UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

INNOVATION VENTURES, LLC, 

 Plaintiff/Counter-Defendant, 

 Case No. 09-13783 

 Hon. Lawrence P. Zatkoff 

v. 

BHELLIOM ENTERPRISES CORP., 

 Defendant/Counter-Plaintiff. 

_______________________________________/ 

OPINION AND ORDER 

AT A SESSION of said Court, held in the United States Courthouse, 

in the City of Port Huron, State of Michigan, on August 26, 2014 

PRESENT: THE HONORABLE LAWRENCE P. ZATKOFF 

 UNITED STATES DISTRICT JUDGE

I. INTRODUCTION 

 Currently before the Court is Plaintiff’s Motion for Permanent Injunction and Renewed 

Summary Judgment [dkt. 109]. The motion is fully briefed. The Court finds that the facts and 

legal arguments are adequately presented in the parties’ papers such that the decision process 

would not be significantly aided by oral argument. Therefore, pursuant to E.D. Mich. L.R. 

7.1(f)(2), it is hereby ORDERED that the motion be resolved on the briefs submitted. For the 

reasons set forth below, Plaintiff’s Motion for Permanent Injunction and Renewed Summary 

Judgment is GRANTED IN PART and DENIED IN PART. 

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II. BACKGROUND 

A. FACTUAL AND PROCEDURAL BACKGROUND

The facts of this case are well established in the Court’s previous Orders. As established, 

Plaintiff Innovation Ventures, LLC (“Plaintiff”), markets and sells a two-ounce energy shot 

using the “5-hour ENERGY” mark. Defendant Bhelliom Enterprises Corporation (“Defendant”) 

markets and sells energy pills and two-ounce energy shots using the “8-HR” and “ENERGY” 

marks on its products. Initially, Defendant sold energy pills under the name “Mr Energy® 8-HR 

MAXIMUM STRENGTH ENERGY,” and then developed its two-ounce shot sold under the 

same name. On both of Defendant’s products, however, the words “8-HR” and “ENERGY” 

appear in larger print than “Mr Energy®” and “MAXIMUM STRENGTH”. 

On September 24, 2009, Plaintiff filed its complaint against Defendant under the Lanham 

Act, 15 U.S.C. § 1125(a), for trademark infringement and false advertising, as well as a claim for 

common law trademark infringement. Defendant asserted counterclaims for infringement of 

Defendant’s registered trademark, “Mr Energy®,” trademark dilution, and false designation of 

origin and sponsorship under the Lanham Act. After Plaintiff filed its complaint, both parties 

filed numerous motions for this Court to consider. 

On July 26, 2011, the Court granted Defendant’s motion for summary judgment, 

dismissing Plaintiff’s trademark infringement claim (the “Original Order”) [dkt. 86]. The Court 

found that, using the traditional Sixth Circuit trademark-infringement factors (the “trademark 

factors”),1

 three factors supported infringement and four did not, while one factor was 

inapplicable. As such, the Court found in its Original Order that Plaintiff failed to demonstrate 

the requisite likelihood of confusion between Plaintiff’s mark and Defendant’s mark, and thus 

failed to state a claim upon which relief could be granted. 

 

1 See Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 630 (6th Cir. 2002). 

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The Court’s Original Order also denied Plaintiff’s motion for summary judgment 

regarding Plaintiff’s false advertising claims [dkt. 86]. The Court found that Plaintiff failed to 

demonstrate a causal link between the alleged false advertising and any actual harm to Plaintiff. 

As such, the Court found that Plaintiff was not entitled to damages or injunctive relief and 

dismissed Plaintiff’s false advertising claims. 

Finally, the Court made rulings on several other motions presented by Plaintiff. The 

Court granted Plaintiff’s motion for summary judgment dealing with Defendant’s counterclaims. 

The Court denied as moot Plaintiff’s motion for summary judgment with respect to Defendant’s 

affirmative defenses, as the Court had dismissed all of Plaintiff’s claims. Finally, the Court 

denied as moot both Plaintiff’s motion to strike evidence and argument presented by Defendant 

and Plaintiff’s motion to strike Defendant’s untimely motion for summary judgment. 

