Superior Consulting Services, Inc. v. Shaklee Corporation

Filing 437

MEMORANDUM AND OPINION. It is hereby ORDERED that judgment be entered for Shaklee on Counts I, II, III, IV, and VI of the Second Amended Complaint, and that judgment be entered for Superior on Counts I, II, and III of the Counterclaim. Signed by Judge Gregory A. Presnell on 2/25/2019. (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.

MEMORANDUM OPINION AND ORDER
This is a trademark dispute over use of the name “Healthprint.”

The case was tried before

the Court without a jury in September 2018. 1 Following the filing of the official trial transcript, 2
the parties filed post-trial memoranda. (Doc. 426 as to Plaintiff; Doc. 425 as to Defendant). The
dispute is now ripe for resolution, and this Opinion contains the Court’s findings and conclusions
as required by Rule 52 of the Federal Rules of Civil Procedure.
I. Procedural Background
Plaintiff Superior Consulting Services, Inc. (“Superior”) d/b/a Your Future Health (“YFH”)
filed suit against Defendant Shaklee Corp. (“Shaklee”) on November 1, 2016. Doc. 1. 3 Superior

1

Prior to trial, the Court granted Defendant’s Motion for Bench Trial (Doc. 328), because
Plaintiff’s only claim for relief was the equitable remedy of disgorgement. Doc. 339 at 4. Plaintiff’s
appeal of that Order (Petition for Writ of Mandamus) was denied. Doc. 400.
2

The transcript is divided into five days. Reference to the transcript will be by day,
followed by the page and line numbers.
3

Shaklee U.S., LLC was later added as a party. Doc. 157. The two Shaklee entities will be
referred to herein collectively as “Shaklee.”

also filed a motion for preliminary injunction, which the Court denied. Doc. 49. Superior took an
interlocutory appeal of that denial, and the Eleventh Circuit affirmed the Court’s denial. Doc. 126.
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 (“FDUPTA”), or, in the alternative, common law unfair competition;
Count IV alleges common law trademark infringement; Count V alleges statutory trademark dilutio n
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 based on alleged invalidity of Superior’s Healthprint mark for nutritional supplements; and
Count III seeks declaratory relief under FDUPTA.
On April 16, 2018, the Court granted Shaklee’s Motion for Summary Judgment in part,
dismissing Counts V and VII of the Second Amended Complaint. Doc. 281.
II. Basic Undisputed Facts 4
Superior is a Florida direct-to-consumer third-party laboratory testing company owned by
Eleanor Cullen (“Cullen”).

On its website, Superior describes itself as “the premier blood testing

and customized nutrition analysis company since 1976.” Pl. Ex. 35 at 6. Superior owns two federal
trademarks on the mark “Healthprint.”

4

Registration number 2646571 (“TM-1”) was obtained on

These facts are largely taken from the parties’ joint pretrial statement. See Doc. 355 at

10-12.

-2-

November 5, 2002. TM-1 pertains to nutritional supplements for general health maintenance and
printed instructional material and consulting services in the filed of health care. See Pl. Ex. 54.
Registration number 2928465 (“TM-2”) was obtained on March 1, 2005. TM-2 pertains to blood
testing services and consultation in the fields of food nutrition, diet, and health. See Pl. Ex. 55.
Shaklee is a world-wide manufacturer and distributor of natural nutritional supplements,
weight management products, beauty and personal care products, water filtration systems, and
household cleaning products. Shaklee owns federal trademarks on the “Shaklee” mark. Shaklee
does not sell blood testing services, nor has it ever used Healthprint to promote blood testing or
blood testing services. See Tr. 3 at 98:1-2, 13-16. Likewise, Shaklee does not affix “Healthprint”
to any Shaklee products, which are all sold under the “Shaklee” marks. See Tr. 1 at 58:25-59:5.
In June and August of 2016, Shaklee filed trademark applications with the USPTO claiming
a similar “Healthprint” mark. Pl. Ex. 56, 57. 5 Shaklee's Healthprint pertains to providing
information in the field of personal improvement. It specifically excludes healthcare information.
Shaklee’s Healthprint is used with a free, online survey that consists of questions about a client's
personal characteristics, habits, and goals. Pl. Ex. 59. Once the client answers all of the questions,
he or she is presented with a personalized nutritional plan. See, e.g., Pl. Ex. 97; Tr 3 at 113:6-24.
III. Discussion and Analysis
A. Superior’s Trademark Claims.
The analysis is the same for each of Superior’s trademark claims. See Gift of Learning
Found, Inc. v TCG Inc., 329 F.3d 792, 802 (11th Cir. 2003); Rain Bird Corp. v. Taylor, 665 F. Supp.
2d 1258, 1267 (N.D. Fla. 2009). Each claim is based on infringement and unfair competition with

5

Those applications have been held in abeyance pending resolution of this lawsuit. One
such application has been suspended pending disposition of this case, see Pl. Ex. 56, and the other
is currently under an extension of time, see Pl. Ex. 57.

