The Volokh Conspiracy
Mostly law professors | Sometimes contrarian | Often libertarian | Always independent
From Riseandshine Corp. v. Pepsico, Inc., decided today by the Second Circuit, in an opinion by Judge Pierre Leval joined by Judges Denny Chin and Steven Menashi:
In a trademark dispute …, PepsiCo, Inc., the Defendant, which marketed a canned energy drink under the mark "MTN DEW RISE ENERGY," appeals from a preliminary injunction imposed on it … at the instance of the Plaintiff, RiseandShine Corporation, d/b/a Rise Brewing ("Rise Brewing"), which sells nitro-brewed canned coffee (and also canned tea) under the name RISE. It is undisputed that Plaintiff began using the RISE mark prior to Defendant's use of its mark.
The Second Circuit reversed the district court's grant of a preliminary injunction:
"[T]he strength of a mark depends ultimately on its distinctiveness, or its 'origin-indicating' quality, in the eyes of the purchasing public." The strength of a trademark is assessed based on either or both of two components: (1) the degree to which it is inherently distinctive; and (2) the degree to which it has achieved public recognition in the marketplace, sometimes called acquired strength.
We turn first to inherent strength. Inherent strength or weakness of a mark is frequently an important factor because strong marks command a wider scope of protection than weak marks. The trademark law allows every marketer to identify itself as a product's source by use of a distinctive mark, which will allow the public to recognize it as the source of the product, rewarding the marketer if it has earned a good public reputation and punishing it if the public's prior experience has been disappointing.
In this manner, the trademark law serves the purposes of both marketers and the consuming public. So long as marketers select words or signs that have no logical relationship to the products or services on which they are used, there will never be a shortage of marks. Trademark law favors the use of marks that are arbitrary or fanciful in relation to the products on which they are used. This is because such distinctive marks make it easier for the public to avoid confusion and because allowing the owner a broad exclusivity for such a mark detracts little from free expression, as other marketers of similar products have no justified interest in using such words to identify their products. In contrast, trademark law offers a much narrower scope of protection to marketers who seek to bar others from using words that describe or suggest the products or the virtues of their products.
To describe different degrees of inherent distinctiveness, the trademark law utilizes four categories. In order of ascending strength, they are: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.
A generic mark is a common name, such as automobile or aspirin, that identifies a kind of product. A mark that consists of a generic identifier of the product receives no protection from the law of trademark, even if the mark has acquired public recognition as identifying the source of the product. Neither prior use, nor public recognition as a source identifier can justify denying others the right to refer to their product as what it is.
One rung above the unprotectable generic marks are descriptive marks. These are marks that "tell something about a product, its qualities, ingredients or characteristics." Descriptive marks are presumptively unprotectable, but can acquire a degree of protection if they have acquired secondary meaning, i.e. an acquired public recognition as a mark identifying the source. Id.
Suggestive marks occupy the next higher rung. Suggestive marks suggest (rather than directly describe) the product on which they are employed, or its attributes, sometimes requiring imagination to grasp the linkage. They are the weakest marks that are protectable without need to show acquired secondary meaning. They receive a narrower scope of protection than the protection accorded to arbitrary or fanciful marks—those at the top of the ladder.
Arbitrary and fanciful marks—i.e., those that make no logical reference to the product or service on which they are used, such as Google for a search engine, Kodak for cameras, or Quilted Giraffe for a restaurant, receive the strongest protection. This is because other marketers of the same products or services have no justification or cognizable interest in using the same terms in referring to their own market offerings.
The district court determined that Plaintiff's mark was "suggestive," noting that the word "Rise" "evokes images of morning, which 'suggest[s] a quality or qualities of the product through the use of imagination, thought, and perception.'" We find no error in the district court's determination that Rise Brewing's mark is "suggestive." … [But] "a finding of suggestiveness does not guarantee a determination that the mark is a strong one." Because suggestive marks, by their nature, seek to suggest the qualities of the product, it can be difficult to distinguish weak suggestive marks from descriptive ones. Like descriptive marks, instead of focusing on the favored goal of source identification, suggestive marks aim to secure the exclusive right to an advertising message that is built into the trademark. The district court failed to note that the strong logical associations between "Rise" and coffee represent weakness and place the mark at the low end of the spectrum of suggestive marks.
In its ordinary usage, "Rise" suggests waking up and "rising" from bed. Rising is generally associated with the morning, a time when many crave a cup of coffee, relying on its caffeine to jumpstart their energy for the day. The intended and achieved reference of the RISE mark is illustrated by Plaintiff's company name—RiseandShine—something that a morning cup of coffee helps us to do. The proposition that one isn't fully awake until one has had one's morning coffee is a cliché.
The word "Rise" may also refer directly to energy itself; after consuming caffeine, one's energy levels can be expected to "rise." The trademark law does not favor giving one marketer an exclusive right to prevent others from using such valuable marketing terms in their own marketing campaigns. When a mark so clearly evokes the claimed virtues of the product it references, that mark, although perhaps muscular as a marketing tool, is weak under the trademark law.