B. SIXTH CIRCUIT OPINION

Plaintiff filed a timely appeal of this Court’s Original Order. On June 28, 2013, the Sixth 

Circuit reversed the Original Order with regards to Plaintiff’s trademark-infringement claim [dkt. 

90]. The Sixth Circuit held that its intervening decision in Innovation Ventures, LLC v. N.V.E., 

Inc., 694 F.3d 723 (6th Cir. 2012) (“NVE”) required such reversal. Specifically, the Sixth Circuit 

held that NVE and the instant matter dealt with a “similar trademark claim,” that both cases 

presented essentially the same split of the trademark factors, and that the Sixth Circuit ruled in 

NVE that such a split was “evenly balanced” and counseled “in favor of not granting summary 

judgment.” The Sixth Circuit thus held that 

[c]onsidering the similarity of the products, the record evidence, 

and the district court’s rationale, one would expect that our 

judgment in NVE should control here, requiring reversal of the 

district court’s non-infringement judgment . . . In our view, little 

distinguishes this case from NVE, and we agree with [Plaintiff] that 

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NVE requires reversal of the district court’s grant of summary 

judgment to [Defendant] on this infringement claim. 

The Sixth Circuit also partially reversed this Court’s ruling on Plaintiff’s false advertising 

claims. While it agreed with this Court’s Original Order denying Plaintiff’s request for damages 

for its false advertising claims, the Sixth Circuit concluded that Plaintiff’s request for injunctive 

relief stood on firmer ground. The Sixth Circuit held that this Court impermissibly required 

Plaintiff to show distinct evidence of harm as a prerequisite for injunctive relief. The Sixth 

Circuit thus concluded that Plaintiff’s two false advertising claims must be re-examined. One 

such claim – challenging Defendant’s representation that “8-HR ENERGY” products actually 

provide energy for eight hours – involved issues the Sixth Circuit held this Court had not 

previously considered. As such, the Sixth Circuit delivered specific instructions to this Court to 

“resolve whether any of [Defendant’s] advertisements proclaiming eight hours of energy 

contained literal falsities or misleading representations, and which (if any) tend to deceive a 

substantial portion of the intended audience.” 

The second of Plaintiff’s false advertising claims – involving Defendant’s allegedly 

improper assurance that “8-HR ENERGY” products use a “time-released-formula” – forms the 

basis of the instant motion before the Court. With regards to this claim, the Sixth Circuit held 

that Defendant conceded its advertisements representing a “time-released-formula” were false 

statements. The Sixth Circuit noted, though, that Defendant argued such statements were only 

ever made in advertisements for its “8-HR ENERGY” pills, and that these advertisements have 

been discontinued. The Sixth Circuit, relying on this information, informed the Court that “[t]o 

the extent these false advertisements remain at issue, we remand for the district court to fashion 

appropriate injunctive relief.” 

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C. PLAINTIFF’S CURRENT MOTION

In the instant motion, Plaintiff relies on the opinion of the Sixth Circuit to request that 

this Court permanently enjoin Defendant from advertising their products as “timed release,” 

“sustained release,” or releasing ingredients slowly over time in any future advertisements. In 

addition to this requested relief, Plaintiff asks this Court to reconsider three motions previously 

filed by Plaintiff. Plaintiff first requests this Court reconsider Plaintiff’s motion for summary 

judgment that Defendant’s “8-HR ENERGY” durational claims are false [dkt. 52]. Plaintiff also 

requests this Court reconsider its motion to strike evidence and argument presented by Defendant 

on summary judgment [dkt. 67]. Finally, Plaintiff requests that this Court reconsider Plaintiff’s 

motion for summary judgment on Defendant’s counterclaims and affirmative defenses [dkt. 49]. 

III. ANALYSIS 

A. PERMANENT INJUNCTIVE RELIEF IS WARRANTED 

As established by the Sixth Circuit, the Lanham Act provides that a district court may 

grant injunctive relief to prevent infringement of a party’s registered mark. 15 U.S.C. § 1116. 

