Superior Consulting Services, Inc. v. Shaklee Corporation

Filing 339

ORDER granting 328 Motion for Bench Trial. Shaklee's Motion for Bench Trial (Doc. 328) is GRANTED. Signed by Judge Gregory A. Presnell on 6/28/2018. (MAF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
SUPERIOR CONSULTING SERVICES,
INC.,
Plaintiff,
v.

Case No: 6:16-cv-2001-Orl-31GJK

SHAKLEE CORPORATION and
SHAKLEE U.S., LLC,
Defendants.

ORDER
This Matter comes before the Court without a hearing on Shaklee’s Motion for Bench Trial
(Doc. 328) and Superior’s Memorandum in Opposition (Doc. 336).
I.

Factual and Procedural Background
Superior owns two Florida fictitious business entities called “Your Future Health” and

“YFH” (collectively “Superior”). Doc. 20 ¶ 5. Superior's “primary objective is the early detection
of disease, through performing certain laboratory tests, including blood tests, for consumers.” Id. ¶
7. Superior accomplishes its objective by creating a profile “customized to a client's unique
biochemistry,” called a “Healthprint.” Id. ¶ 11. Superior has registered the mark “Healthprint” twice
with the United States Patent and Trademark Office (“USPTO”). Registration number 2646571 was
obtained on November 5, 2002, and registration number 2928465 was obtained on March 1, 2005.
Doc. 20 ¶¶ 14, 16. The USPTO did not require proof of a secondary meaning for either mark. Id. ¶
18. On November 8, 2008, and February 5, 2011, Superior filed declarations of incontestability for
the marks.

On June 8, 2016, Shaklee, a corporation that manufactures and distributes nutrition
supplements, beauty products, and household-cleaning products, filed a trademark application with
the USPTO claiming a similar “Healthprint” mark. Shaklee's Healthprint refers to a free, online
survey that consists of twenty-two questions about a client's personal characteristics, habits, and
goals. Doc. 43–8 ¶ 13. Once the client answers all of the questions, he or she is presented with “a
customized set of Shaklee products that fits [his or her] health goals, needs and budget.” Doc. 43–
7, Ex. 1 at 1.
On December 14, 2017, Superior filed its Second Amended Complaint. Doc. 159. Count I
of the Second Amended Complaint alleges Direct Federal Trademark Infringement; Count II alleges
Vicarious Federal Trademark Infringement; Count III alleges violation of the Florida Deceptive and
Unfair Trade Practices Act, or, in the alternative, common law unfair competition; Count IV alleges
common law trademark infringement; Count V alleges statutory trademark dilution in violation of
15 U.S.C. § 1125 and Florida Statute § 495.001, et seq.; Count VI alleges Federal Trademark Unfair
Competition under 15 U.S.C. § 1125(a); and Count VII alleges common law tortious interference
with advantageous business relationships. On January 2, 2018, Shaklee filed its Answer, Affirmative
Defenses, and Counterclaim. Doc. 166. Count I of the Counterclaim alleges Statutory Trademark
Dilution; Count II seeks declaratory relief for invalidity of the Healthprint mark for nutritional
supplements; and Count III seeks declaratory relief under the Florida Deceptive and Unfair Trade
Practices Act.
On April 16, 2018, the Court granted Shaklee’s Motion for Summary Judgment with
respect to Counts V and VII of the Second Amended Complaint. Doc. 281.

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II.

Legal Standards
After a party demands a jury trial, the Court may make a finding that on some or all of the

issues, there is no federal right to a jury trial. Fed. R. Civ. P. 39. The Seventh Amendment provides
that, “[i]n Suits at common law, where the value in controversy shall exceed twenty dollars, the
right of trial by jury shall be preserved. . . .” In order to ascertain whether a given action is analogous
to a suit at common law, Courts “determine whether a statutory action is more similar to cases that
were tried in courts of law than to suits tried in courts of equity or admiralty . . . [by] examin[ing]
both the nature of the action and of the remedy sought.” Tull v. United States, 481 U.S. 412, 417
(1987).
III.

Analysis
Shaklee asks the Court to conduct a bench trial on the basis that the Plaintiff is only entitled

to equitable relief: disgorgement of profits and injunctive relief. Doc. 328 at 1. Although
disgorgement of profits is a type of monetary damages, it is considered a form of equitable relief.
See Waldrop v. S. Co. Servs., 24 F.3d 152, 157 (11th Cir. 1994). Superior does not contest Shaklee’s
characterization of disgorgement of profits as an equitable remedy. Rather, Superior points to two
legal remedies it sought in its complaint: (1) statutory damages under the Lanham Act, and (2)
punitive damages. Doc. 336 at 2. Shaklee argues that Superior waived any claims to statutory or
punitive damages by failing to include them in the Joint Pretrial Statement (Doc. 254).
Superior notes that the Court issued an Order that requires the parties to submit an Amended
Joint Pretrial Statement by August 3, 2018. Doc. 329. The purpose of that Order was not to give
Superior a second chance to seek damages that it had waived in the original Joint Pretrial Statement;
rather, the Court ordered the submission of a new pretrial statement due to decisions the Court had
made on various pretrial motions since the time the original Joint Pretrial Statement had been filed.

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In the original Pretrial Statement, Superior had the opportunity to state the damages it sought.
Superior made no mention of statutory or punitive damages in the damages section, instead asserting
only an intention to seek disgorgement of profits. See Doc. 254 at 7-8. The Local Rules for the
Middle District of Florida are clear that the Pretrial Statement is controlling:
All pleadings filed by any party prior to filing of the pretrial statement shall be
deemed to be merged therein, or in any subsequent pretrial order entered by the
Court. The pretrial statement and the pretrial order, if any, will control the course of
the trial and may not be amended except by order of the Court in the furtherance of
justice.
Local Rule 3.06(e). To the extent that Superior had claims for statutory or punitive damages
prior to the filing of the Joint Pretrial Statement, those claims were waived when it failed to
include them in its statement of damages sought.
IV.

Conclusion

For the foregoing reasons, Shaklee’s Motion for Bench Trial (Doc. 328) is GRANTED.
DONE and ORDERED in Chambers, Orlando, Florida on June 28, 2018.

Copies furnished to:
Counsel of Record
Unrepresented Party

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