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Superior’s Healthprint marks, and the analysis is the same with respect to both of Superior’s
Healthprint marks. 6 To prevail on infringement, Superior must prove that it owns the mark, that it
has priority, and that Shaklee’s use of the mark is likely to cause confusion. See Frehling Enters,
Inc. v. Select Group Inc., 192 F.3d 1330, 1335 (11th Cir. 1999).
It is undisputed that Superior owns the mark in question and that it has priority over
Shaklee’s use of the mark. Thus, the essence of this case is whether Shaklee’s use of its Healthprint
is likely to cause confusion with Superior’s use of the mark. See id.
The Eleventh Circuit uses a seven-factor test to analyze trademark infringement claims. The
factors include: (1) the type of the mark, (2) the similarity of the marks, (3) the similarity of the
products the marks represent, (4) the similarity of the parties' retail outlets and customer base, (5)
the similarity of advertising media, (6) the defendant's intent, and (7) actual confusion. Id. The
type of mark and the evidence of actual confusion are the most important factors. Id.
(1) Type of mark.

Trademark protection is only afforded to distinctive marks.

The

stronger the mark, the greater the protection. A mark’s USPTO registration creates a
refutable presumption of distinctiveness. See 15 U.S.C. § 1057(b). Superior registered
both marks with the USPTO and both acquired incontestable status. Accordingly,
Superior’s mark is, at a minimum, descriptive, and a “relatively strong mark.” See
Frehling Enters, Inc., 192 F.3d at 1336.

Since “the USPTO did not require evidence

of secondary meaning, the presumption is that the mark is ‘inherently distinctive.’” Doc.

6

Although Superior’s TM-1 relates to nutritional supplements, instructional material, and
consulting services in the field of healthcare, Superior does not sell supplements and its use of the
Healthprint mark is primarily used in connection with its blood testing service. Accordingly, unless
otherwise specified, this Opinion relates to the service mark, TM-2.

-4-

126 at 9-10. Shaklee did not rebut this presumption; thus, Superior’s mark is distinctive
and entitled to strong trademark protection.
(2) The similarity of the marks. Similarity of marks looks to “the overall impressions that
the marks create.” Frehling, 192 F.3d at 1337. Shaklee’s mark is nearly identical to
Superior’s mark, except for the use of Shaklee’s name preceding the mark.
Additionally, Shaklee uses the same thumbprint logo with its mark. The Court thus
finds that the marks are substantially similar.
(3) The similarity of the products the marks represent. “This factor requires a determination
as to whether the products are the kind that the public attributes to a single source, not
whether the purchasing public can readily distinguish between the products of the
respective parties.” Frehling, 192 F.3d at 1338. Here, there is a significant difference
between the relatively expensive and intrusive blood testing service offered by
Superior’s Healthprint and the free online survey offered by Shaklee’s Healthprint.

In

upholding this Court’s denial of Superior’s Motion for Preliminary Injunction, the
Eleventh Circuit said, “. . . there seems to be no real possibility that a reasonable
consumer would mistake the source of Superior’s blood-test request form with that of
Shaklee’s free questionnaire, particularly where Superior’s website is rife with
references to the company’s focus on laboratory work.” Doc. 126 at 21. Superior
presented no evidence at trial to undermine this conclusion.

The Court finds, therefore,

that the products involved are dissimilar, and this factor strongly supports Shaklee.
(4) Similarity of retail outlets and customer base. The likelihood of confusion is greater
where the Plaintiff and Defendant use similar retail outlets and advertising media and
target similar customers.

Frehling, 192 F.3d at 1339.

-5-

As noted by the Eleventh

Circuit, the parties here clearly share a customer base, notwithstanding the disparity in
product and pricing.

Doc. 126 at 16. However, the Eleventh Circuit found no clear

error in this Court’s prior conclusion that this factor is neutral, and nothing presented at
trial warrants a different conclusion.
(5) Similarity of advertising media. Courts must compare the parties’ advertisements and
the audiences they reach. Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830
F.3d 1242, 1262 (11th Cir. 2016). “The greater the similarity, the greater the likelihood
of confusion.”

