Wednesday, February 24, 2016

Another court finds keyword buys don't cause likely confusion

USA Nutraceuticals Group, Inc. v. BPI Sports, LLC, 2016 WL 695596, No. 15-CIV-80352 (S.D. Fla. Feb. 22, 2016)
Plaintiff, here “Beast,” sells sports nutrition supplements using trademarks such as “Beast,” “Beast Sports,” “Beast Mode,” and “Train Like a Beast.” They’re packaged with the color “Beast Blue” and “a prominent ‘B’ in black lettering.” Beast has used the “B” since 2008.  BPI sells competing products under the marks “BPI” and “Be Better. Be Stronger. BPI,” the former of which was registered in 2012 and used since 2009.  BPI began using the Better/Stronger mark on its products in early 2015.

BPI allegedly found that Beast had been buying keywords on Amazon that included the BPI mark, along with “BPI Sports” (another BPI federally registered mark), as well as “Best BCAA,” “Best Creatine,” and “Whey HD,” products sold by BPI.

The banner redirects to a website offering Beast products (though it was contested whether this meant a Beast-operated website or an Amazon page).
In addition to its keyword buys, Beast allegedly infringed the Be Better Be Stronger mark by using a tagline incorporating the stylized “B” followed by the words “Original,” “Genuine,” and “More.”  This could be interpreted to read as “B Original B Genuine B More,” allegedly confusingly similar to Be Better Be Stronger BPI.

Beast argued that BPI lacked rights in the Better/Stronger mark.  BPI’s CEO attested, under penalty of perjury, that BPI had been using that mark “on all of its product labels, product packs, advertisements, billboards, videos, and other promotional materials” since April 7, 2015, which was enough to constitute evidence of adoption.  Was the use sufficiently public to identify the products to the public? Yes, because BPI showed that it used the Be Better Be Stronger Mark on social media such as Facebook and Instagram, in widely distributed print media such as Men’s Fitness Magazine, as well as in other print advertisements, at trade shows, and on promotional items. Even without sales volume evidence, this was enough to show that BPI targeted the relevant public.  (The mark seems clearly descriptive to me under the “general laudatory terms” rule—the use may be public use, but public use doesn’t mean the public understands a trademark meaning; but see below for the court’s conclusion.)
BPI argued initial interest confusion based on the keyword buys; the Eleventh Circuit hasn’t adopted IIC as an independent theory, so district courts in the circuit are reluctant to find it actionable.  BPI argued that North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) “conclusively determined that the purchase of ‘meta tags’—a piece of code akin to the use of advertising keywords here—was actionable under the Lanham Act.”  As the court explained, “Not so.”  In Axiom, a search using the plaintiff’s marks “yielded a result containing not only the defendant’s competing website but, also, a description of the website which included and highlighted the plaintiff’s trademarked terms.”  Thus, the Axiom court found that consumers would believe that defendant’s products had the same source as plaintiff’s, or at least that defendant distributed plaintiff’s products, so there was regular source confusion.
By contrast, the banner ads didn’t refer to any of BPI’s marks.  Thus, even assuming that IIC is a valid theory, Beast’s keyword buys didn’t cause it.  BPI couldn’t find any cases indicating that buying keywords, without more, suffices to cause IIC, which involves “luring” consumers via similarity to another mark.  “[T]he use of a keyword encompassing a competitor’s terms does not necessarily produce an infringing advertisement; it is the content of the advertisement and/or the manner in which the mark is used that creates initial interest confusion.”  The court politely referred to the Ninth Circuit’s “continued examination” of keyword ads culminating in Network Automation to bolster its conclusion.

Beast’s banner ads clearly contained Beast’s mark, “Click to Save on Fitness Supplements,” and a clear identification of the advertisement’s sponsor, “Beast Sports Nutrition.” Plus, the distinct markings of the banner ad, contrasting to search results, “alerts the consumer viewing the page to the fact that the image is an advertisement for products separate from those already listed in the website’s organic search results.”  BPI even submitted evidence that keyword buys were standard in the internet advertising industry, and the court declined to adopt a premise that “logically culminates in the destruction of common Internet advertising methods and unreasonably encumbers generally accepted competitive practices.”
Turning to the Better/Stronger mark, the court found the mark suggestive because it identified the intended results of the product, not components of the product.  However, the mental leap required was “minor,” so the mark was only weakly suggestive.  No discussion of market strength.
Similarity: BPI argued that the B Original tagline copied the Be Better Be Stronger Mark’s cadence and sound.  The first version was most logically read to incorporate a repeated “B” sound, which did create a similar impression to the Be Better Be Stronger mark, and “even the second rendition seems to require an articulation with a repeating ‘B’ sound.”  Thus, the sound was “strikingly similar.”  Nonetheless, other elements created dissimilarity, especially the use of each party’s house mark, with which the taglines were exclusively used.  The house marks clearly identified the respective sources of the parties’ goods.  Plus, the recurring syllable was just a common verb, which made the similarity less relevant.  In addition, “the number of syllables present in each mark undoubtedly affects the tempo of the mark’s pronunciation, as well as the mark’s intonation, depending on the speaker, thereby altering the overall impression of the respective marks.”  Thus, similarity was a neutral factor in the court’s analysis.
Channels of trade/advertising methods: The products were the same and sold in the same retail outlets to the same consumers.  Favored a confusion finding.
Intent: There was no evidence of intent to capitalize on the goodwill of the Better/Stronger mark.  Actual confusion: BPI had no evidence.  Neither favored a confusion finding.
Overall, the court found confusion unlikely given the relative weakness of the BPI mark and the dissimilarity between the parties’ uses.
The court rejected Beast’s unclean hands defense related to BPI’s alleged purchase of Beast-related keywords, but this was a disputed factual issue.

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