NOT RECOMMENDED F OR F ULL-TEXT PUBLICATION F ile Nam e: 13a0612n.06 No. 11-2090 UNITED STAT ES COURT OF AP P EALS F OR THE S IXTH CIRCUIT I NNOVA TI ON VEN TURES, L L C, doing business as L iving Esse ntials, Plaintiff-Appellant,

v. BH EL L I OM ENTERPRI SES C ORP., Def endant- Appellee

. ) ) ) ) ) ) ) ) ) ) ON APPEALFROM THE U NI TED STATES DI STRI CT COURT FOR THE EASTERN DI STRI CT OF MI CHI GAN

Be fore : CL AY and COO K, Circuit J udg es; OL I VER, District J udg e *
COOK, Circuit J udg e. I n this dispute betwee n com p e ti n g e n e r g y - d

r in k p r o d u c e r s , I nn o v a ti on Venture s, L L C d/b/a L i v i n g E s s enti als (“L E”), the maker s of “5-hour ENERGY,” claims that Bhe lliom Enterpri s es C o rp. (“B helliom”) infring ed its trade mark rig hts by marke ting dece ptively simil ar “8-H R ENER GY ” products and falsely adver tising their capa

biliti es. The district court disag ree d on both counts , and L E timely appea ls the court’s g rant of summary judgme nt to Bh elliom. For the following rea sons, our intervening decision in a simil ar case require s REVERSAL on the trade mark-inf ring ement claim. See Innovation Ventures, LLC v. N.V.E., Inc. (her einaf ter “ NVE ”), 694 F.3d 723 (6th Cir. 2012). We also AFF I RM I N PART and REVERSE I N PART the district court’s judg ment on the fa lse-adve rtising c laim.
The Honora

ble Solomon Oliver, J r., Chief United States District J u d ge for the Norther n * District of Ohio, sitting by desig nation. - 1 -No. 11-2090

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I

.
I n Se p te mb e r 2 0 0 4 , L E beg an to test-marke t “5-hour ENERGY,” a two-ounce “ene rgy s h o t. ” The Patent and Trade mark Offic e denied L E’s application for trade mark reg istration, citing the descr iptive nature of the product’s name. The next summer, afte r marke t testing proved favor able, L E beg an marke ting “5-hour ENERGY” in a varie ty of stores nationwide. See NVE , 6 9 4 F. 3 d at 727. The produc t succe eded a nd soon attrac ted a number of compe titors.

I n Marc h of 2006, NVE, a New J erse y -base d compet i tor, introduced a simil ar energ y shot named “6 Hour POWER .” L E sued NVE claiming , among other things, tradem ar k infring ement (her einaf ter the “NVE litigation”)

. The packaging of the competing products from the NVE litigation appe ar be low.

I n Dec ember 2006, another compet i tor, Bhe lliom, enter ed the marke t with an ener g y -pill product named “Mr. Energy ® 8-HR Maxi mum Stre n g th EN E RG Y ”

— a c o mb in a ti o n o f its reg istered house mark, “Mr. E n er g y ®,” and the pills’ claimed ability to provide ener g y for eig ht hours, the - 2 -No. 11-2090

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s, LL C v. Bhelliom Enters. Corp. lengt h o f a n o rm al workda y . Bhe lliom touted its product in press rele ases and on its website for using a time-rele ased formula. (R. 53, Ex s. 6, 8.) During the summer of 2009, Bhe lliom expanded the “8-H R ENERGY” product line to include energy s h o t s . L E sued Bhe lliom for trade mark infring ement and false adver tising, targe t i n g Bhe lliom’s repr esenta tions about the desig n and eff ectivene ss of its “8-H R ENERGY” products. Photos o f t h e p ac kag ing at bar in this appea l appea r her e.