Whether such relief is warranted may be determined by a court weighing the following four 

factors: 

(1) whether the movant has shown that he or she would suffer irreparable harm if the 

permanent injunction is not issued; 

(2) whether remedies available at law, such as monetary damages, are insufficient to 

adequately compensate the movant; 

(3) whether the balance of hardship between the two parties weighs in favor of the 

movant; and 

(4) whether the public interest would be served by the issuance of a permanent 

injunction. 

eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006) 

(the “MercExchange factors”). While potentially helpful, the Sixth Circuit has noted that 

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“[t]hese factors simply guide the discretion of the court; they are not meant to be rigid and 

unbending requirements.” McNeilly v. Land, 684 F.3d 611, 615 (6th Cir. 2012) (internal 

citations omitted). 

 The Sixth Circuit stated that Plaintiff presented evidence that Defendant “knowingly 

misstated its products’ time-release capabilities” by falsely claiming its product was the result of 

a Harvard study that inspired “design of a supplement that slowly releases its energy-boosting 

ingredients in small increments throughout the day.” The Sixth Circuit further stated that 

Defendant did not dispute the evidence that it had knowingly misstated its products’ time-release 

capabilities. While Defendant did argue that no such advertisements existed anymore, the Sixth 

Circuit concluded that there was no record evidence to support such a claim. Instead, the Sixth 

Circuit ordered this Court to “fashion appropriate injunctive relief” regarding Defendant’s 

concededly false statements. 

 As such, the Court finds that permanently enjoining Defendant from falsely advertising in 

a manner Defendant admits to previously committing is warranted. Although Defendant argues 

that such relief is inappropriate, the Court is not convinced. Defendant argues that it has updated 

the products on its website to include only those with labels that adhere to the Sixth Circuit’s 

opinion, and thus asserts its false advertising regarding “time release” and “sustained release” no 

longer remain at issue. The Court finds Defendant’s assertion both disingenuous and inaccurate: 

Plaintiff provided this Court with evidence2

 that Defendant continued to use such advertisements 

after the Sixth Circuit released its opinion. Further, the Court shares the same concerns 

illuminated by the Sixth Circuit; indeed, without judicial action, the Court finds that there is 

 

2

 In its reply to Defendant’s response, Plaintiff provided the Court with evidence that Defendant’s website contained 

advertisements with products that contained the language the Sixth Circuit ruled Defendant admitted was false. 

These advertisements appeared on Defendant’s website after it conceded to the Sixth Circuit they contained false 

information and after Defendant assured this Court that Defendant’s use of “time release” and “sustained release” in 

advertisements did not remain at issue. 

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nothing preventing Defendant from continuing to utilize false advertisements of this nature in the 

future. As such, the Court finds Plaintiff’s request for a permanent injunction – and the 

circumstances surrounding its request – satisfies the MercExchange factors listed above. The 

Court will thus enter “appropriate injunctive relief” permanently enjoining Defendant from 

falsely advertising in the manner in which Defendant admits it previously advertised. 

B. PLAINTIFF’S MOTIONS FOR RECONSIDERATION ARE DENIED

In addition to requesting permanent injunctive relief, Plaintiff asks this Court to 

“reconsider” three previously filed motions: Plaintiff’s motion for summary judgment that 

Defendant’s advertising is false [dkt. 52], Plaintiff’s motion to strike evidence and argument 

presented by Defendant on summary judgment [dkt. 67], and Plaintiff’s motion for summary 

judgment on Defendant’s counterclaims and affirmative defenses [dkt. 49]. The Court will 

address each request in turn. 

I. PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT THAT DEFENDANT’S 

ADVERTISING IS FALSE

While the Sixth Circuit explicitly concluded injunctive relief was warranted regarding 

Defendant’s “time-released-formula” advertisements, it found that Plaintiff’s second false 

advertising claim – whether Defendant’s “8-HR ENERGY” products provide energy for eight 

hours – was less clear cut. Indeed, the Sixth Circuit concluded that Defendant genuinely 

disputed that its eight-hour-energy claims were false. This genuine dispute led the Sixth Circuit 

to order this Court to resolve “whether any of [Defendant’s] advertisements proclaiming eight 

hours of energy contained literal falsities or misleading representations, and which (if any) tend 

to deceive a substantial portion of the intended audience.” 

Plaintiff asserts that all of these aforementioned issues were fully briefed in its motion for 

summary judgment that Defendant’s advertising is false, and that the Sixth Circuit’s order makes 

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this motion ripe for a decision. This Court does not agree, finding that this would misinterpret 

the instructions given by the Sixth Circuit. 