The close associations between the word "Rise" and coffee constituted a weakness of the mark under the trademark law, which reduced, rather than advanced, Plaintiff's likelihood of success on the merits. Because the word "Rise" is so tightly linked with the perceived virtues of coffee, the mark is inherently weak and commands a narrow scope of protection.
Although the suggestive category is higher than the descriptive category because a descriptive association between mark and product is more direct than a suggestive association, it does not necessarily follow that every suggestive mark is stronger than every descriptive mark. If the suggestion conveyed by a suggestive mark conjures up an essential or important aspect of the product, while the description conveyed by a descriptive mark refers to a relatively trivial or insignificant aspect of the product, the particular suggestive mark could be deemed weaker than the descriptive. Coffee's capacity to wake one up and lift one's energy, which is what the "RISE" mark suggests, is such an important part of the perceived virtue of coffee in the eyes of the consuming public as to render this suggestive mark decidedly weak.
A survey of the use of the term "Rise" in the beverage market further underlines the weakness of the mark. Extensive third-party usage of a mark in related products generally weighs against a finding that a trademark is strong. "[I]n a 'crowded' field of similar marks, each member of the crowd, is relatively 'weak' in its ability to prevent use by others in a crowd." This is especially true where both the plaintiff's product and the other products use the word to signify the same ordinary meaning.
Although, as the district court points out, Plaintiff appears to have been "the exclusive user of the principal term 'RISE' to identify a single-serving, canned caffeinated beverage," there were already a number of marks using "Rise" on coffee drinks and other similar products when Plaintiff began to use its mark. Defendant presented evidence of over 100 uses of the term "Rise" in connection with coffee, tea, bottled beverages, energy drinks, soft drinks, drinkable health supplements, cafes, yogurts, and granolas. Many of these products use "Rise" in the same way as Plaintiff does—to allude to increased energy, particularly in the morning hours.
Plaintiff itself acknowledged this crowded field in its application to the United States Patent and Trademark Office ("PTO"). It initially attempted to register the mark "RISE COFFEE CO." but was rejected by the PTO on the basis that there was a likelihood of confusion between "RISE COFFEE CO." and prior registrations that also used the word "Rise" for coffee, such as "Rise Up Coffee Roasters" and "Rise Up Organic Coffee."
Plaintiff objected to the PTO's determination, arguing that the presence of multiple marks using the word "Rise" indicated the mark's weakness: "[M]any entities have used the word 'Rise' in relation to the Applicant's goods, making it unlikely that consumers would give significant weight to this term in ascertaining the source of such goods." Plaintiff further elaborated, "The fact that there are multiple Rise-formulated coffee marks owned by different registrants peacefully coexisting without confusion shows that there is room for another Rise-formulated mark…." After Plaintiff modified its application to register "RISE BREWING CO." rather than "RISE COFFEE CO.," the PTO agreed to register the mark.
Now, having registered its trademark, Plaintiff argues that there is no such room for multiple "Rise" marks to coexist peacefully, even outside the coffee sector. That is not persuasive. If there was room for Plaintiff's use of "Rise" in the already crowded coffee field, there would also be room for Defendant's, especially on a product that is distinct from coffee. Trademark law does not offer robust protection to those who demand the exclusive right to use words that describe or suggest a product or its virtues. Given the inherent weakness of "Rise" for coffee, the first factor does not favor Plaintiff..
The Second Circuit also concluded that "Plaintiff has not shown that its RISE mark has achieved sufficient acquired strength to counterbalance the inherent weakness of its mark," and then went on to conclude that there wasn't likelihood of confusion, either:
The only notable similarity is the shared use of the term "Rise" in large bold letters. However, as explained above, the word "Rise" in this context is not distinctive. Therefore, without more striking visual similarities, the shared use of this ordinary word, used to signify a virtue of the product, is not enough to render the two products "confusingly similar." Nor is there anything distinctive about the use of large bold letters to present a drink's brand name.
Comparing the two products, the differences appear far more notable than the similarities. The two cans are different in size, proportion, style, color, and artwork. Even the word "RISE" is presented in very different manners. On Plaintiff's can, it appears in a simple sans-serif font—its "R" and "S" evenly curved. Defendant's can, in contrast, uses an angular and jagged font. Furthermore, while "RISE" on Plaintiff's can is written on a horizontal line, the letters on Defendant's can are arranged in an arc.
Beyond the presentations of the shared word, the overall appearances of the cans are very dissimilar. Plaintiff's seven-ounce can is less than half the size of Defendant's sixteen-ounce can. Plaintiff's can features warm or neutral colors, in stark contrast to the bright, bold colors of Defendant's cans. The word "RISE" on Defendant's can is partially covered at the top by Defendant's prominently displayed house mark, "MTN DEW." And perhaps most plainly, while the lower half of Plaintiff's can shows simple, regular, white writing against a calm, uniform background, the lower half of Defendant's can depicts a large, stylized lion's head, composed of jagged shards that complement the can's angular font. There is little about the appearance of the two cans that would suggest to a consumer that they come from the same source….