IP Law Daily SIMPLY lip balm products do not infringe SIMPLERS BOTANICALS Lip Clarity essential oil
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Friday, October 13, 2017

SIMPLY lip balm products do not infringe SIMPLERS BOTANICALS Lip Clarity essential oil

By Cheryl Beise, J.D.

Affordable Naturals, LLC ("AN"), was entitled to summary judgment on trademark infringement and related claims brought by Nutraceutical Corporation because no reasonable juror could find that AN’s SIMPLY organic lip products created a likelihood of confusion with Nutraceutical’s SIMPLERS BOTANICALS essential oil products, including its "Lip Clarity" product, the federal district court in Salt Lake City has decided. There was no evidence of actual confusion; the marks in question, as used in commerce, were dissimilar; the parties’ products were almost nothing alike, and were marketed for different purposes (Nutraceutical Corp. v. Affordable Naturals, LLC, October 10, 2017, Parrish, J.).

Defendant Affordable Naturals, LLC ("AN") had used the mark SIMPLY since 2009 in connection with personal care products, including organic lip balms and other lip products. Its products were sold by national retailers, such as Target and Walgreens. AN owned a federal trademark registration for SIMPLY for personal care products, namely lip balms, lip glosses, lip shimmers, and other lip-related products.

Plaintiffs Nutraceutical Corporation and NutraMark, Inc. (collectively, "Nutraceutical") acquired the marks SIMPLERS BOTANICALS and SIMPLERS when it purchased Simplers Botanicals in 2013. In September 2013, Nutraceutical filed use-based applications to register the mark SIMPLERS and SIMPLERS BOTANICALS ("botanicals" disclaimed) for various cleansing preparations and cosmetics, including "body and lip salves," and "lip balms." The USPTO registered Nutraceutical’s SIMPLERS BOTANICALS mark in 2014. AN opposed Nutraceutical’s registration of the SIMPLERS mark based on likelihood of confusion with its SIMPLY mark. The opposition remained pending.

Nutraceutical initiated a proceeding before the USPTO to cancel AN’s SIMPLY mark, based on likelihood of confusion, and filed the present suit against AN, asserting claims for (1) trademark infringement, (2) false advertising, (3) declaratory relief, and (4) trademark cancellation. AN filed a counterclaim seeking a declaration of noninfringement.

Before the court was AN’s motion for partial summary judgment on Nutraceutical’s claims. The court granted AN’s motion, finding that no reasonable juror could conclude that there was a likelihood of confusion between the parties’ marks.

Likelihood of confusion. Although likelihood of confusion is a question of fact, it is amenable to summary judgment in certain cases, the court noted. In evaluating likelihood of confusion, the court considered six factors: (1) evidence of actual confusion between the marks, (2) the degree of similarity between the marks, (3) the similarity of the parties’ goods and the manner in which they are marketed, (4) the degree of care consumers are likely to exercise in purchasing those goods, (5) the strength of the SIMPLERS mark, and (6) the intent of AN in adopting the SIMPLY mark.

In this case, none of the factors weighed in favor of finding a likelihood of confusion. First, despite significant discovery, Nutraceutical failed to produce any evidence of actual confusion. Nutraceutical provided no anecdotal or survey evidence. Second, the parties’ marks, as actually used in the marketplace, created different commercial impressions. While evidence supported that Simplers Botanicals sold products bearing only the word SIMPLERS before it was acquired in 2010, all of Nutraceutical’s current products bore the mark SIMPLERS BOTANCIALS. The marks SIMPLY and SIMPLERS BOTANICALS were dissimilar in sound, meaning, and especially appearance. The SIMPLY mark used a stylized green leaf for the "i," was presented vertically, in lowercase san serif font, and included a green font against a white backdrop. Nutraceutical’s SIMPLERS mark, in contrast, appeared atop the word BOTANICALS, was presented horizontally in black, all capital letters, and incorporated a line that separated the two words but connected the "r" in SIMPLERS with the "o" in BOTANICALS.

The court also found that the parties’ products and the manner in which they were marketed were not similar. SIMPLERS BOTANICALS Lip Clarity product was a liquid oil (intended be mixed with a carrier oil), which was sold in five-milliliter bottles for between $7.39 and $13.19 per bottle, while SIMPLY-branded products were semi-solids sold in lip-balm tubes and similar packaging for between $0.99 to $2.99. Lip Clarity was typically placed with other aromatherapy products, while SIMPLY-branded products were found on end-cap displays and check-out aisles. Lip Clarity was predominantly used by those who suffer from cold sores and herpes sores. SIMPLY-branded products are marketed towards impulse buyers. Consumers were likely to exercise increased care in purchasing Lip Clarity, according to the court.

The court found that the SIMPLERS mark was suggestive and that enjoyed moderate commercial success, but this did not weigh for or against a likelihood of confusion in this case because the marks in question were dissimilar. Lastly, AN did not allege, and the record did not support, that AN intended to infringe on the SIMPLERS mark.

The court concluded that AN’s use of the SIMPLY mark did not give rise to a likelihood of consumer confusion as to the source or sponsorship of the parties’ goods, and therefore AN has not infringed the SIMPLERS mark. The only claim remaining was AN’s counterclaim for declaratory relief.

The case is No. 2:14-cv-00907-JNP-PMW.

Attorneys: Adam Alba (Magleby Cataxinos & Greenwood) and Emily J. Cooper (Holland & Hart LLP) for Nutraceutical Corp. and NutraMarks. Carl E. Christensen (Christensen Law Office PLLC) and Jared J. Braithwaite (Maschoff Brennan Laycock Gilmore Israelsen & Wright, PLLC) for Affordable Naturals LLC.

Companies: Nutraceutical Corp.; NutraMarks; Affordable Naturals LLC

MainStory: TopStory Trademark UtahNews

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