The same district judge presided over L E’s suits ag ainst both NVE (“6 Hour POWER ”) and Bhe lliom (“8- HR ENERGY” ). The court g rante d summary judgme nt t o b o th defe ndants on the trade mark infr inge ment claims, ruling first in the NVE litigation in S eptember 2010. I n doing so, the district court a ssessed L E’s cla ims using our tra ditional trademar k-infring ement fa ctors: (1) the streng th of the plaintiff’s mark, (2 ) the rela tedness of the g oods or service s offe red by the plaintiff and the defe ndant, (3) t h e simil arity of the marks, (4) any evidenc e of actua l confusion, (5) the marke ting channe ls used by the parties, (6) the probable deg ree of purcha s er ca re and sophistication, (7) the defe ndant’s intent in selec ting its mark, and (8) the likelihood of either party expanding its p ro duct line using the marks. - 3 -No. 11-2090

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See, e.g. , NVE , 694 F.3d at 731; Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenv ille, Inc. , 670 F.2d 642, 648 (6th Cir. 1982). I n both case s, the district court found that three fac tors supported i n fr inge ment (fa ctors 2, 5, and 6) and four did not (fa ctors 1, 3, 4, and 7), with the eig hth fac t o r inapplicable. The court also g rante d Bhe lliom summary judgme nt on the false- adver tising claims, concluding that L E failed to pr esent evidenc e of damag es. L E appea led the adver se judgme nts in 1 both case s.
The NVE summary judgm en t ap p ea l rea ched a panel of this court afte r the district court g rante d summary judgme nt in Bhelliom

. I n its prec edential decision, that panel first ad d re s s ed NVE’s arg ument that L E’s “5-hour ENERGY” mark was too descr iptive to rec eive protec tion under the L anham Act, 15 U.S.C. § 1125(a) , concluding that “5-hour ENERGY” is “sug g estive” and thus

a protec ted mark. NVE , 694 F.3d at 730. On the merits of the trade mark claim, the panel reve rsed the district court’s non-infring ement finding and rema nded for a trial, explaining that the “eve nly balanc ed” fac tors—three for, and four ag ainst—prec luded summary judgme nt. Id. at 732–33. The panel reje cted L E’s arg ument that NVE intentionally copied its product, but faulted the district court for discounting L E’s evidenc e of consumer confusion. Id. at 732–33 (explaining that the summary judgme nt standard require d the di strict co u rt t o draw all rea sonable inferenc es i n favor of L E, the non-moving party

).

The district court g rante d summary judgme nt to L E on Bhe lliom’s trade mark counter claims 1 rela ted to its “Mr. Ener g y ®” mar k. Bhe lliom does not appeal that dec ision.

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s, LL C v. Bhelliom Enters. Corp. Noting the simil arity of the two case s’ trade mark cl ai m s , L E now arg ues here that NVE require s us not only to reve rse the district court’s g rant of summary judgme nt, but also to g rant summary judgme nt in its favor

. L E also challeng es the dist ri ct co u rt’s denial of its falseadver tising cla ims, arg uing f

or a pr esumption of damag es and injunctive r elief.

I I

.
L E’s t ra d em ark and false- adver tising claims arise under the L anham Act, 15 U.S.C. § 1125(a)

. Acc ording ly , the district court exercised fede ral-que stion jurisdiction over L iving Essentials’s trade mark claims, 28 U.S.C. § 1331. Our appel l at e jurisdiction stems from 28 U. S

. C

. § 1 2 9 1

. We g ive fre sh revie w to a g rant of summary judgme nt, asking whether the movant showed that “ there is no ge nuine dispute as to any materia l f

act and the movant is entitled
to judgme nt as a matter of law.” Fe d. R. Civ. P. 56(a) ; see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587–88 (1986).

