United States District Court, D. Arizona
A. TEILBORG SENIOR UNITED STATES DISTRICT JUDGE.
before the Court is American Fitness Wholesalers LLC's
(“Defendant”) Motion to Dismiss (Doc. 31) the
Amended Complaint (Doc. 29). The Motion has been fully
briefed. (Docs. 31, 32, 33). The Court now rules on the
Motion (Doc. 31).
ThermoLife International LLC (“Plaintiff”)
asserts that Defendant is liable for false advertising in
violation of the Lanham Act, 15 U.S.C. § 1125, common
law unfair competition, and false marking in violation of 35
U.S.C. § 292.
following facts are either undisputed or recounted in the
light most favorable to the non-moving party. See Wyler
Summit P'ship v. Turner Broad. Sys., Inc., 135 F.3d
658, 661 (9th Cir. 1998). Plaintiff “currently holds 23
separate and distinct patents that protect its innovative
development and use of ingredients in Dietary Supplements and
food products.” (Doc. 29 at 84). Plaintiff “sells
millions of dollars of patented Dietary Supplements
ingredients every single year to some of the largest Dietary
Supplement companies in the industry.” (Id. at
2). Plaintiff “licenses its technology to Dietary
Supplement companies who use nitrates in their formulations
in the pre-workout, pump, and performance categories of the
sports nutrition market.” (Id.). “With
few exceptions, anytime an amino acid is combined with
nitrate(s) and sold and marketed to consumers in a Dietary
Supplement[, ] the product relies on [Plaintiff]'s
patented technology.” (Id.). Plaintiff refers
to these products as “ThermoLife Component
Products.” (Id.). Plaintiff also licenses and
sells its patented creatine nitrate. (Id. at 11-12).
sells dietary supplements to consumers on its website.
(Id. at 19). There, Defendant advertises each
product it sells. (Id. at 19-20). Plaintiff contends
that Defendant falsely advertised certain products on its
website as dietary supplements. (See Id. at 30).
More specifically, Plaintiff appears to claim that consumers
believe dietary supplements are coextensive with the
definition of “dietary supplement” under 21
U.S.C. § 331(ff) and that the term dietary supplement
connotes that the product is “safe, natural, and
legal.” (Id. at 26-30). Plaintiff contends
that certain products that were sold on Defendant's
website were unsafe, not natural, and illegal, which it
asserts constitutes false advertising. (Id. at 30).
Plaintiff also alleges that Defendant sells creatine nitrate
products that have no licensing connection with Plaintiff,
including APS Nutrition's creatine nitrate product, which
is advertised as “a vastly superior patented
creatine.” (Id. at 20-21). For this reason,
Plaintiff asserts a false marking claim under 35 U.S.C.
§ 292. (See Id. at 84-85).
August 15, 2019, the Court dismissed Plaintiff's original
complaint in its entirety but granted leave to amend. (Doc.
25). Specifically, the Court dismissed Plaintiff's false
advertising claim under the Lanham Act, 15 U.S.C. §
1125, common law unfair competition claim, and false marking
claim under 35 U.S.C. § 292, as well as a civil
conspiracy claim. (Doc. 25). Plaintiff timely filed the
Amended Complaint and realleged its original claims sans the
civil conspiracy claim. (Doc. 29). Defendant then filed its
Motion to Dismiss the Amended Complaint. (Doc. 31).
moves to dismiss each of the Amended Complaint's three
claims. (Doc. 31). The Court evaluates each claim in turn.
False Advertising Claim
first argues that Plaintiff has not adequately stated a false
advertising claim under the Lanham Act, 15 U.S.C. §
1125. (Doc. 31 at 4-11). To establish a prima facie case for
false advertising, a plaintiff must show:
(1) the defendant made a false statement either about the
plaintiff's or its own product; (2) the statement was
made in commercial advertisement or promotion; (3) the
statement actually deceived or had the tendency to deceive a
substantial segment of its audience; (4) the deception is
material; (5) the defendant caused its false statement to
enter interstate commerce; and (6) the plaintiff has been or
is likely to be injured as a result of the false statement,
either by direct diversion of sales from itself to the
defendant, or by a lessening of goodwill associated with the
Newcal Indus., Inc. v. Ikon Office Sols., 513 F.3d
1038, 1052 (9th Cir. 2008) (citation omitted).
Supreme Court has determined that a plaintiff asserting a
false advertising claim must show that the injury is within
the “zone of interests” that the Lanham Act
protects and that the injury was proximately caused by a
violation of the Lanham Act. Lexmark Int'l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 127-30
(2014). First, “to come within the zone of interests in
a suit for false advertising under § 1125(a), a
plaintiff must allege an injury to a commercial interest in
reputation or sales.” Id. at 131-32. Second,
to show proximate cause, “a plaintiff suing under
§ 1125(a) ordinarily must show economic or reputational
injury flowing directly from the deception wrought by the
defendant's advertising; and that occurs when deception
of consumers causes them to withhold trade from the
plaintiff.” Id. at 133-34;
TrafficSchool.com v. Edriver Inc., 653 F.3d 820, 825
(9th Cir. 2011) (stating a plaintiff establishes a cognizable
injury under the Lanham Act “if some consumers who
bought the defendant's product under a mistaken belief[,
] fostered by the defendant[, ] would have otherwise bought
the plaintiff's product” (internal quotations
marks, alterations, and citations omitted).
showing required by Lexmark “is generally not
made when the deception produces injuries to a fellow
commercial actor that in turn affect the plaintiff.”
Lexmark, 572 U.S. at 133-34. Rather, a plaintiff
must show, inter alia, “that the injury is
‘competitive,' or harmful to the plaintiff's
ability to compete with the defendant.” Jack
Russell Terrier Network of N. Cal. v. Am. Kennel Club,
Inc., 407 F.3d 1027, 1037 (9th Cir. 2005). Typically, a
plaintiff must allege an inferential chain showing how the
defendant's alleged false advertising harmed or could
harm the plaintiff's business.
TrafficSchool.com, 653 F.3d at 825-28. Thus, survey
data or other information about consumer behavior is
important to establishing a Lanham Act claim for false
advertising. Id. at 825, 828 (noting that survey
data showed that defendants' false advertising was
“an important factor in consumers' choice”
between plaintiffs' product and defendants', which
showed defendants could have “capture[d] a larger share
of the referral market-to plaintiffs' detriment . . .
[by] mislead[ing] consumers”).
central allegation is that “[e]very single sale that
[Defendant] made of an illegal product should have been a
sale of a legal product that competed with the illegal
products sold on [Defendant]'s website.” (Doc. 29
at 23-24). From there, Plaintiff alleges that its sales had
been going up year after year for five years, until 2016,
when its sales dipped. (Id. at 24-25). Plaintiff
also claims that the term “dietary supplement”