Id. (internal quotation omitted). “[T]he standard is whether there is

likely to be significant enough overlap” in the audience of advertisements “that a
possibility of confusion would result.” Frehling, 192 F.3d at 1340. Here, both
parties use word of mouth, the Internet, and e-mail. 7 And, to some extent, the audience
for this media may overlap. But the disparity between the services provided renders
this factor only slightly positive toward confusion.
(6) Shaklee’s intent. If it can be shown that Shaklee adopted the Healthprint mark with the
intent to poach Superior’s good will, this fact would be strong evidence of confusing
similarity.

Frehling, 192 F.3d at 1340 (citing John H. Harland Co. v. Clarke Checks,

Inc., 711 F.2d 966, 977 (11th Cir. 1983)). In examining this factor, the Court must
determine “whether [Shaklee] had a conscious intent to capitalize on the [P]laintiff’s
business reputation, was intentionally blind, or otherwise manifested improper intent.”

7

In its post-trial brief. Superior contends that both parties also use radio and social media.
Doc. 426 at 10-11. Superior’s reference to Shaklee’s use of this media is the deposition of
George Shehata in Doc. 421 at 119-129. However, this portion of Shehata’s deposition was not
designated and is not, therefore, in evidence.

-6-

Custom Mfg. v. Midway, 508 F.3d 641, 648 (11th Cir. 2007) (internal quotations
omitted).
The evidence at trial showed that Shaklee used an elaborate and lengthy process to
select Healthprint as the mark to use on its new online questionnaire. Tr 3 at 99:1-104:2 5.
In the spring of 2016, Shaklee organized a working group to develop the questionnaire,
headed by George Shehata. Id. at 112:7-15.

The group consisted of members from

health sciences (Dr. Jamie McManus), marketing, and technology, who met at least
weekly. Id. at 112:22-116:2. They did consumer testing, and after several brainstorming
sessions, the group came up with several possible names for its online tool.

Id. at

116:21-117:6, 119:22-120:25; Def. Ex. 32 at 5. Ultimately, they chose “Healthprint.”
Tr. 3 at 124:13-23.
After the name “Healthprint” was selected, Brian Fairbanks, a visual designer, was
tasked with designing a logo. Id. at 125:7-10.

After modifying stock photos that he

obtained from third-party sources, Fairbanks presented various images to the team. See
id. at 125:21-126:2; Def. Ex. 45. The group rallied around the first image, a green
thumbprint, and that image was approved by Shaklee’s CEO, Roger Barnett. Tr. 3
at 128:7-20; see also Def. Ex. 45.
Shaklee then hired a law firm to perform a trademark search, which revealed
Superior’s registration of the mark. 8 Upon receipt of the trademark report, Shehata
accessed the YFH website and noticed that it was oriented around blood testing and
medical diagnostics. Tr. 3 at 129:12-130:11. He concluded that Superior’s Healthprint

8

Prior to the trademark search, Shehata had never heard of Your Future Health. Tr. 3
at 128:25-129:5.

-7-

was entirely different than the Healthprint Shaklee proposed to use, because Superior’s
Healthprint was medically based, as opposed to Shaklee’s simple questionnaire, which
contained basic lifestyle and diet-type questions.

Id. at 131:1-17.

Shaklee launched its

Healthprint in August of 2016. Id. at 132:2-4.
In an effort to refute the bona fides of Shaklee’s development of its Healthprint mark,
Plaintiff reverts to a series of events that occurred a decade earlier. One such episode
took place in in 2004-2005 and involved discussions between Superior and Proctor
& Gamble concerning a possible business arrangement between the two entities. Tr. 3
at 17:20-18:25. 9

At the time, Ms. Jennifer Steeves-Kiss was a member of the Proctor

& Gamble team charged with examining that issue. Ten years later, Ms. Steeves-Kiss
was a member of the Shaklee team that was developing its version of Healthprint.

From

this, Superior posits that Ms. Steeves-Kiss took the information she learned about
Healthprint while at Proctor & Gamble in 2005 and used it to help Shaklee develop its
Healthprint in 2016. This contention was the subject of a pretrial motion in limine filed
by Shaklee (Doc. 256), which the Court conditionally granted. Doc. 319.