As rele vant here , section 43(a ) of the L anham Act protec ts tra demar ks by authorizing civil actions ag ainst Any person who, on or in connec tion with any g oods or service s, or any container for g oods, uses in commerc e any word, term, name, sy mb o l , o r device , or any combination there of . . . which— (A) is likely to cause confusion, or to cause mistake, or to dec eive as to the

. . . orig in, sponsorship, or approval of his or her g oods, service s, or commerc ial activities by

another person, or

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s, LL C v. Bhelliom Enters. Corp. (B ) i n comm erc ial adver tising or promotion, misrepre sents the nature , char acte ristics, qualities, or g eog raphic orig in of his or h er o r another person’ s g oods . . . .

15 U.S.C. § 1125(a) (1). I n order to preva il on either of these claims (trade mark infring ement, false adver tising), the plaintiff must show b o t h a protec table trade mark and the rele vant L anham Act violation. NVE , 694 F.3d a t 728.

I I I

. A. Effect of NVE on LE’s Trademark Infringeme nt Clai m
We beg in by examining our trea tment of L E’s simil ar trade mark claim in the NVE appea l. Fa ced with essentially the same split of trade mark fac tors in NVE —t hree for, four ag ainst —we 2 descr ibed the fac tors as “eve nly balanc ed” and thus “counse l[ ing] in favor of not g ranting summary judgme nt.” Id. at 733; see also id. (“This fac tually intensive issue is a close call and could, on a fair compar ison of the ev i d en ce to date, be decide d either way .”). Considering the simil arity of the products, the rec ord evidenc e, and the district court’s rationale , one would expect that our judgme nt in NVE should control here , requiring reve rsal of the district court’s non-inf ring ement judg ment.

The district court in this case foun d t hat fac tors 4 (ac tual confusion) and 7 (intentional 2 copying) favor ed neither party , consistent with our observa tion that such fac tors g ener ally do not favor or weigh ag ains t a fi n d i n g o f infring ement. See Daddy’ s Junky Music Stores, Inc. v. Big Daddy’ s Family Music Center , 109 F.3d 275, 286 ( 6th Cir. 1997) (explaining that a lack of i ntent does not favor

an alleg ed infring er by

diminis hing likelihood of c onfusion).
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Bhe lliom’s briefing offe rs little resistance to NVE , sug g esting only that it failed to a ddress whether the L anham Act protec ted L E’s “5-hour ENER GY ” product. Yet, as noted above, NVE found t he mark “sug g estive” and thus entitled to trademar k protec tion. NVE , 694 F.3d at 730. I n
our view, littl e distinguishes this case from NVE , and we ag ree with L E that NVE require s reve rsal of the district cour

t’s g rant of summar

y judgme nt to Bhelliom on this infringe ment claim. B. LE’s Arguments for Summary J udgment on Trademark I

nfringement

That does not settle the matter, howeve r, beca use L E now asks for summary judgme nt in its favor

. Specifica lly , it arg ues that additional fac tors support i t s v i ew that Bhe lliom’s “8-H R E NE R GY ” pills and ener g y shots infring ed its “5-hour ENERGY” mark. We cannot ag ree . I t is important to note that L E failed to move for summary judgme nt befor e the district court. Although we may , in our discretion pursuant to 28 U.S.C. § 2106, nonetheless direc t an alterna tive order of judgme nt, such an order is not appropr iate in this case . Trs. of Mich. Laborers’ Health Care Fund v. Gibbons , 209 F.3d 587, 596 n.5 (6th Cir. 2000). I n rea ching this conclusion we apply “the g ener al rule

