Facts

Tuong Nguyen co-founded and is a majority owner of Smarternutrition Inc., a company selling vitamins and supplements on the internet. Smarternutrition and Nguyen own the federally registered trademark for "Smarternutrition," and sell a curcumin supplement under the "Smartercurcumin" mark. On May 5, 2021, Nguyen and Smarternutrition filed suit against Smarter Vitamins in USDC Central Smartervitamins Corp. makes and sells nutritional supplements through online storefronts under the mark "Smartervitamins." Because the parties' branding--use of the "Smarter" prefix in the nutritional supplement markets--was similar, each accused the other of trademark infringement and other unfair business practices.

PLAINTIFFS' CONTENTIONS: Plaintiffs contended that defendants' use of "Smartervitamins" constituted trademark infringement. Plaintiffs noted that the company was incorporated on April 11, 2017; had designed a label; established a Facebook page; were displaying their goods in a brick-and-mortar store in February 2017, which was the same month they also began selling directly to consumers. By September 2017, they were selling their products on Amazon and sales in November and December were over $300,000 per month. Finally, plaintiffs received a federal trademark registration for the "Smarternutrition" word mark and mark on August 14, 2018 after having received one for its "Smarternutrition" name and logo the month before.

DEFENDANT'S CONTENTIONS: Defendant denied all material contentions and countered that plaintiffs were the infringers. Smarter Vitamins was incorporated on July 25, 2016, a year before plaintiffs' company. The label with the "Smartervitamins" mark was designed, affixed to bottles, and advertised by October 2016. On June 29, 2016, defendant purchased the domain www.smartervitamins.com and published a landing site the following month bearing the trademarks to collect e-mails for potential customers prior to the website's launch. That information allowed the company to send promotional samples and advertising to hundreds of customers. By September 2016, not only was the website launched, it also began shipping the vitamins to customers. All social media pages were established in July 2016.

Result

The court found that plaintiff first used its mark in 2017 whereas defendant first used its mark in commerce in 2016. It then determined that neither party possessed a valid and protectable mark. Though Smarternutrition owned a federally registered mark, it was descriptive and did not achieve a secondary meaning before defendant's allegedly infringing use began; therefore the mark was not protectable. So too with defendant's counterclaims; the court found "Smartervitamins" descriptive and had not established a secondary meaning. Consequently, it was also unprotectable.