Both parties – along with this Court and the Sixth Circuit – agree on the factors Plaintiff 

must demonstrate to present a viable false-advertising claim and request for injunctive relief 

under the Lanham Act. These factors, as delineated by the Sixth Circuit, are: 

1) that Defendant has made false or misleading statements of fact concerning his own 

product or another’s; 

2) the statement actually or tends to deceive a substantial portion of the intended 

audience; 

3) the statement is material in that it will likely influence the deceived customer’s 

purchasing decisions; and 

4) the advertisements were introduced into interstate commerce. 

Am. Council of Certified Podiatric Physicians & Surgeons v. Am. Bd. Of Podiatric Surgery, Inc., 

185 F.3d 606, 613 (6th Cir. 1999) (“American Council factors”). Despite agreeing on this 

standard, Plaintiff requests this Court to reconsider a motion that does not adequately address all 

of these factors. Plaintiff’s motion for summary judgment that Defendant’s advertisements are 

false completely fails to address the second American Council factor: whether the allegedly false 

or misleading statements of fact actually or tends to deceive a substantial portion of the audience. 

Instead, Plaintiff argues that Defendant’s “8-HR ENERGY” durational energy claim is literally 

false, and thus does not require proof that this statement tends to deceive a substantial portion of 

the intended audience. 

 The Sixth Circuit held, however, that there was a genuine dispute of material fact as to 

whether Defendant’s eight-hour-energy claims were false. Indeed, the Sixth Circuit explicitly 

rejected Plaintiff’s attempts to argue literal falsity before it, finding that Plaintiff “does not 

address the key factor identified in American Council: the misrepresentation’s tendency to 

deceive consumers.” Dkt. # 104, p. 16. 

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As such, the Court finds that additional briefing from both parties is necessary to resolve 

Plaintiff’s durational false advertising claim. Therefore, the Court will order the parties to 

provide additional briefing to address the following issues: 

1) which (if any) of Defendant’s advertisements proclaiming eight hours of energy 

contained literal falsities; 

2) which (if any) of Defendant’s advertisements proclaiming eight hours of energy 

contained misleading representations; and 

3) which (if any) of the above referenced advertisements tend to deceive a substantial 

portion of the intended audience. 

The Court also requires both parties to address the remaining American Council factors. As the 

Court finds that this additional briefing is needed to satisfy the order of the Sixth Circuit, it will 

not reconsider Plaintiff’s motion for summary judgment that Defendant’s advertising is false. 

II. PLAINTIFF’S MOTION TO STRIKE EVIDENCE AND ARGUMENT PRESENTED BY 

DEFENDANT ON SUMMARY JUDGMENT

Plaintiff requests that this Court reconsider its motion to strike the evidence and 

arguments previously presented by Defendant on summary judgment. Specifically, Plaintiff 

alleged that Defendant attached numerous exhibits in various filings which contained evidence 

that was “not competent” and thus should be excluded. The Court originally dismissed 

Plaintiff’s motion as moot, finding “none of the challenged evidence or argument is relevant to 

the Court’s decision.” 

As the Court is not reconsidering any of the motions previously before it, the Court once 

again finds that none of the challenged evidence or argument presented in Plaintiff’s motion is 

relevant at this time. Therefore, the Court again dismisses as moot Plaintiff’s motion to strike. 

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III. PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT ON DEFENDANT’S 

COUNTERCLAIMS AND AFFIRMATIVE DEFENSES

Finally, Plaintiff requests that this Court reconsider Plaintiff’s motion for summary 

judgment on Defendant’s counterclaims and affirmative defenses [dkt. 49]. While this Court 

granted Plaintiff’s motion with regards to Defendant’s counterclaims in its Original Order, it 

denied Plaintiff’s motion with respect to Defendant’s affirmative defenses as moot, given that the 

Court dismissed all of Plaintiff’s claims on summary judgment. Plaintiff now asserts that, as the 

Sixth Circuit reversed the dismissal of Plaintiff’s trademark infringement claim, Plaintiff’s 

motion for summary judgment on Defendant’s affirmative defenses is no longer moot. 