. . . that a fede ral appellate court does n o t consider an issue not passed upon below,” Singleton v. W

ulff , 428 U.S. 106, 120 (1976), and are mindful “[t] his court is not compelled to hear ,
nor should it hear , an issue not prese nted to the district court unless rea ching that issue serve s an
over- arc hing purpose bey ond that of arriving at t he correc t re s u l t in an indi vidual case ,” Foster v. Barilow , 6 F.3d 405, 408 (6th Cir. 1993). See a l s o 1 0 A C harle s A. Wright & Arthur R. Miller, Fe dera l Practice and Procedur e § 2720 (3d ed. 2004) (“[A]n ap p ellate court should not reve rse a
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summary judgme nt and order judgme nt for the nonmoving party on the basis of an i s s u e that the
movant had no opportunity to meet in the district court.” ). Fur ther, an alternative order of judgme nt is g ener ally not a

ppropriate when the parties have not ha d a chanc e to a ddress any materia l f actua l issues befor e the district court. See Gibbons , 209 F.3d at 595; Fountain v. Filson , 335 U.S. 681, 683 (1949) (re versing an order of judgme nt “made on appea l on a n ew i s s u e as to which the opposite party had no opportunity to prese nt a defe nse befor e the trial court” ). Wit h these considerations in mind, we dec line L E’s invitation to consider g ranting summary judgme nt in its favor

.
L E’s arg ument for summary judgme nt , like the district court’s opinion below, fails to distinguish Bhe lliom’s ener g y shots from it s pills. One would e x pect the likelihood-of-c onfusion analy sis to differ somewhat whe n compar ing a liquid ener g y shot to a bottle of energ y pills. L E’s arg ument fails to acc ount for these product diff ere nces. Finally , wer e we to take up this forf eited arg ument, the additional fac tors relied on by L E do
not compel a finding of trade mark infring ement. L E now urg es this court to consider the supporting fac tors found by the district court, plus fac tors 1 (mark streng th) and 3 (mark simil arity ) as supporting a finding of infring ement. I t conce des that fac tors 4 (ac tual confusion) and 7 (intentional copying) prese nt a jury

question.

To preva il on its claim, L E must show that Bhe lliom’s “8-H R ENERGY” mark cre ates a likelihood of confu sion reg arding the orig in of the parties’ competing products. 15 U.S.C.

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s, LL C v. Bhelliom Enters. Corp. § 1 1 2 5 (a )(1)(A); NVE , 694 F.3d at 731. As noted above, we consider the following fac tors as bear ing on w hether

a plaintiff ha s shown a likelihood of conf usion: (1) the streng th of the plaintiff’s mark, (2) the rela tednes s o f the g oods or service s offe red by the plaintiff and the defe ndant, (3) the simil arity of the m arks, (4) any evidenc e of actua l confusion, (5) the marke ting channe ls used by the parties, (6) the probab l e d egr ee of purcha ser car e and sophistication, (7) the defe ndant’s intent in selec ting its mark, and (8) the likelihood of either p arty expanding its product line using the marks.

NVE , 694 F.3d a

t 731. “Whether a likelihood of confusion exis ts ‘is a mix ed question of f act a nd law,’ but the ultimate deter mination of ‘whe ther a g iven set of fo u n d at ional fac ts establishes a likelihood of confusion is a leg al conclusion.’” Id. (quoting Therma–Scan, Inc. v. Thermoscan, Inc. , 295 F.3d 623, 630–31 (6th Cir. 2002)). Thoug h we ty pically resolve trade mark claims as a matter of law, we rec og nize that cer tain case s prese nt fac tual disputes or such evenly balanc ed fac tors that the matter is proper ly resolved by the finder of fac t
. S ee , e.g. , NVE , 694 F.3d at 733 (re versing summary judgme nt in favor of defe ndant, finding fa ct o rs in rela tive equipoise); Daddy’ s Junky Music S t o r es , In c. v. Big Daddy’ s Family Music Ctr. , 109 F.3d 275, 284 (6th Cir. 1997) (same, finding a g enuine issue of fac t reg arding the produc t simi larity ).
This case , like NVE , “is a close call and could, on a fair compar ison of the evidenc e to date, be decide d either way .” 694 F.3d at 733. L E acknow ledg es th at cer tain fac tors prese nt g enuine issues of material fa ct
. Fur ther, Bhe lliom’s pill and ener g y -shot versions of “8-H R ENERGY”

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wa rr an t separ ate considera tion. As in NVE , we reve rse the district court’s g rant of summary judgme nt and leave the re maining f actua l disputes for the fa ctfinder

.

