RECOMMENDED FOR PUBLICATION

Pursuant to Sixth Circuit I.O.P. 32.1(b)

File Name: 22a0098p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

SUNLESS, INC.,

Plaintiff-Appellant,

v.

PALM BEACH TAN, INC.; AMERICAN TANNING, CO.;

ASHLEY LYNN’S, INC.; NORTH CENTRAL TAN, LLC; 

PACIFIC BEACH TAN, INC.; OLD TRINITY PARTNERS, 

LLC,

Defendants-Appellees.

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No. 21-3616

Appeal from the United States District Court

for the Northern District of Ohio at Akron.

No. 5:21-cv-00248—Solomon Oliver, Jr., District Judge.

Argued: January 12, 2022

Decided and Filed: May 6, 2022

Before: GILMAN, KETHLEDGE, and LARSEN, Circuit Judges.

_________________

COUNSEL

ARGUED: Eric A. Prager, VENABLE LLP, New York, New York, for Appellant. Lisa H. 

Meyerhoff, SEYFARTH SHAW LLP, Houston, Texas, for Appellees. ON BRIEF: Eric A. 

Prager, VENABLE LLP, New York, New York, Martin L. Saad, VENABLE LLP, Washington, 

D.C., Matthew D. Harper, Stephen E. Chappelear, EASTMAN & SMITH, LTD., Toledo, Ohio, 

for Appellant. Lisa H. Meyerhoff, Myall S. Hawkins, SEYFARTH SHAW LLP, Houston, 

Texas, Vince Smolczynski, SEYFARTH SHAW LLP, Charlotte, North Carolina, John F. Marsh, 

Elizabeth E. Cary, BAILEY CAVALIERI LLC, Columbus, Ohio, Robert J. Carty, Jr., 

NICHOLS BRAR WEITZNER & THOMAS LLP, Houston, Texas, for Appellees.

>
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 2

_________________

OPINION

_________________

LARSEN, Circuit Judge. Sunless, Inc. sells tanning booths and accompanying spray tan 

solution under the “Mystic Tan” mark. Sunless claims that applying Mystic Tan solution in a 

Mystic Tan booth results in a “Mystic Tan Experience.” Palm Beach, Inc. owns and franchises a 

chain of tanning salons. It owns a number of Mystic Tan-branded booths, and it used to buy 

Mystic Tan-branded tanning solution to use in them. Indeed, it had no choice, because the 

Mystic Tan booths were designed to accept only Mystic Tan solution. But now Palm Beach has 

jury-rigged the booths so that they will operate with its own distinctly branded spray tan solution, 

unapproved by Sunless. Sunless sought a preliminary injunction under the Lanham Act, arguing 

that the jury-rigging is likely to confuse consumers into believing they are getting a genuine 

“Mystic Tan Experience” when they are not. The district court denied the motion on the ground 

that Sunless had failed to show, at this stage of the litigation, that consumers in Palm Beach’s 

salons would be confused. We affirm.

I.

Sunless manufactures and sells tanning booths and spray tan solution under the “Mystic 

Tan” trademark. Sunless claims that its booths and solutions are inextricable: The booths work 

only with authorized solutions, verified by a barcode; both the booth and the solution 

prominently display the “Mystic Tan” mark; and the booths were programed so that audio and 

visual cues would invite customers to enjoy their “Mystic Tan.” Sunless claims that the booth 

and solution together create the “Mystic Tan Experience,” and that it has “expended considerable 

resources in advertising, promoting, and selling MYSTIC TAN® brand products and services,” 

though it points to no marketing of a “Mystic Tan Experience” in particular.

Palm Beach, a chain of indoor tanning salons, is Sunless’s biggest customer. It purchases 

Mystic Tan booths, and it used to purchase Mystic Tan solution. However, due to alleged 

quality-control and shipping problems, Palm Beach stopped buying the solution and started 

producing its own, the “Premier Sunless Solution,” which bears its own distinct mark. At first, 

Palm Beach worked with Sunless, asking it to disable the barcode system that prevented Palm 
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 3

Beach from using its Premier Solution in the Mystic Tan booths, but Sunless refused. So Palm 

Beach created a workaround: taping a recycled Sunless barcode inside the machine to 

bamboozle the booths into accepting the Premier solution in lieu of Sunless’s. Palm Beach 

instructed its franchisees to do the same.

Sunless filed suit, alleging that this workaround violates the Lanham Act, 15 U.S.C. 

§§ 1114, 1125. It then moved for a preliminary injunction. The district court denied the motion 

on the ground that Sunless had not established a strong likelihood of prevailing on the merits of 

its trademark claims or demonstrated irreparable harm. Sunless now appeals.

II.

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on 

the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the 

balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. 

Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). The likelihood of success on the merits is a 

question of law that we review de novo. Speech First, Inc. v. Schlissel, 939 F.3d 756, 763 (6th 

Cir. 2019). And a failure to establish a likelihood of success on the merits “‘is usually fatal’ to a 

plaintiff’s quest for a preliminary injunction.” Enchant Christmas Light Maze & Mkt. v. Glowco, 

LLC, 958 F.3d 532, 539 (6th Cir. 2020) (quoting Gonzales v. Nat’l Bd. of Med. Exam’rs, 225 

F.3d 620, 625 (6th Cir. 2000)). We review the district court’s findings of fact under the clear 

error standard, id. at 536, and the ultimate determination of whether the four factors weigh in 

favor of granting relief under the abuse of discretion standard, Speech First, 939 F.3d at 763.