After

reviewing Ms. Steeves-Kiss’s deposition (Doc. 422) and the trial transcript, the Court
confirms its pretrial ruling and concludes that this evidence provides no support for
Superior’s contention that Shaklee intended to infringe Superior’s trademark. Doc. 434.
Superior also points to another instance in 2006, involving e-mails and a telephone
call regarding Superior’s blood testing. Marjorie Fine, Shaklee’s general counsel, and
Dr. Jamie McManus, chair of Shaklee’s medical affairs, became concerned that Cullen

9

These discussions were protected by a confidentiality agreement that expired in 2010.
Def. Ex. 118.

-8-

(a Shaklee distributor) 10 might be exposing Shaklee to risk if she was recommending
Shaklee supplements based on her blood testing results. See Tr.3 at 152:1-155 :5,
159:25-160:6; see also Def. Ex. 11. This concern resulted in a telephone call with
Cullen in February 2006 in which Cullen explained her blood testing procedure and
assured Shaklee that she was not recommending Shaklee products to treat disease. See
Tr. 3 at 159:2-161:5. At the conclusion of the call, McManus requested additional
documentation.

Both she and Ms. Fine attest that Cullen never sent any additional

documentation. Tr. 3 at 159:22-24, 204:19-23.

While this evidence suggests that

Shaklee was on notice in 2006 of Superior’s blood testing service, and by implicat io n,
the name Healthprint, it does not imply that Shaklee somehow banked this knowledge
and used it ten years later to infringe Superior’s trademark.

In sum, these

communications do not support the intent element of Superior’s proof.
There is simply no credible evidence that Shaklee adopted the Healthprint mark as a
means to appropriate Superior’s good will.

Rather, Shaklee engaged in a deliberate and

reasonable process to develop a mark which addressed Shaklee’s distinct online
questionnaire.

Indeed, given Shaklee’s concern about Cullen’s use of blood testing for

her Healthprint, it would be contrary to Shaklee’s self-interest to invite a comparison.
The intent factor does not support Superior’s claim.
(7) Actual confusion.

“It is undisputed that evidence of actual confusion is the best

evidence of a likelihood of confusion.

10

However, such evidence is not a prerequisite,

Cullen ran her Shaklee distributor business through Abbi, Inc., a corporation owned by
her. Tr. 3 at 202:16-20, 223:2-11. Ms. Fine started the process to terminate Cullen’s
distributorship as a result of the information learned in the instant case, but Cullen resigned before
the status review board had the opportunity to terminate her. Id. at 210:23-211:5.

-9-

and thus it is up to individual courts to assess this factor in light of the particular facts of
each case.” Frehling, 192 F.3d at 1340 (internal citations omitted). In upholding this
Court’s denial of Plaintiff’s Motion for Preliminary Injunction, the Eleventh Circuit
found that Superior had “not produced any evidence of a customer mistakenly taking
Shaklee’s Healthprint questionnaire and thinking he or she was actually purchasing
Superior’s Healthprint.” Doc. 126 at 20. And Superior produced no such evidence at
trial.
At trial, Superior produced one “confusion” witness, Frank Murphy. See Tr. 1
at 150:1-4.

Mr. Murphy is a longtime customer of YFH and his wife works for Cullen.

Id. at 151:15-25.

When informed by his wife that Shaklee was also using the name

“Healthprint,” he went online to see Shaklee’s Healthprint.

Although he claims to have

been “confused,” it appears that he was just angry that Shaklee was using the Healthprint
mark. Id. at 156: 22-157:22, 178:2-11. 11

In her testimony, Carol Guth, Cullen’s office

manager, admitted that she was not aware of anyone who had made a purchasing decision
based on confusion between the use of these two marks. Id. at 129:1-25.

In her

deposition, Cullen concurred. Tr. 2 at 141:24-142:7. Thus, absent any proof of actual
confusion, this factor weighs heavily against Superior.
The overall balance. After evaluating each of these factors, the Court must consider the
overall balance to determine the likelihood of confusion.

Frehling, 192 F.3d at 1342.

Although

Superior has a strong mark that is substantially similar to Shaklee’s mark, there is no evidence of
actual confusion, or malintent on Shaklee’s part, and the other factors do nothing to tip the scale in

11

Notably, Superior does not mention Murphy’s testimony in its post-trial submission.

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Superior’s favor. There is, however, evidence that strongly supports a finding that there is no
likelihood of customer confusion, and that is the testimony of Shaklee’s expert witness, Hal Poret.
Mr. Poret, a recognized expert in the field of market research, performed an online survey
to test the likelihood of confusion between the two Healthprint marks. Using a group of 400
potential customers, Poret used a “squirt” survey method to compute a net rate of confusion between
the two Healthprint marks. 12 Tr. 4 at 40:20-43:19.