I V.

L E’s false- adver

tising claim targ ets two repr esenta tions Bhe lliom made in press rele ases and on its website about its “ Mr. Energ y ® 8-HR Maxim um Streng th ENERGY” pr oducts: (1) that the products use a time-rele ased formu la , c o n s is te n t w ith a Har vard University study that reve aled highe r
s u s ta ined ener g y levels from the consumption of low doses of ener g y -b o o s ti n g s u b s ta n c e s th r o u g h o u t the day ; and (2) that the products provide eig ht hours of ener g y . To prese nt a viable false- adver tising claim under

the L anham Ac t, L E nee ds to show: 1) the defe ndant has made false or misleading statements of fac t conce rning his own product or another ’s; 2) the s t at em ent actua lly or tends to dece ive a substantial port i o n o f t h e intended audienc e; 3) the statement is materia l in that it will likely influence the dece ived consumer’ s purcha sing decisions; 4) the adver tisements wer e introduced into interstate commerc e; and 5) there is some causa l link betwee n the cha lleng ed stateme nts and harm to the plaintiff.

Am. Council of Certified Podiatric Physici a n s & Surgeons v. Am. Bd. of Podiatric Surgery, Inc. , 185 F.3d 606, 613 ( 6th Cir.1999).
The district court g rante d summary judgme nt to Bhe l l i o m beca use L E failed to prese nt evidenc e of the last element: that the alleg ed falsities harme d L E. Thoug h L E does not dispute this

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fac t, it asser

ts that t h e ab s en ce of damag es does not prec lude their claim for two rea sons: (1) 3 Bhe lliom’s willful misrepre sentations about its compet i t o r products war rant a presumption of damag es, and (2) injunctive relief does not require damag es. Only the second arg ument has merit, but it warra

nts remand, not summary judgme nt. A. Presumption of Damages for W illful Misreprese ntations About C ompetitor Products

L E corr ectly notes that, for purposes of compar ative adver tising, we h av e re co gnized a limit ed exception to the g ener al rule that a false-adve rtising plaintiff must prove damag es. I n Balance Dynamics Corp. v. Schmitt Industries, Inc. , we adopted the rea soning of an Eig hth Circuit

case that presumed damag es in instances of willful dece ption. 204 F.3d 683, 694–95 (6th Cir. 2000) (quoting Porous Me d i a Corp. v. Pall Corp. , 110 F.3d 1329, 1336 (8th Cir.1997)). We stressed, howeve r, that the presumption “extend[s] only to case s of compar ativ e adver tising wher e the plaintiff’s product was specific ally targ eted,” explaining that “[o] therwise

. . . ‘a p la in ti f f might enjoy

a windfall from a specula tive awa rd of damag es by simply being a competitor in the same marke t.’” Id. at 694 (quoting Porous Media , 110 F.3d at 1334–35). Recog nizi ng this boundary , we found the presumption overc ome by evidenc e of no ma

rketplac e injury

. Id. at 695.

For the first time in its re ply brief, L E appea rs to r ely on expert testimony specula ting that 3 Bhe lliom’s sales “no doubt wer e drawn from consumers who mig h t h a v e p u r c h a s e d 5

- H o ur Energ y .” (Appe llant Reply Br

. at 20. ) T h e o pening brief acknow ledg ed that the district court reje cted this arg ument, but makes no attempt to use this evidenc e to support false- adver tising damag es. ( See Appellant Br

. at 16, 20.) Be cause L E omitted this known arg ument from its opening brief, we deem it forfe ited. See, e .g. , United States v. Madde n , 403 F.3d 347, 351 n.1 ( 6th Cir. 2005). - 11 -No. 11-2090

