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Western District Denies Injunction Against Canadian Supplement Seller

Plaintiff Preferred Nutrition, Inc., sells health supplements.

It hired defendant Lorna Vanderhaeghe, a Canadian citizen, as an independent consultant to help launch a new line of women’s supplements in Canada. Each supplement in the line ends with the suffix “Sense,” such as ESTROSENSE and MENOSENSE. Ms. Vanderhaeghe’s name and likeness appear on each supplement’s label.

Thereafter, Preferred Nutrition and the Everett, Wash.-based plaintiff Natural Factors Nutritional Products, Inc., began working with Ms. Vanderhaeghe to launch a similar line of products in the United States. From 2003 to 2008, the parties collaborated to sell eight SENSE products in the U.S., which did not feature Ms. Vanderhaeghe’s name or likeness.

In 2008, Natural Factors approached Ms. Vanderhaeghe about using her name and likeness on the American SENSE line. In 2009, it revised its labels to include Ms. Vanderhaeghe’s name and likeness, but later removed references to her. Around the same time, Preferred Nutrition likewise removed Ms. Vanderhaeghe’s name and likeness from its products in Canada.

By January 2010, both Preferred Nutrition and Natural Factors ended their relationship with Ms. Vanderhaeghe, who had made it known she intended to start a competing line of supplements.

In the spring of 2010, Ms. Vanderhaeghe launched a line of women’s supplements in Canada. Each was branded with a name ending in the suffix “Smart,” including ESTROSMART and MENOSMART — the same prefixes used from the SENSE line of products. She also prepared to launch a similar line in the United States.

The only way Americans can purchase Ms. Vanderhaeghe’s SMART products is to travel to Canada or to purchase them from a Canadian online retailer who sells to Americans. Ms. Vanderhaeghe does not sell any products directly from her Web site.

Preferred Nutrition and Natural Factors sued Ms. Vanderhaeghe in the Western District for trademark and trade dress infringement, and moved for a preliminary injunction. The injunction, the court noted, “would prevent Ms. Vanderhaeghe from doing anything to promote her SMART products in the United States or Canada, including the SMART names and the trade dress of the SMART products. It would also require her to refrain from ‘engaging in any acts of unfair competition against [Preferred Nutrition] or [Natural Factors].’ It would force her to stop seeking United States trademark registrations for her products, and to ‘immediately cancel or withdraw’ all pending state and federal trademark registrations.”

Western District Judge Richard Jones denied the motion. 

“The court declines to enjoin Ms. Vanderhaeghe’s indirect sales to Americans. The sole claim for which Plaintiffs have established a likelihood of success on the merits is their claim for trade dress infringement. The court does not find a strong likelihood of success even on that claim. Plaintiffs have proven irreparable harm only because they enjoy a presumption of irreparable harm. The balance of hardships, however, strongly favors Ms. Vanderhaeghe. Ms. Vanderhaeghe should not be forced to forego lawful foreign product sales merely to permit Plaintiffs to cut off an unknown volume of sales to Americans.”

The court also noted it “does not have jurisdiction over Ms. Vanderhaeghe’s sales of her products to Canadians. That is a matter for the Canadian court system” and found that Ms. Vanderhaeghe’s plans to enter the U.S. market by selling her products directly to Americans was “too indefinite to support an injunction.”

The case cite is Preferred Nutrition, Inc. v. Vanderhaeghe, No. 10-907 (W.D. Wash. Nov. 22, 2010) (Jones, J.).

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