We start with the likelihood of success on the merits. “The touchstone of liability under 

[15 U.S.C.] § 1114 is whether the defendant’s use of the disputed mark is likely to cause 

confusion among consumers regarding the origin of the goods . . . .” Daddy’s Junky Music 

Stores, Inc. v. Big Daddy’s Fam. Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997). The same 

standard controls claims brought under 15 U.S.C. § 1125. See Progressive Distrib. Servs. v. 

United Parcel Serv., Inc., 856 F.3d 416, 424 (6th Cir. 2017). In this circuit, the usual 

way to prove consumer confusion is by using the Frisch factors, an eight-factor, totality-of-thecircumstances test. See Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 4

670 F.2d 642, 648 (6th Cir. 1982) ((1) strength of the plaintiff’s mark; (2) relatedness of the 

goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; 

(6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark; and 

(8) likelihood of expansion of the product lines). But Sunless made no attempt to analyze these 

factors in the district court. So the district court found that Sunless had not “established a 

likelihood of consumer confusion under . . . Frisch.” Sunless, Inc. v. Palm Beach Tan, Inc., No. 

5:21 CV 248, 2021 WL 4777439, at *4 (N.D. Ohio June 30, 2021). In other words, the district 

court concluded that Sunless had forfeited its opportunity to show consumer confusion under the 

Frisch factors. We agree.

To the extent Palm Beach suggests that the district court was “required” to analyze the 

Frisch factors despite the parties’ failure to brief them, that view is mistaken. We have chided 

district courts for failing to explain their assessment of the parties’ arguments under Frisch. See 

Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 413 (6th Cir. 2006) (suggesting that the 

district court erred by finding trademark infringement under Frisch while giving “no indication 

of its analysis” or “reasoning,” but noting that such silence was “not, standing alone, a reversible 

error”); Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 & n.4 (6th 

Cir. 1991) (stating that a “thorough and analytical treatment” of Frisch must “be attempted,” 

though perhaps not “where there is no difference between the marks of directly competitive 

goods/services”). And, to be clear, that admonition still holds. But we have never suggested that 

when the parties themselves have failed to offer any argument under Frisch, the district court 

must make the parties brief the factors or face reversal. Other than assuring itself of its own 

jurisdiction, see Prime Rate Premium Fin. Corp. v. Larson, 930 F.3d 759, 764 (6th Cir. 2019), 

the district court was under no obligation to consider arguments not presented to it, see Threat v. 

City of Cleveland, 6 F.4th 672, 681 (6th Cir. 2021).

Still, Sunless did not neglect the Lanham Act’s requirement that it show a likelihood of 

confusion. Instead of presenting its case using the Frisch test, it took another path, arguing that 

it could show consumer confusion under a Second Circuit case, El Greco Leather Products Co. 
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 5

v. Shoe World, Inc., 806 F.2d 392 (2d Cir. 1986).1 This is likely why: Most cases deploying the 

Frisch factors (or the Second Circuit’s equivalent, see Polaroid Corp. v Polarad Elecs. Corp., 

287 F.2d 492, 495 (2d Cir. 1961)), involve a comparison of similar marks on similar products. 

The factors help decide whether the products and marks are “similar enough to raise an issue of 

likelihood of confusion.” 5 Louis Altman & Malla Pollack, Callmann on Unfair Competition, 

Trademarks, and Monopolies § 21:11, Westlaw (database updated December 2021). But 

El Greco didn’t fit this pattern; it involved one product (shoes) bearing a genuine mark 

(CANDIE’S). The mark’s owner rejected a production run from its manufacturer due to a lack 

of quality-control. El Greco, 287 F.2d at 394. The manufacturer then turned around and sold the 

shoes bearing the CANDIE’S mark to a third-party retailer, who sold the shoes to the public 

without alteration. Id. The trademark owner sued the retailer for trademark infringement. But, 

presumably because the products and the marks were identical (except, perhaps, for the quality), 

the retailer didn’t bother arguing that customers could tell the shoes apart. And the Second 

Circuit didn’t deploy its version of the Frisch factors in assessing the likelihood of consumer 

confusion. Id. at 395–96.