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L E devotes considera

ble arg ument to the falsity of Bhe lliom’s adver tisements—an issue not

rea ched by the district court—but g ives scant attention to the willfulness and targ eted nature of these alleg ed misrepre sentations. For willfulness, L E offe rs only the testimony of an employ ee at Gar den State Nutritionals, the company that manufa cture d Bhe lliom’s “8-H R ENERGY” products, claiming that Bhe lliom knew its products lacke d a time-rele ase d formula. (Appe llant Br

. at 61 (citing R. 53, Ex

. 4 at 25, 28–29).) This evidenc e rela tes to statements appea ring in a specific press rele ase and on Bhe lliom’s “8-H R E NE R GY ” website, http:// www.8- hr.com, in which Bhe lliom

asser ts that its products use a time-rele ased formula, simil ar to that rec ommended by a Har vard study (her einaf ter “time-re lease d-for

mula ads”)

. (Appe llant B r. at 11–12, 58–59; R. 53, Ex s. 6 (linking product to Ha

rvar d study ), 7 (c rediting “the r evela tions of [a] g overnme nt study ” for inspiring the “desig n[] [of] a supplement that slowly rele ases its ener g y -boosting ingr edients in small incre ments throug hout the day ” ), 8 (p ro claiming “time-re lease d formula” ).) Neve rtheless, L E sug g ests that another adver

tisement qualifies for the presumption of damag es—an ad depicting the compar ative eff ectivene ss of Bhe lliom’s produc ts vis-à-v is other ener g y shots (R. 53, Ex

. 6)—without showing that Bhe lliom made a wi l l fu l misrepre sentation in that ad. Absent a showing of willfulness for that ad, we confine our re view for this aspect of L E’s false- adver tising claim to the time-re lease dformula a ds.

On that front, L E prese nts colora ble evidenc e that Bhe lliom knowing ly misstated its products’ time-rele ase capa biliti es, a point that Bhe lliom does not dispute. But the prese nce of willfulness, alone, does not war rant a presumption of damag es; the alleg ed misrepre sentation must

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targ et t he plainti ff’ s product. The Eig hth Circuit ex plained thi s limit ation in Porous Media : “I n a suit for money damag es wher e a defe ndant misrepre sented its own product but did not specific ally targ et a competing product, plaintif f m ay be only one of many competitors, and without proof of

causation and specific injury eac h competitor might rec eive a windfall unrela ted to its own damag e.” 1 1 0 F. 3 d at 1335–36; see also Harper House, Inc. v. Thomas Nelson, Inc. , 889 F.2d 197, 20 9

– 1 0 (9th Cir. 1989) (re

jecting a presumption of damag es wher e the defe ndants dece pt i v el y ad vertised their product, a binder-or g anizer, but plaintiff “pre sented no evidenc e of any injury causa lly rela ted
to the defe ndants’ d ec ep t i o n ”). The L anham Act’s g ener al instruction that damag es “shall constitute compensa tion and not a penalty ,” 15 U.S.C. § 1117(a) , l i k ew i s e s u p ports this view. P o r o u s Me d i a , 110 F.3d at 1336; see also 5 McCarthy on Trade marks and Unfa ir Competiti on § 27:31 (4th ed.), available at Westlaw MCCARTHY (“Since § 43 (a ) [ o f t h e L anham Act] was passed to protec t consumers as wel l as competitors, the courts are not and shoul d not be reluctant
to allow a commerc ial plaintiff to obtain an injunction even wher e the likelihood of provable impact

on the plaintiff m ay b e subtle and slight. Congr essional policy appea rs to encour ag e commerc ial firms to act a s the fable d ‘vica rious aveng er’ of consumer rig hts. . . . An injunction, as opposed to money damag es, is no windfall to the commerc ial plaintiff. An injunction protec ts both consumers and the commerc ial plaintiff from continuing acts of false adver tising. Money damag es, on the other hand, primarily aid only the competitor, and he is require d to satisfy a much highe r standard of proof as to injury

in order to r ecove r dama g es.” ( footnotes omitted)).