Using screenshots from the respective websites,

the survey respondents were shown both Superior’s and Shaklee’s Healthprint marks in close
proximity and asked questions as to whether they believed the two services come from the same
company or are otherwise related. Poret concluded that there is a net rate of confusion of no more
than 7% between the two marks. Id. at 60:1-21.

A net rate of confusion at this level demonstrates

that there is no likelihood of confusion between these marks. Id. at 60:11-61:11. The Court finds
this evidence to be credible and highly persuasive.
Having considered the seven factors, the Court concludes that Superior has failed to prove
infringement of its Healthprint mark. Judgment will be entered for Shaklee on Counts I, II, III,
IV and VI of Superior’s Second Amended Complaint.
B. Shaklee’s Counterclaim
(1) Count I – Statutory Trademark Dilution.

In Count I of its counterclaim,13 Shaklee

seeks injunctive relief, contending that Superior’s use of the Shaklee mark has

12

The 400 respondents were divided into two groups of 200: a test group and a control
group. Tr. 4 at 41:1-4. The control group is used to adjust for the placebo effect of taking a survey,
thus eliminating false positive responses (“noise”). Id. at 55:8-56:6.
13

Prior to trial, Shaklee sought to dismiss Count I without prejudice, in order to streamline
the issues. Doc. 381. However, Superior objected (Doc. 384), and the Court denied the motion.
Doc. 386.

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diluted the distinctive quality and value of Shaklee’s mark. Doc. 166 at 38-39. 14
Injunctive relief for trademark dilution is available under 15 U.S.C. § 1125(c)(1),
which states:
Subject to the principles of equity, the owner of a
famous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time
after the owner's mark has become famous,
commences use of a mark or trade name in commerce
that is likely to cause dilution by blurring or dilution
by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of
competition, or of actual economic injury.
Therefore, to prove a dilution claim, a plaintiff must prove that (1) the mark is
famous; (2) the alleged infringer used the mark in commerce after the mark became
famous; and (3) the infringer’s use of the mark is likely to cause dilution by blurring
or tarnishment.
A mark is considered famous “if it is widely recognized by the general
consuming public of the United States as a designation of source of the goods or
services of the mark's owner.” 15 U.S.C. § 1125(c)(2)(A). To determine whether a
mark is recognized by the public, courts consider factors such as (1) the duration,
extent, and geographic reach of advertising and publicity of the mark; (2) the amount,
volume, and geographic extent of sales of goods or services offered under the mark;
(3) the extent of actual recognition of the mark; and (4) whether the mark was

14

This claim is based on both the Lanham Act, 15 U.S.C. § 1125, and Florida Statute
§ 495.001, et seq. The standard for establishing a trademark dilution claim under Florida law is
essentially the same as under the Lanham Act, except that under Florida law, Plaintiff need only
show that the mark is famous in Florida. Holding Co. of the Villages, Inc. v. Little John’s Movers
& Storage, Inc., 2017 WL 6319549 at *3 (M.D. Fla. 2017).

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registered. Id. To be famous, “a mark must have a degree of distinctiveness and
strength beyond that needed to serve as a trademark . . . [it] must be truly prominent
and renowned.” Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d
1261, 1270 (S.D. Fla. 1999) (internal quotations omitted).

“A party claiming

dilution must establish that its mark is practically a household name of the likes of
such giants of branding as Exxon, Kodak, and Coca Cola.” Holding Co. of the
Villages, Inc., 2017 WL 6319549 at *4 (internal quotations omitted).
At trial, Shaklee presented evidence of the longstanding existence and use of
its mark. See generally Tr. 3 at 92-96. It has an annual advertising budget of $85
million and sells its products in the United States through 340,000 independent
distributors. Id. at 188:18-20, 96:1-3.

Among other things, Shaklee has provided

products to NASA for space exploration and has sponsored United States Olympic
teams. Id. at 96:15-97:1. It has also been featured on TV shows such as Oprah and
Dr. Phil. Id. at 97:2-6. According to Keven Crandall, vice-president of sales, Shaklee
has been widely recognized and revered by customers in the multilevel marketing
industry. Doc. 428 at 42:13-16, 43:1-13.
Notwithstanding its effort to support this claim, Shaklee has failed to prove
that its mark is famous to the extent it has become a “household name,” widely
recognized by the general public to the same extent as the “giants of branding.”

