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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