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Porous Media , which allowed a presumption of damag es, involved claims that the defe ndant made m i s re p re s en t ations about the plaintif f ’s product. Id. at 1331 & n.2. So did Balance Dynamics Corps , 204 F.3d at 686–87 (deta iling the defe ndant’ s consumer- aler t letter sug g esting that the plaintiff’s product was subject to environmenta l reg ulations and eventua lly would be banned, with consumers absorbing the costs of reg ulatory compl i an ce ), 694–95 (finding that the defe ndant’s letter “spec ifically targ eted [pl aintiff’s product], which was the only product of its kind

o n t h e m arket”). L E makes no such claim here

. At best, it notes that one of the time-rele ase d

formula ads acknow ledg es its “5-hour ENERGY” product as a competitor. (Appe llant Br

. at 61 (citing R. 53).) Sure enoug h, that ad acknow ledg es “5-hour ENERGY” and another (coinc identally , “6 Ho u r P OW ER”) as competitors in the ener g y supplement marke t, but it does not misrepre sent their formulas or effec tiveness. Rather, the pr ess-re lease states that the compe titors procla im ener g y boosts that match their products’ respe ctive five- and six -hour names and calls the competitors “succ essfu l

. ” I ndeed, the press rele ase offe rs only one direc t point of compar ison betwee n “8-H R ENERGY” and the competition: wher eas “the taste o f t h e drink and the inconvenienc e of the packa g ing make [energ y shots] a less than ideal choice for many individuals,” Bhe lliom’s “easy -to-swa llow capsule a voids the harsh taste of

ener g y drinks.” (

Id. ) 4

I ronica lly , Bhe lliom introduced its own energ y shot less than t hree y ear s afte r off ering its 4 product in pill form, despite its initial conce rns about the ener g y drink medium. The packa g ing for “8-H R ENERGY” pr oducts claims they are “#1 in Taste.” - 14 -No. 11-2090

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L E does not object to these g ener ic statements of a better- tasting, more convenie nt product,

nor could it. See, e.g. , Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc. , 326 F.3d 687, 699–700 (6th Cir. 2003) (explaining that vag ue, opinion-based claims about a product constitute

n o n -ac tionable “puff

ery ” under the L anham Act). L E also does not seek damag e-c ontrol costs arising from this ad. See Balance Dynamics Corp. , 204 F.3d at 692–93. Thus, at bottom, L E objects to the fac t that Bhe lliom oversold its own product, not that Bhe lliom m i s re p rese nted or
cause d confusion reg arding L E’s product. Fr om our revie w of the presume d -d am ag es case s, L E neede d to show that Bhe lliom’s willful mi s re p re s entations targ eted its products; it did not. We aff irm the district court’s de nial of dama g es for the fa lse-adve rtising c laim.
B. Injunctive Relief

To the extent that L E seeks injun ct i v e relief , howeve r, it stands on firmer g round. The district court stated its position o n t h i s i s s ue in two brief sentenc es, finding this option likewise fore closed by L E’s failure to show harm. (R. 86, Op. & Orde r at 13 (explaining that, despite a lower standard of proof for injunctive relief , L E still failed to “demonstra te a likelihood that [Bhelliom’s] adver tising has cause d or will cause harm to [L E]”).) Our case s do not require distinct evidenc e of harm as a prer equisite for injunctive relief

. See, e.g. , LidoC

hem, Inc. v. Stoller Enters., Inc. , 500 F. App’x 373, 380 (6th Cir. 2012); Balance Dynamics Corp. , 204 F.3d a t 693–94; Am. Council , 185 F.3d a t 618. I ndeed, in American Counc il , we he ld that

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s, LL C v. Bhelliom Enters. Corp. injunctive relief m ay b e obtained by showing only that the defe ndant’s repr esenta tions about its product have a t endenc y to dece ive consumers while rec ov er y o f d amag es require s proof of actua l consumer dece ption. This lower standard [for injunctive relief ] has arisen beca

use when an injunction is soug ht, courts may protec t the consumer without f ear of bestowing an undeser ved windfa ll on the plaintiff. Although plaintiff need not prese nt consumer survey s or testimony demonstrating actua l dece ption, it must prese nt evidenc e of some sort demonstrating that consumers w ere misled.