See

Holding Co. of the Villages, Inc., 2017 WL 6319549 at *4. At best, it is simply well
known in the dietary and nutritional supplement industry. Moreover, and
importantly, Shaklee has failed to offer any credible proof that any of its customers
or potential customers have formed a negative impression of Shaklee’s products as a

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result of Superior’s alleged use of the Shaklee mark. 15 Accordingly, Shaklee’s
dilution claim is without merit and judgment for Superior will be entered on Count I
of Shaklee’s counterclaim. 16
(2) Invalidity of Superior’s TM-1 mark. In Count II of its counterclaim, Shaklee seeks
declaratory relief holding Superior’s TM-1 mark invalid due to abandonment. 17 To
prove abandonment of a trademark, a defendant must establish: “[1] that the plaintiff
has ceased using the mark in dispute, and [2] that he has done so with an intent not
to resume its use.” Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d
1167, 1174 (11th Cir. 2002). For the purposes of the Lanham Act, “use” is defined
as “the bona fide use of such mark made in the ordinary course of trade, and not made
merely to reserve a right in a mark.” 15 U.S.C. § 1127; Emergency One, Inc. v. Am.
FireEagle, Ltd., 228 F.3d 531, 536 (4th Cir. 2000). An intent not to resume use of a
trademark “may be inferred from the circumstances.” 15 U.S.C. § 1127.
Evidence of lack of qualifying use for three consecutive years constitutes
prima facie evidence of abandonment.

15 U.S.C.§ 1127. “Because a finding of

abandonment works an involuntary forfeiture of rights, federal courts uniformly
agree that defendants asserting an abandonment defense face a ‘stringent,’ ‘heavy,’

15

Superior’s use of the Shaklee mark was limited to marketing materials given to Shaklee
distributors. See, e.g., Def. Ex. 13, 14.
16

In its post-trial submission, Superior seeks sanctions against Shaklee for its lackluster
effort to prove its dilution claim. Doc. 426 at 36-37. While Shaklee’s dilution claim was weak, it
was not brought in bad faith and the Court declines to conclude that it was “exceptional” such that
a fee-shifting award under the Lanham Act is justified.
17

Shaklee also alleged that the mark was invalid because it was obtained through fraudulent
representations that the mark was in use for supplements. However, this claim was not addressed in
Shaklee’s post-trial submission and will not be considered by the Court.

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or ‘strict burden of proof.’” Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc.,
304 F.3d 1167, 1175 (11th Cir. 2002) (collecting cases) (internal citation omitted).
Shaklee claims that Superior has abandoned TM-1 because Superior does not
sell supplements bearing the Healthprint trademark. Indeed, Superior has made it
clear that in order to avoid a conflict of interest, it does not sell supplements and has
no intent to do so in the future. See Tr. 2 at 116:21-23. Rather, Superior puts the
Healthprint mark on supplement bottles that it gives away for promotional purposes.
Id. at 60:18-61:3. Thus, Superior claims that the mere transportation of trademarked
goods in interstate commerce will suffice. See Doc. 426 at 32.
Importantly, “neither promotional use of a mark on goods in a different
course or trade nor mere token use constitute ‘use’ under the Lanham Act.”
Emergency One, Inc., 228 F.3d at 536 (citing Imperial Tobacco, Ltd. v. Phillip
Morris, Inc., 899 F.2d 1575, 1592–83 (Fed. Cir. 1990)). Where the use of a mark
does not “reflect a continual effort to create a viable business in the goods so
marked,” such use does not rise to the level of “use in commerce” as required under
the Lanham Act. White v. Paramount Pictures Corp., 108 F.3d 1392 at *3 (Fed.
Cir. February 21, 1997).
While it is true that the meaning of “use in commerce” is not limited to
profit-making activity, courts have found that promotional materials alone are often
not enough to establish sufficient use under the Lanham Act. Planetary Motion, Inc.
v. Techsplosion, Inc., 261 F.3d 1188, 1195-96 (11th Cir. 2001) (collecting cases).
Courts have found promotional efforts sufficient under some circumstances, such as
where promotional mailings are coupled with advertiser or distributor solicitations