Instead, the retailer argued that the shoes it sold were “genuine,” so the sale could not be 

trademark infringement. Id. at 395; see also Brilliance Audio, Inc. v. Haights Cross Commc’ns, 

Inc., 474 F.3d 365, 369 (6th Cir. 2007) (discussing the “first sale” doctrine, which allows resale 

of a genuine trademarked item where the seller does no more than stock, display, and resell the 

item). The Second Circuit rejected this argument, concluding that the shoes were not “genuine” 

because the trademark owner had been deprived of “[o]ne of the most valuable and important 

protections afforded by the Lanham Act[:] . . . the right to control the quality of the goods 

manufactured and sold under the holder’s trademark.” El Greco, 806 F.2d at 395. Although the 

CANDIE’S mark was genuine, the otherwise-identical shoes were not genuine CANDIE’S

products because the owner’s quality-control mechanisms had been undermined. Id. Under 

1Palm Beach argues that Sunless failed to properly raise El Greco as an alternative to Frisch. That 

argument is puzzling. The district court noted that “Sunless relie[d]” on El Greco “[i]n making th[e] argument” that 

Palm Beach’s “circumvention of Sunless’[s] quality control measures has confused . . . consumers.” Sunless, 2021 

WL 4777439, at *5. And it also noted Palm Beach’s proffered distinctions between the instant case, “El Greco[,]

and the other cases Sunless cites.” Id. Because Sunless explicitly pressed the El Greco argument, there was no 

forfeiture.
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 6

these circumstances, the court thought it “plain” that consumer confusion would likely result 

from the sale of the shoes. Id. at 396; see also Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 

243 (2d Cir. 2009) (finding plaintiff likely to succeed on the merits of its trademark claim where 

defendant legally purchased plaintiff’s perfume but removed the UPCs from the label before 

resale); Shell Oil Co. v. Com. Petroleum, Inc., 928 F.2d 104, 106 (4th Cir. 1991) (affirming grant 

of injunction prohibiting defendant from selling Shell oil because it wasn’t complying with 

Shell’s stringent quality-control standards).

Here, Sunless casts Palm Beach’s workaround (tricking the Mystic Tan-branded booths 

into accepting non-Mystic Tan solutions) as akin to what happened in El Greco. On Sunless’s 

telling, Palm Beach is using Sunless’s mark to sell a non-genuine “Mystic Tan Experience” that 

has circumvented Sunless’s quality-control measures. Whether or not we would adopt the El 

Greco test, Sunless was free to try to persuade the district court (and us) to adopt it as a way to 

show the “likelihood of confusion” required by the statute.

The problem for Sunless is that it didn’t do enough to show that it was entitled to relief 

under its proposed El Greco test. The district court correctly recognized that “[a]t root,” the 

parties’ dispute centers on whether the “‘Mystic Tan Experience’ is an indivisible whole.” 

Sunless, 2021 WL 4777439, at *5. The district court determined that Sunless had not laid a 

sufficient factual predicate to show that consumers view Mystic Tan booths and the solutions 

they spray as a single, integrated product (a “Mystic Tan Experience”), rather than two distinct 

products that can be mixed and matched. After all, Palm Beach never conceded that it sells a 

“Mystic Tan Experience,” much less did it argue, like the defendant in El Greco, that its tanning 

experience is a genuine “Mystic Tan.” Cf. El Greco, 806 F.2d at 395. To the contrary, Palm 

Beach’s position is that there is no such thing. Palm Beach says there are two products: booths 

and solutions, each displaying its own distinct mark. Although Palm Beach continues to use the 

Mystic Tan-branded booths (which it owns outright), it neither uses nor claims to use Mystic Tan 

solutions. So, in Palm Beach’s view, the El Greco test simply does not apply.

The district court did not err when it concluded that Sunless had failed, at this stage, to 

show that it is entitled to preliminary relief under El Greco. Sunless’s evidence established that 

its booths, which bear the Mystic Tan logo, were manufactured to work only with its solution. It 
No. 21-3616 Sunless, Inc. v. Palm Beach Tan, Inc., et al. Page 7

also brought forward three consumer complaints confusing Palm Beach’s tanning solution with a 

Mystic Tan product. But the district court gave these complaints little weight, calling them 

“unverified.” Sunless, 2021 WL 4777439, at *2. Meanwhile, Palm Beach presented evidence 

that the mark it displayed on its tanning solution doesn’t resemble Sunless’s in the least, that it 

posted disclaimers at the front of the store and on each booth informing customers that it does 

not use Mystic Tan solutions in the booths, that it changed the audio and visual cues in the 

booths, and that, shortly before the lawsuit was filed, it ceased external marketing of “Mystic 

Tan.” And no customers were confused after that.

The district court reviewed this evidence and concluded that, based “on the current record 

and given the parties’ various arguments at this point,” Sunless had not produced sufficient 

evidence showing “that the ‘Mystic Tan Experience’ is an indivisible whole.” Sunless, 2021 WL 

4777439, at *5. And, absent such a showing, Sunless could not show a likelihood of consumer 

confusion under El Greco. Sunless, therefore, could not establish a likelihood of success on the 

merits. We cannot say that the district court erred in this assessment.

Having concluded that Sunless had not shown a likelihood of success on the merits, the 

district court correctly noted that Sunless was not entitled to a presumption of irreparable harm. 

See 15 U.S.C. § 1116(a). The likelihood of success on the merits is usually dispositive. Enchant 

Christmas, 958 F.3d at 539. That is especially true in a case like this where the parties’ 

arguments come down to consumer confusion; Sunless never argued that the other factors could 

support an injunction without a finding of consumer confusion. Overall, we see no abuse of 

discretion.

* * *

We AFFIRM.