185 F.3d at 618 (interna l quotation marks and citations omitted). Prece dent there fore require s us to

reve rse the district c ourt’s contra ry judgme nt.

T h e questions rema in whether , and to what deg ree , the district court should have g ranted the injunctive relief soug ht by L E. To repe at, L E challeng es two primary repr esenta tions appea ring in Bhe lliom’s ads: (1) that “8-H R ENERGY” products use a time-rele ased- formula , and (2) that they provide energ y for eight hours. The latter claim has many manifestations, rang ing from t he name of the product to ads g uara nteeing eig ht hours of ener g y and a rudimentary bar g raph depicting

ener g y drinks’ compar ative eff ectivene ss. ( See R. 53, Ex s. 7, 9.) L E arg ues that all of these repr esenta tions wer e li tera lly false. Bhe lliom only defe nds the eight-hour- ener g y repr esenta tions, citing product testimonials and scientific evidenc e conce rning the eff ectivene ss of caf

feine , one of the primary ingr edients in its products. L E improperly sug g ests that we should construe fac ts in its favor in deter

mining falsity , despite the fac t that it now asks for summary judgme nt. Even so, it does
not addre ss the key fac tor identified in American Council : the misrepre sentation’s t endency to dece ive consumer s. Am. Council , 185 F.3d a t 618.

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s, LL C v. Bhelliom Enters. Corp.

We may overlook that fac tor with reg ard to the time-rele ased- formula ad s b ecause American Council rec og nized a leg al presumption of consumer dece ption for a competitor’s literally false adver

tisements. 185 F.3d at 614; see also LidoC hem, Inc. , 500 F. App’x a t 380. During oral arg ument, Bhe lliom conc eded these false statements, but note d that the statements only conce rned their “8- HR ENERGY” pills. They also assure us they

have disc ontinued these a ds. That may be
so, but this develop m en t d oes not appea r in the rec ord. To the extent these false adver tisements

rema in at issue, we r emand f or the district cour

t to fashion appropr iate injunctive re lief.

But we cannot presume deception wit h regard to the m y riad eight-hour -ene rg y claims, the falsity of which Bhe lliom g enuinely disputes. I n the absenc e of a literally false statement, American Council instructs that a plaintiff may obtain injunctiv e re l i ef if the misleading repr esenta tion “tend[s] to dece ive a substantial portion of the intended audienc e.” 185 F.3d at 618. “Althoug h plaintiff need not prese nt consumer survey s or testimony demonstrating actua l dece ption, it must prese nt evidence of some sort demonstra ting that c onsumers we re misled.” Id.

Be cause the district c ourt did not consider these fac tors in r esolving L E’s fa lse-adve rtising claims, we think it prudent to allow the district court, in the first instance, to resolve whether any of Bhe lliom’s adver

tisements procla imi n g ei gh t hours of ener g y contained literal falsities or misleading repr esenta tions, and which (if any ) tend to dece ive a substantial portion of the intended audienc e.

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s, LL C v. Bhelliom Enters. Corp.

V.

For the above rea sons, we REVERSE the district court’s judgme nt on the trade markinfring ement claim. We also AFF I RM I N PART and REVERSE I N PART the dis t ri ct co urt’s judgme nt on the false- adver tising claim, AFF I RMI

NG the denial of damag es and REVERSI NG the denial of injunctive relief with instructions. We REMAND for further proce eding s consistent with this opini on.

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