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or where a title was announced to millions and promoted at an annual trade
convention. See id. However, use has been found insufficient where “only a few
presentations [of the promotional materials] were made.” See id. at 1196 (citing
WarnerVision Entm't Inc. v. Empire of Carolina Inc., 915 F. Supp. 639, 645–46
(S.D.N.Y.)).
Superior argues that its “open” transportation constitutes use. While
transportation can be enough, “the transportation must be sufficiently open or
public.” Spiral Direct, Inc. v. Basic Sports Apparel, Inc., 293 F. Supp. 3d 1334, 1360
(M.D. Fla. 2017), appeal dismissed, No. 18-10189-AA, 2018 WL 1957605 (11th Cir.
Mar. 13, 2018) (emphasis added). “‘The requirement of open and public exposure’
[must be] met.” Id. (quoting 3 McCarthy on Trademarks and Unfair Competition
§ 19:118 (5th ed. 2017)). Open transportation is required because use in commerce,
even through transportation, contemplates that “the intended buying public” will be
“exposed to the mark.” Id.. Superior’s transportation did not result in any sales of
supplements bearing the Healthprint mark, but it was open and it did result in
consumers receiving the Healthprint supplements following both trade and radio
shows. 18
Accordingly, the Court finds that Superior has not abandoned its use of TM-1
and judgment will be entered for Superior on Count II of the counterclaim.

18

Here, the transportation of “Healthprint” labeled supplements did not expose use of the
Healthprint mark with respect to supplements to the would-be buyers of those supplements, because
Superior was unwilling to sell such supplements. While this seems to go against the spirit of the
requirement of open transportation, given the heavy burden at play, there is insufficient evidence to
find that Superior abandoned TM-1.

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(3) Florida Deceptive and Unfair Trade Practices Act. In Count III of its counterclaim,
Shaklee contends that Superior has violated the Florida Deceptive and Unfair Trade
Practices Act, Florida Statute § 501.201, et seq. (“FDUTPA”) by engaging in the
unlicensed practice of medicine.
judgment.

As a remedy, Shaklee requests a declaratory

It does not, however, specify any specific injunctive relief. Doc. 166 at

41.
FDUTPA prohibits “[u]nfair methods of competition, unconscionable acts or
practices, and unfair or deceptive acts or practices in the conduct of any trade or
commerce.” Fla. Stat. § 501.204(1). Anyone “aggrieved” by a FDUTPA violation
may bring an action for declaratory and injunctive relief. Fla. Stat. § 501.211(1). To
be entitled to declaratory and injunctive relief under FDUTPA, the plaintiff must
show that: 1) the defendant engaged in a deceptive act or unfair practice; and 2) the
plaintiff is aggrieved by that act or practice. CareerFairs.com v. United Bus. Media
LLC, 838 F. Supp. 2d 1316, 1324 (S.D. Fla. 2011).
(a) Superior’s deceptive acts.

Shaklee contends that Superior has

violated FDUPTA by engaging in the unlicensed practice of medicine, specifically
by using blood testing to identify, diagnose, and treat a wide range of diseases and
disorders. Doc. 166 at 40-41. 19 In support of this contention, Shaklee points to
various communications in which Cullen used her blood testing results to
recommend supplements for the treatment of disease. See, e.g., Def. Ex. 22, 23, 24,
27, 28 and 29. 20 Several of these communications also reveal that Cullen’s practice

19

Cullen is not a licensed medical doctor.

20

Shaklee also offered Def. Ex. 12 as an example, but Superior objected at trial and the

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was to make these recommendations orally and not in writing. See Def. Ex. 22, 23,
and 24.
To support its argument, Shaklee called Dr. Arthur Herold as an
expert witness. Tr. 5 at 4:6-17.

Dr. Herold is a family practitioner and an associate

professor at the University of South Florida College of Medicine, with 38 years’
experience. He is also the chief of the Department of Family Practice at the Tampa
General Hospital, where he oversees approximately 50 physicians. Id. at 6:3-6. He
was offered as an expert in the unlicensed practice of medicine and the Court
recognized him as an expert in that field. Id. at 7:4-16.
Dr. Harold reviewed materials pertaining to YFH and concluded that
Cullen was practicing medicine without a license. His conclusion was based on
numerous considerations, including Cullen’s “Master Symptom Tracker” (Def. Ex.
2), which he described as a typical form regarding potentially serious health issues
used in a clinical medical practice. After the Master Symptom Tracker is completed
by the “patient,” blood tests are ordered and the test results are sent to Cullen. She
then uses the results to make treatment decisions, which he describes as an
intervention Tr. 5 at 10:7-25.

Dr. Harold believes that this is a misuse of blood

testing because the process should start with a clinical exam, a review of the patient’s
medical history, and then the ordering of blood tests that are necessary. Id. at
11:1-13:3. This is not something within the province of a registered nurse,21 and he
described Cullen’s blood testing procedure as “totally inappropriate.” Id. at 11:22-25.

Court reserved ruling.

The Court now SUSTAINS the objection to Def. Ex. 12 as hearsay.

