In the past few years, cooling off with a hard seltzer on a hot summer day has become increasingly popular. While the two biggest players in the market, White Claw and Truly, enjoy the lion's share of the market, many other companies are looking to capitalize in the hard seltzer market. And, as the Summer of 2020 begins to heat up, so does the trademark battle between two of these companies:
The Products and the Marks
On
Future Proof Attempts to Protect Brizzy
In
However, the court refused to grant the preliminary injunction finding Future Proof did not meet its burden on the first requirement of the Rule 65 standard—namely, that it was likely to succeed on the trademark infringement claim. The court held that Future Proof failed to show it would succeed on the merits of the claim because there was not a likelihood of confusion between the marks - one of the two elements of infringement. The court examined the eight factors for confusion, discussed below, before concluding that, taken as a whole, there was insufficient evidence to demonstrate a likelihood of success on the merits.
The strength of the mark allegedly infringed
While Future Proof asserted that Brizzy was a strong mark, the court disagreed for two reasons. First, relying on precedent, the court reasoned that because the
The similarity between the
Here, the court considered the similarity of the
The similarity of the products or services, identity of the retail outlets and purchaser, and the advertising media used
The court considered these elements together and, with relatively minimal discussion, concluded they weigh in favor of granting the injunction.
The defendant's intent
The court focused its inquiry on whether
The evidence of actual consumer confusion
Future Proof offered one instance of actual confusion wherein a wholesaler asked a Future Proof employee to talk about "Vizzy" when referring to the Future Proof product. However, the court drew the distinction that this was not consumer confusion, but wholesaler confusion and added this was a "fleeting mix-up of names." Again, the court weighed this factor in favor of denying the injunction.
The degree of care exercised by potential purchasers
The court did not spend much time on this factor, stating "given the low cost of the products at issue, this factor provides little or no relevance to the court's determination."
Future Proof Refuses to let its Argument Fall Flat
On
Strength of the Mark
Future Proof argues the trial court erred in finding Brizzy is a "weak" mark because it misapplied precedent by: (1) ignoring the presumption of distinctiveness enjoyed by a trademark holder and; (2) ignoring the tests adopted by the 5th Circuit to assess descriptiveness. Future Proof asserts that "a trademark is presumed to be inherently distinctive where, as here, the PTO registered the mark without requiring evidence of secondary meaning,"6 while also acknowledging this is a rebuttable presumption. Future Proof claims the only evidence
Mark Similarity
Similarly, Future Proof asserts the trial court erred in two distinct ways by: (1) focusing on certain visual differences in product packaging instead of the marks; and (2) ignoring the aural similarities between the marks. Future Proof relies on 5th Circuit authority stating the words should be the focus of the analysis, not the product packaging. Further, Future Proof states that the rhyming and audible difficulty in distinguishing between the "V" and "BR" consonants when spoken establishes similarity. Future Proof raises an interesting point in that sound in this case is particularly important as alcoholic beverages are likely to be ordered orally at a restaurant or bar.
Actual Confusion
Future Proof relies on authority suggesting that actual confusion is the best evidence of a likelihood of confusion and that "testimony of a single known incident of actual confusion by a consumer has been found to be sufficient evidence to support the district court's finding of actual confusion."7 Future Proof refuted the trial court's distinction between a wholesaler and a consumer, citing 5th Circuit authority to support the proposition that a retailer or distributor's confusion is consumer confusion.
Degree of Care and Intent
Future Proof argues that the trial court failed to give due weight to these two factors. Concerning the degree of care consumers use in selecting the products, Future Proof asserted that in the hard seltzer market, with a relatively low price point, consumers are making quick decisions among a "crowded array" of products in fast-paced environments, tilting this factor in its favor. Finally, Future Proof asserted that
While we await a ruling from the 5th Circuit to determine whether there is a likelihood of confusion between Brizzy and Vizzy, let the arguments of each side percolate and bubble as you come to your own conclusion.
Footntoes
1
2 https://www.vizzyhardseltzer.com/#about-us
3
4 Examining
5
6 Alliance for Good Gov't v. Coalition for Better Gov't, 901 F.3d 498, 507- 508, 510 (5th Cir. 2018).
7 Streamline Prod. Sys. v. Streamline Mfg., 851 F.3d 440, 457 (5th Cir. 2017)
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Ms
CA 94607
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