit and reliance occurred, thereby satisfying the

26

second and third elements of a false advertising claim.

27

Int'l, Inc. v. Jartran, Inc., 793 F.2d 1034, 1041 (9th Cir. 1986).

28
27

“To demonstrate

Southland Sod Farms v.
When a

U-Haul

1

CytoSport’s position faces an internal contradiction in that

2

VPX’s claims must be literally false because they are nonsensical

3

in order for CytoSport to prevail on this claim.

4

no authority that supports its position that nonsensical or

5

impossible claims are “literally false” as a matter of law.

6

reasonable jury could also find that the commonly understood

7

meanings of VPX’s claims accord with the reality of the two

8

products’ contents.

9

of fact on this claim and CytoSport’s motion is denied.

10
11

CytoSport cites

A

Accordingly, VPX has a raised a genuine issue

E. VPX’s Emergency Motion to Stay
The final matter before the Court is VPX’s motion to stay

12

proceedings pursuant to Federal Rule of Civil Procedure 56(d)

13

pending a final FDA ruling on the propriety of CytoSport’s labeling

14

practices.

15

on VPX’s counter-claims because there is no evidence that consumers

16

make purchasing decisions based on the dairy milk content of

17

protein shakes.

18

CytoSport’s motion with respect to VPX’s counter-claims because a

19

pending FDA decision will not impact that necessary element or

20

resuscitate VPX’s claims.

21

As discussed above, CytoSport is entitled to judgment

Thus, the Court declines to stay consideration of

The analysis with respect to CytoSport’s claims and the

22

pending trial is quite different.

23

the validity of the Muscle Milk mark, VPX may be able to raise the

24

alleged deceptiveness of CytoSport’s mark as a defense.

25

remaining question is whether or not a pending FDA decision

26

pursuant to FDA regulations justifies granting a stay pursuant to

27

Rule 56(d).

28

judgment on its claims in either case, making a stay unnecessary

Clearly it does not.

28

As discussed in the section on

The

CytoSport is not entitled to

1

because VPX will not be prejudiced if a stay is denied.

2

final FDA decision will not be particularly helpful to VPX.

3

FDA’s reasoning is already laid out in its initial warning letter,

4

and for purposes of the Lanham Act, a determination under FDA

5

regulations is not dispositive.

6

evidence that the FDA finds CytoSport’s use of the Muscle Milk mark

7

to be deceptive, which is already shown by the warning letter.

8

order to use the alleged invalidity of the Muscle Milk mark as a

9

defense to CytoSport’s claims, VPX must do so under the Lanham act,

10

which it admits requires a different standard than that applied by

11

the FDA.

12

denied.

Further, a
The

At best, a final FDA decision is

In

A stay is therefore unnecessary, and VPX’s motion is

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

III. ORDER
For the foregoing reasons the Court issues the following
order:
1. CytoSport’s Motion for Summary Judgment on VPX’s CounterClaims is GRANTED;
2. CytoSport’s Motion for Summary Judgment on Claims Five through
Eight is DENIED;
3. CytoSport’s Motion to Exclude the Testimony of Gabriel Gelb is
GRANTED;
4. CytoSport’s Motion to Exclude the Testimony of Robert Klein is
DENIED; and
5. VPX’s Motion for Emergency Stay is DENIED.
IT IS SO ORDERED.
Dated:

September 6, 2012

____________________________
JOHN A. MENDEZ,
UNITED STATES DISTRICT JUDGE

28
29