21

Cullen is a registered nurse in New York, but not in Florida. Superior offered the
testimony of Michelle Glower as an expert witness in the field of nursing. Tr. 2 at 156:3-157:1.

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Dr. Harold was also critical of Cullen’s basic premise that blood test
results within a normal range can still be indicative of disease. 22 According to Dr.
Harold, “That’s not the proper way to look at laboratory testing. . . . [I]t’s being
turned upside down by Mrs. Cullen by suggesting that although your ranges are
normal, you very well could be headed for the disease.” Id. at 13:15-16:17. He also
found that the YFH Doctor Notification Agreement (Def. Ex. 4 at 5) was deceptive
because it says that the laboratory’s medical director reviews the patient’s test results.
According to Dr. Harold, this is “blatantly false.” Id. at 14:22.
After reviewing Defendants’ Exhibits 12,23 22, 23, 24, 27,
and 28, Dr. Harold discussed the dangers of mega-dosing, using supplements to treat
disease, and Cullen’s interference with the doctor-patient relationship.
generally Tr. 5 at 19-33.

24

See

In conclusion, Dr. Harold’s opinion is that “this is

practicing medicine, . . . and is not under the domain of an RN.” Id. at 30:3-7.

He

further concluded that this unlicensed practice creates a lot of potential harm. Id. at
30:8-17.

The Court agrees. Shaklee has proven that YFH (Cullen) is engaged in

the unlicensed practice of medicine, which is actionable under FDUPTA.

Mrs. Glower’s testimony was neither germane nor helpful and she appeared to be more of a
cheerleader for Cullen than an independent expert, referring to the lawsuit as “frivolous.” Id. at
180:19-20. The Court gives no weight to Mrs. Glower’s testimony.
22

YFH’s motto is, “normal blood test scores are not good enough.” See Def. Ex. 1.

23

Although Defendants’ Exhibit 12 was excluded as an exhibit, an expert can rely on
hearsay in forming an opinion. See Fed. R. Evid. 703. Moreover, Defendants’ Exhibit 12 is only
one of many examples where Cullen used blood testing to treat disease.
24

Dr. Harold also found it concerning that Cullen has a practice of not putting her
recommendations in writing. Tr. 5 at 22:17-23:4.

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(b) Superior does not seriously challenge the contention that Cullen is
practicing medicine without a license. 25 Rather, Superior contends that Shaklee is
not an aggrieved party and thus has no standing to bring the claim. There is no
specific definition of the term “aggrieved” in the statute, but a party is aggrieved
when it has an injury that is more than speculative. Ahearn v Mayo Clinic, 180 So.3d
165, 172-173 (Fla. 1st DCA 2015). An aggrieved party must be able to demonstrate
some specific past, present, or future grievance. Id. at 173. However, since Shaklee
seeks only injunctive relief, it must demonstrate a real and immediate threat of future
injury in order to satisfy Article III standing. Houston v. Marod Supermarkets, Inc.,
733 F.3d 1323, 1329 (11th Cir. 2013).
Shaklee’s theory of harm is that Cullen (d/b/a Abbi Inc.), acting as a
Shaklee distributor, could subject Shaklee to liability for Cullen’s unlawful
prescription of Shaklee supplements to treat disease or improve one’s health. But,
Cullen’s effort to market the FYH Healthprint to Shaklee distributors never got off
the ground, and in any event, Cullen (Abbi) is no longer a Shaklee distributor.
Accordingly, there is no likelihood of future injury.

Shaklee is not, therefore, an

aggrieved party and has no standing to seek injunctive relief. Judgment will be
entered for Superior on Count III of Shaklee’s counterclaim.

25

Superior’s argument is limited to the fact that a medical doctor, Tamara Sachs, approved
the list of blood tests offered by YFH as well as the normal range for their results. Doc. 426 at 36.
When ordering blood tests, Cullen uses scripts pre-prepared by Dr. Sachs. However, Dr. Sachs
plays no part in deciding what particular tests are ordered, nor does she analyze the results or
contribute to any intervention resulting therefrom. See Tr. 1 at 104:22-105:2. Thus, Superior’s
Healthprint service is not conducted under the supervision of a medical professional.

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IV. Conclusion
For the foregoing reasons, it is hereby
ORDERED that judgment be entered for Shaklee on Counts I, II, III, IV, and VI of the
Second Amended Complaint, and that judgment be entered for Superior on Counts I , II, and III of
the Counterclaim.

DONE and ORDERED in Chambers, Orlando, Florida on February 25, 2019.

Copies furnished to:
Counsel of Record
Unrepresented Party

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