Superior Consulting Services, Inc. v. Shaklee Corporation

710 F. App'x 850
CourtCourt of Appeals for the Eleventh Circuit
DecidedOctober 17, 2017
Docket17-11210 Non-Argument Calendar
StatusUnpublished
Cited by1 cases

This text of 710 F. App'x 850 (Superior Consulting Services, Inc. v. Shaklee Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eleventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Superior Consulting Services, Inc. v. Shaklee Corporation, 710 F. App'x 850 (11th Cir. 2017).

Opinion

PER CURIAM:

Plaintiff-Appellant Superior Consulting Services, Inc., appeals the district court’s denial of its motion for a preliminary injunction against Defendant Shaklee Corporation to halt Shaklee’s alleged trademark infringement of Superior’s mark “Health-Print.” After a eareful review of the record, and for thé reasons that follow, we affirm.

I.

Superior owns and operates two fictitious business entities, Your Future Health and YFH, through which it offers a service called “HealthPrint.” Eleanor Cullen, a registered nurse, developed Health-Print and founded YFH. Ms. Cullen declared that Healthprint

centers around the principle that “normal” blood test scores are not good enough to assist person with the early identification of potentially serious. health problems ... A Healthprint is customized to a client’s unique biochemistry, and it includes a detailed nutrition analysis that specifies certain lifestyle changes, foods and supplements clients should consume to achieve his or her optimum health. Healthprint also identifies additional laboratory tests that clients need to improve and • optimize their health.

Superior offers an assortment of Health-Print packages testing various blood panels, the most basic of which costs $474.00 and most comprehensive costs $1,462.00. Additional tests may be ordered, costing anywhere from $45.00 to $552.00. Accompanying the blood-test order form is a lifestyle survey, including questions regarding stress levels, alcohol consumption, sleeping habits, and medical history. Upon producing the “HealthPrint” with results to the customer, Superior then recommends certain supplements, but it does not sell them.

Superior claims that the HealthPrint refers to the “total client profile,” which does not require the client to undergo a blood test. Clients can choose only to fill out a comprehensive survey of questions called the “Master Symptom Tracker” from which Superior produces a “HealthPrint” dictating “certain changes that could benefit them through their diet, exercise, weight management programs, water intake, and supplement suggestions.”

Superior owns two trademarks for the text “HealthPrint,” both of which appear on the Principle Register. The application for the first trademark (registration number 2646571), which was approved in 2002, listed the purpose as “Nutritional supplements for general health maintenance,” “Printed instructional and teaching material in the field of health care,” and “consulting services in the field of health care.” Superior filed a Section 15 declaration of incontestability for this mark in 2008.

The application for the second trademark (registration number 2928465), which was approved in 2005, listed the purpose as “blood testing services; consultation in the fields of food nutrition, diet and health.” Superior filed a Section 15 declaration of incontestability for this mark in 2011.

The prosecution histories for both trademark applications include various submissions of brochures, one of which states that “HealthPrint includes a special group of blood tests that are rarely ordered because they are expensive..... YFH believes that these tests as well as traditional tests must be done to properly balance your body systems and to prevent many diseases.” EOF No. 21-2 at 2 (emphasis in original). That brochure also explains that “Health-Print requires a blood draw at one of thousands of participating collection sites.” Id. (emphasis in original). Another submission explains that lab ranges are customized “by your age, sex, blood type, height, and other blood test results — one range does not fit all.”

Shaklee is a manufacturer and distributor of natural nutrition supplements as well as weight-management, beauty, and household products. It does not offer blood tests. Since August 6, 2016, Shaklee has offered a free, online “Healthprint” questionnaire that asks various lifestyle questions, including questions regarding age, sleep, stress levels, exercise regime, memory, and diet. Once a customer completes the survey, a report is automatically generated based on algorithms. The report also includes recommendations for certain vitamin supplements or other products; for example, if customers indicate that they do not regularly eat salmon, Shaklee will recommend they buy a Shaklee Omega-3 supplement. Upon making a purchase, customers are assigned to a distributor for further support and assistance. Shaklee claims that it sells most of its supplements through its distributor network.

Superior became a distributor for Shak-lee in 1978. Although Superior’s Health-Print is sold directly to the public online, it is also sold through referrals from Shak-lee’s distributors to Shaklee clients. For example, in the first ten months of 2016, Shaklee’s clients accounted for 31 percent of Superior’s HealthPrint sales. In exchange for these referrals, Superior recommends Shaklee supplements to clients when appropriate.

Shaklee applied for a trademark for “HEALTHPRINT” on June 8, 2016. The application states that HEALTHPRINT’s purpose is “life quality assessment for individuals; and providing information in the fields of personal development and .improvement of quality of life.” A conflict was found regarding the use of the word “health” in the mark, so the description was changed and approved for “Providing information in the field of personal development, namely, personal improvement, and specifically excluding healthcare information.”

II.

On November 1, 2016, Superior filed a Complaint for injunctive relief and monetary damages alleging trademark infringement under the Lanham Act, 16 U.S;C. § 1114, et seq. 1 On December 20, 2016, Superior filed a Motion for a Preliminary Injunction. The district court held oral arguments and entered an order on February 21, 2017, denying the preliminary injunction. Superior now appeals.

III.

We review an order denying a motion for a preliminary injunction for an abuse of discretion. Forsyth Cty. v. U.S. Army Corps of Eng’rs, 633 F.3d 1032, 1039 (11th Cir. 2011). We review findings of fact for clear error and legal conclusions de novo. Id. “This scope of review will lead to reversal only if the district court applies an incorrect legal standard, or applies improper procedures, or relies on clearly erroneous factfinding, or if it reaches a conclusion that is clearly unreasonable or incorrect.” Id. (quoting Schiavo ex rel. Schindler v. Schiavo, 403 F.3d 1223, 1226 (11th Cir. 2005)).

A preliminary injunction is an “extraordinary and, drastic remedy” and should not be granted unless the movant clearly satisfies its burden of persuasion as to four prerequisites: (1) a substantial likelihood of success on the merits of its claim at trial; (2) a substantial threat of irreparable harm to the movant if injunctive relief is denied; (3) the injury to the movant outweighs the potential harm that an injunction may cause the defendant; and (4) an injunction will not disserve the public interest. Id.

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710 F. App'x 850, Counsel Stack Legal Research, https://law.counselstack.com/opinion/superior-consulting-services-inc-v-shaklee-corporation-ca11-2017.