The Court is not convinced that reconsideration of this motion is warranted. Beyond the 

glaring technical issues with Plaintiff’s motion for summary judgment on Defendant’s 

affirmative defenses,3

 the Court finds that consideration of this motion at this time would not 

adhere to the instructions given by the Sixth Circuit. In its opinion reversing this Court’s noninfringement judgment, the Sixth Circuit determined that this case “is a close call and could, on a 

fair comparison of the evidence to date, be decided either way.” Dkt. # 104, p. 9. Indeed, the 

Sixth Circuit specifically left the “remaining factual disputes for the factfinder.” Id., at p. 10. 

Plaintiff’s request to reconsider its motion for summary judgment on Defendant’s affirmative 

defenses completely ignores the Sixth Circuit’s opinion that legitimate “factual disputes” 

 

3

 Although Plaintiff seeks “summary judgment” on Defendant’s affirmative defenses, the Court finds that Plaintiff is 

actually seeking to strike Defendant’s responsive pleadings. As such, the Court will treat Plaintiff’s motion for 

summary judgment as a motion to strike. See Dynasty Apparel Indus. Inc. v. Rentz, 206 F.R.D. 603, 606 (S.D. Ohio 

2002) (“A motion for summary judgment is not the proper vehicle with which to test the legal sufficiency of a 

pleading.”). As established by the Sixth Circuit, “the action of striking a pleading should be sparingly used by the 

courts. It is a drastic remedy to be resorted to only when required for the purposes of justice. The motion to strike 

should be granted only when the pleading to be stricken has no possible relation to the controversy.” Brown & 

Williamson Tobacco Corp. v. United States, 201 F.2d 819 (6th Cir. 1953). Additionally, Plaintiff’s request to strike 

Defendant’s responsive pleadings came a full 13 months after Defendant originally filed its answer, well outside the 

timeline provided by the Federal Rules of Civil Procedure. See Fed. R. Civ. P. 12(f)(2) (stating motions seeking to 

strike an insufficient defense from a pleading must be filed within 21 days after being served with the pleading). 

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regarding Plaintiff’s trademark infringement claim persist and should be left “for the factfinder.” 

As such, the Court finds it inappropriate and inapposite to the Sixth Circuit’s order to rule on 

Defendant’s potential affirmative defenses to such a claim. 

IV. CONCLUSION 

 Accordingly, IT IS HEREBY ORDERED that Plaintiff’s Motion for Permanent 

Injunction and Renewed Summary Judgment [dkt. 109] is GRANTED IN PART and DENIED 

IN PART. Specifically, this Court GRANTS Plaintiff’s request for permanent injunctive relief. 

Such relief will be entered concurrently with this Order. 

 IT IS FURTHER ORDERED that Plaintiff’s request to reconsider: (1) its motion for 

summary judgment that Defendant’s “8-HR ENERGY” durational claims are false [dkt. 52], 

(2) its motion to strike evidence and argument presented by Defendant on summary judgment 

[dkt. 67], and (3) its motion for summary judgment on Defendant’s counterclaims and 

affirmative defenses [dkt. 49] is DENIED. 

IT IS FURTHER ORDERED that Plaintiff must provide the Court with additional 

briefing regarding Plaintiff’s durational false advertising claim. Such briefing must address the 

following issues: 

1) which (if any) of Defendant’s advertisements proclaiming eight hours of energy 

contained literal falsities; 

2) which (if any) of Defendant’s advertisements proclaiming eight hours of energy 

contained misleading representations; and 

3) which (if any) of the above referenced advertisements tend to deceive a substantial 

portion of the intended audience. 

The Court also requires both parties to address the remaining American Council factors. This 

briefing shall contain specific and accurate legal support – including pinpoint citations to 

authority relied upon – and shall be limited to 10 pages. This briefing must be submitted no later 

than 14 days from entry of this Order. Any response Defendant wishes to file shall be limited to 

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10 pages and must be submitted no later than 7 days after entry of Plaintiff’s additional briefing. 

No reply brief shall be permitted. 

 IT IS SO ORDERED. 

s/Lawrence P. Zatkoff 

 HON. LAWRENCE P. ZATKOFF 

Date: August 26, 2014 U.S. DISTRICT JUDGE 

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