Consumers have come to identify widely-advertised pastel blue gummy vitamins with a single brand, SugarBearHair argued in the lawsuit that it filed against a rival company last year. According to SugarBearHair-maker BeSweet Creations, LLC, a 5-year old Florida-based vitamin brand that counts the Kardashians, Emily Ratajkowski, Bella Thorne, Vanessa Hudgens, and countless Bachelor contestants as paid-for endorsers, TruReflections, Inc. built a business by “willfully, intentionally, and deliberately” selling lookalike products in lookalike packaging, thereby, running afoul of the law.
BeSweet’s February 2019 case centered on TruReflections, Inc.’s alleged attempt to “profit from the name, reputation, and advertising” of the SugarBearHair brand by actively copying the “appearance” of the vitamins, namely, “the shape of a bear presented in [a] blue color.” As BeSweet asserted, it has maintained a trademark registration for the shape and color of the vitamins since 2016, while also taking issue with TruReflections’s use of lookalike packaging, which also allegedly infringes one of its federal registered trademarks.
While the matter appeared to be an easy win for BeSweet when TruReflections, Inc. failed to respond to the complaint, prompting the court to issue a final judgment in BeSweet’s favor in July 2019 and to dismiss the matter, there seems to be more to the case. Late last month, TruReflections, Inc. filed a handful of motions with the court. Interestingly, the filing-party is not the Texas-based TruReflections, Inc. that BeSweet named in its suit; it is a Delaware-headquartered company with the same name.
According to Delaware-based TruReflections, Inc., BeSweet filed suit “against a misnamed, non-existent party,” and thereafter, “with reckless disregard for the truth, filed a knowingly false affidavit of service and falsely claimed it had served the defendant lawfully with the complaint in this matter.” The result, per TruReflections? “Insufficient process and fraud upon the court.”
With such allegations in mind, TruReflections wants the court to vacate the default judgment and to enable it to intervene in the case. In a serrate but related filing, TruReflections sets forth a number of counterclaims against BeSweet, alleging that the company has engaged in trademark fraud and anticompetitive business activity, among other things, by way of its attempts to allegedly “create a monopoly on blue bear-shaped dietary supplements and restrain trade from competitors.”
In a 51-page filing dated February 19, TruReflections points to “a myriad of anticompetitive conduct and malicious interferences by [BeSweet],” which it says “have caused the destruction of [its] business.” For one thing, TruReflections claims that BeSweet is using its trademark registration for the blue bear “to violate the antitrust laws of the U.S. [and] to create or maintain a monopoly” by “conspiring to financially injure, oppress and intimidate TruReflections.” Essentially, TruReflections argues – much like MGA Entertainment asserted in its Bratz-cetric fight against Barbie-maker Mattel – that BeSweet is trying to establish and/or maintain a monopoly position on the ability to make blue bear-shaped vitamins by suing its competitors out of business.
TruReflections claims that BeSweet’s trademark infringement actions are based on an invalid trademark registration, as the blue bear vitamin is functional, and thus, should be barred from registration as a result of trademark law’s absolute bar on functionality.
As Trureflections aptly asserts, BeSweet was “denied full [trademark protection] on the Principal Register numerous times … for [its] blue-colored bear shape” on the basis that the blue bear is a “nondistinctive product design that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.” Faced with pushback from the U.S. Patent and Trademark Office, TruReflections claims that BeSweet “fraudulently procured a registration on the Supplemental Register” – a secondary register for non-distinctive marks that may be capable of acquiring distinctiveness – “by claiming the mark as a design mark when in fact, it is a functional product design.”
One of the problems with that, according to TruReflections, is that BeSweet has since used that secondary registration, which it allegedly gained as a result of fraud, to “make false infringement claims against competitors,” “unreasonably restrict trade,” and “create a deceptive monopoly on all blue bear-shaped vitamins,” thereby allegedly running afoul of the Sherman Antitrust Act, among other statutes.
All the while, BeSweet has allegedly taken to “intentionally omitting that its mark is only registered as a Supplemental trademark” in order “to harass competitors, whereby resulting in financial injury in the form of loss of sales, and a total loss and destruction of the business.” As a result, TruReflections has asked the court to reopen the case, let it join in, and also to cancel an array of BeSweet’s trademark registrations, from its various wordmarks to its registration for the blue bear.
*The case is BeSweet Creations, LLC v. Trureflections, Inc., 0:19-cv-60490 (S.D. Fla).