Juice maker Pom Wonderful started 2015 with a big win this week in its ongoing infringement suit against Pur Beverages, after the Ninth Circuit reversed a Central District of California decision denying its motion for preliminary injunction. See Pom Wonderful LLC v. Hubbard, 2014 U.S. App. LEXIS 24598 (9th Cir. Cal. Dec. 30, 2014).
Defendant Pur, like plaintiff Pom Wonderful, calls its pomegranate-flavored energy drink "pom." In evaluating the likelihood of confusion factors, the district court focused on visual dissimilarities in the marks (namely, capitalization, thickness of font, and label prominence), ultimately concluding that Pom was unlikely to succeed on the merits.
In the appeal, the Ninth Circuit found the lower court improperly analyzed the eight Sleekcraft likelihood of confusion factors, erroneously concluding that five factors—the marks' similarity, the parties' respective marketing channels, actual confusion, defendant's intent, and Pom's future expansion of its business—all weighed against Pom Wonderful when they should have weighed in its favor.
With respect to the overall similarity of the marks, the 9th Circuit noted that the POM mark was registered as a standard character mark covering any particular rendition in any font or stylization. Noting that "each mark is comprised of the same three letters," in the same order, both with a stylization or symbol as the second letter (e.g., a heart shape or a breve symbol), and both uniformly cased (i.e., all uppercase or lowercase), the court concluded that a proper analysis would have concluded that the first factor favored Pom Wonderful, not Pur. "Pur's beverage not only bears a mark that is visually, aurally, and semantically similar to Pom Wonderful's commercially strong "POM" mark—which Pom Wonderful has used exclusively since 2002—but also is designed for the same use and sold to the same general class of consumers as Pom Wonderful's juice beverages at a price point where consumer discernment is weak," the court wrote in its opinion. In contrast to the district court, the Ninth Circuit concluded that marketing channel convergence, actual confusion, product expansion plans, and Pom's intent all weighed in Pom Wonderful's, and not the defendant's, favor.
The Ninth Circuit also held that district court's erroneous likelihood-of-confusion analysis "tainted" its rulings on likelihood of irreparable harm, and whether an injunction was in the public interest. On remand, the Ninth Circuit directed the district court to reconsider these last two factors in light of its determination that Pom was likely to succeed on the merits of its trademark infringement claim.
Defendant came out of the appeal swinging, claiming that "POM" is widely used to describe pomegranate flavoring, and has become generic and undeserving of federal trademark registration. More to come.
Danielle Wright is a trademark and copyright law clerk at Finnegan, Henderson, Farabow, Garrett & Dunner LLP.
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