Pharma Company ATP Science gets injunction against Bacarella restraining the use of its trademark
Date Published: Jun 21, 2021
ATP Science Proprietary, Ltd. and ATP Institute Proprietary Limited (“ATP”) are companies engaged in the business of pharmaceutical products, naturopathic products, herbal dietary supplements, vitamins, nutritional supplements, and energy drinks through their own websites and on third-party, commercial giant Amazon. Caesar Bacarella formed Alpha Prime Apparel, Inc. (“Prime Apparel”) and Alpha Prime Regimen LLC (“Prime Regimen”) and was engaged in the business of athletic apparel, footwear, jackets, compression shirts and shorts, backpacks, and bags and later ventured in the domain of nutritional, protein, and vitamin supplements. ATP held the trademark for the word “Alpha Prime” (“Alpha Mark”) that they used for their products. Bacarella started using an identical mark to the “Alpha Mark” on its products. ATP served a cease and desist notice to Bacarella but he paid no heed to it. As a result ATP filed a suit against Bacarella and his companies for Trademark Infringement in the United States District Court Southern District of Florida (“The Court”) (ATP Sci Proprietary Ltd v Bacarella Case No.: 20-cv-60827-SINGHAL (S.D. Fla. Jul. 9, 2020)) which ruled in favour of ATP granting an injunction and dismissing Bacarella’s motion to dismiss.
ATP Science Proprietary, Ltd. and ATP Institute Proprietary Limited (“ATP”) hold the trademark for the word mark "Alpha Prime" that received the U.S. trademark registration on March 27, 2018. Sometime in 2017, ATP entered the U.S. market, and began marketing and selling the Alpha Prime supplement in the U.S. market on its own website and on third-party, commercial giant Amazon.com. On June 17, 2016, Defendant Caesar Bacarella filed his intent to use trademark application with the U.S. Patent and Trademark Office ("USPTO") for the work mark "Alpha Prime" for use with athletic apparel, footwear, jackets, compression shirts and shorts, backpacks, and bags. Bacarella represented to the USPTO that he has used the mark since May 1, 2016. On January 17, 2017, Bacarella formed Defendant Prime Apparel and, on January 15, 2020, he formed Defendant Prime Regimen. Prime Apparel sells its products on its own website.
On October 29, 2019, Bacarella filed a trademark application with USPTO for the word mark "Alpha Prime Regimen" for use with dietary, nutritional, protein, and vitamin supplements. The USPTO, on February 3, 2020, promptly rejected the trademark application due to likelihood of confusion with the Mark, stating two primary reasons: (1) The “Alpha Mark” and “Alpha Prime Regimen” are virtually identical; and (2) The proposed goods identified in Bacarella's application were “identical” to the goods identified in ATP's registration application.
Despite USPTO's rejection, Bacarella began advertising the new “Alpha Prime Pre-Workout” supplement as soon as twelve days later, and announced a March 6, 2020 launch date at a bodybuilding. ATP sent a cease and desist letter to Bacarella's counsel upon discovering this. Two days later, on March 7, 2020, after confirming receipt of the cease and desist letter, Bacarella began selling the Alpha Prime Pre-Workout supplement on a website.
ATP alleged that Bacarella markets and sells supplements that bear the Mark in prominent fashion and include descriptive language "Sports Regimen" only in much smaller font below. ATP brought an action against Bacarella and his companies for trademark infringement and unfair competition under the Lanham Act, Florida's Deceptive and Unfair Trade Practices Act (“FDUTPA”), and common-law trademark infringement.
ATP alleged that Bacarella’s “Alpha Prime Sports Regimen” infringes on the “Alpha Mark”, in violation of the Lanham Act along with unfair competition and false designation of origin.ATP further alleged a common-law trademark infringement. Moreover, ATP brought a claim for declaratory judgment under FDUTPA. Bacarella brought a motion to dismiss the suit by arguing that the pleading is impermissible as it is a shotgun pleading, in addition to the fact that ATP failed to state a claim for injunctive relief. Moreover, Bacarella claims that a claim under FDUTPA is improper because they should have brought the claims under the federal Lanham Act instead.
The United States District Court Southern District of Florida after hearing both the sides said that in a motion to dismiss “the question is whether the complaint contain/s sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” The Court buttressed this point on the case of Worthy v. City of Phoenix City, 930 F.3d 1206, 1217 (11th Cir. 2019). The Court said that it is guided by the well-known principle that, on a motion to dismiss for failure to state a claim, the Court assumes all well pled allegations in the Complaint are true and views them in the light most favourable to the plaintiff.
On the question of shotgun proceedings, the Court said that it disagrees with Bacarella’s claim as the complaint does not fail the most basic test for a shotgun pleading. Further, on the point that ATPs FDUTPA claims are improper “because of the Lanham Act is a statute directly on-point” is also unavailing as the Lanham Act neither conflicts with nor pre-empts FDUTPA, and Courts routinely find that these claims can coexist in a complaint and that trademark infringement under the Lanham Act can constitute a deceptive practice under FDUTPA. The Court relied on the decision in TracFone Wireless, Inc., 555 F. Supp. 2d.
The Court went on to say that it notes that ATP has not filed a separate application for a preliminary injunction. While it is common practice for plaintiffs to file their complaint and, then subsequently, file a separate motion for a preliminary injunction, no part of Federal Rule requires a separate filing and the Court is not aware of any case law construing such a requirement. The Court held that the “Alpha Mark” and the mark used by Bacarella are “virtually identical.” Further, the Court also pointed out that Bacarella didn’t take sufficient steps to distinguish their mark with the “Alpha Mark.”
The Court accordingly ordered that Bacarella’s motion for dismissal is denied and ATPs request for an injunction is granted.
ATP Sci Proprietary Ltd v Bacarella Case No.: 20-cv-60827-SINGHAL (S.D. Fla. Jul. 9, 2020)