MIRANDA M. DU, District Judge.
In this trademark infringement case, Plaintiff JL Beverage Company, LLC ("JL Beverage") asks the Court to determine that Defendants infringe upon JL Beverage's trademarked "lips images," which are displayed prominently on its bottles of flavored and unflavored vodka. However, just like snowflakes and fingerprints, no two lip prints are the same.
Except where stated, the following facts appear without dispute in the preliminary injunction record.
JL Beverage manufactures, sells, and promotes a line of flavored and unflavored vodka called "Johnny Love." Johnny Love comes in unflavored, apple, tangerine, aloha, and passion fruit flavors. The vodkas are available for sale in four sizes.
The Johnny Love line of vodkas was created by bartender Johnny Metheny in
Since July 2005, Plaintiff has used two design marks in connection with its sale of the "Johnny Love" brand vodka and flavored vodkas:
The mark on the left, called "Johnny Love Vodka" or the "JLV mark," is registered with the United States Patent and Trademark Office ("USPTO") as Registration No. 2,986,519 in International Class 033 — Vodka (registered August 16, 2006). The mark on the right is called the "JL Lips Mark," and is also registered with the USPTO under Registration No. 4,044,182 in International Class 033 — Distilled Spirits (registered October 25, 2011). Both images appear on the Johnny Love line of vodkas and flavored vodkas:
The JL Lips mark is imprinted at the top of the bottle and on the back label. The mark on the back label is also colored to correspond to the flavor within the bottle:
Metheny sold the Johnny Love vodkas to Thomas Diab, JL Beverage's current president, in 2005. JL Beverage asserts that the company has spent considerable time, effort, money, and other resources developing and promoting vodkas bearing its two marks.
Defendants Beam, Inc. and Jim Beam Brands Co. (collectively, the "Beam Defendants") own approximately 60 lines of alcoholic beverages. One of these products is a line of flavored vodka called "Pucker Vodka." The Beam Defendants purchased the Pucker brand from Koninklijke De Kuyper, B.V. ("De Kuyper") in 2010. Although Pucker is not a new product, in Spring 2010 Defendant Jim Beam wanted to redesign and rebrand Pucker in order to "extend the equity of the Pucker brand and lips into flavored vodka." To that end, Jim Beam hired the outside design firm of Libby, Perszyk, Kathman, Inc. ("LPK") to "independently create a unique look and feel for its Pucker vodka product...." (Dkt. no. 42 at 3.) Defendants claim that they wanted LPK to create a marketing campaign that would communicate "intense flavor and intense fun" in connection with its Pucker vodka brand. (Dkt. no. 42 at 3.) As part of this campaign, Defendants and LPK re-branded the Pucker Vodka labels and bottles and developed a new
The Beam Defendants instructed LPK to use both the Pucker name and lips as part of any design it developed for Pucker's new label. (Dkt. no. 46 at ¶ 12.) Notably, previous iterations of Pucker Vodka had used lips images in connection with its labeling and logos.
The Beam Defendants attempted to register their lips design on or around March 2011. Defendant Beam filed applications for trademarks in the bottle/cap, the stylized Pucker wording, and the lips design. Later, an official in Beam's legal department discovered that the lips mark selected by LPK to be featured in the center of Defendants' vodka label was "stock art" from iStockphoto LP. While Jim Beam was licensed to use the lips, it did not have the right to claim ownership in the lips because the image was owned by a different entity. Defendants subsequently withdrew their USPTO application for the lips design. Defendants state that this was the
Defendants launched their newly-designed Pucker Vodka products nationwide in March and April 2011. Defendants advertise their Pucker Vodka flavored vodka line of products nationally through television and cable commercials, print advertisements in national magazines, in-store and on-premise promotions at restaurants and bars, and through digital advertising. Defendants assert that they have expended considerable resources and money towards promoting and selling their Pucker Vodka line of products.
JL Beverage alleges that Defendants' Pucker mark infringes upon both of its registered trademarks and also its common law trademarks in its colored labeling. JL Beverage's primary argument is that Johnny Love and Pucker are similar products with a similar key feature, lips, used in connection with their labels and marketing. JL Beverage also alleges that Defendants adopted the lips mark despite the fact that a Beam employee knew that JL Beverage uses lips trademarks in connection with its line of vodkas.
JL Beverage first informed Defendants of their allegedly infringing mark on March 18, 2011. (Dkt. no. 36-1 at 17-19.) On April 13, 2011, Defendants responded that they did not believe their mark infringed Plaintiff's marks. (Dkt. no. 36-1 at 22-25.) JL Beverage subsequently served Defendants with its original Complaint in July 2011. The First Amended Complaint alleges trademark infringement, false designation of origin, common law trademark infringement, and unfair competition. (Dkt. no. 30.) Defendants counterclaimed and moved to cancel registration of the JL Lips Mark. (Dkt. no. 32 at 19, 20.) JL Beverage filed this Motion for Preliminary Injunction (dkt. no. 36) on February 23, 2012. JL Beverage asks the Court to enter a preliminary injunction against Defendants. As part of the injunction, Plaintiff requests that Defendants stop using the current Pucker label in connection with their vodka bottles and promotional materials, and that Defendants recall any and all Pucker Vodka bottles with the allegedly infringing label as well as any other packaging, containers, advertising, or promotional materials using the allegedly infringing mark (dkt. no. 30 at 12, ¶ C).
To qualify for a preliminary injunction, a plaintiff must demonstrate: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm; (3) that the balance of hardships favors the plaintiff; and (4) that the injunction is in the public interest. Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008).
To establish a likelihood of success on the merits of a trademark infringement claim, the plaintiff must establish that he is "(1) the owner of a valid, protectable mark, and (2) that the alleged infringer is using a confusingly similar mark." Grocery Outlet, Inc. v. Albertson's, Inc., 497 F.3d 949, 951 (9th Cir.2007). The parties do not dispute ownership or validity for the purposes of this Motion.
The Ninth Circuit uses the non-exhaustive eight factor Sleekcraft test for determining likelihood of consumer confusion: (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) the defendant's intent in selecting the mark; and (8) the likelihood of expansion of the product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 & n. 11 (9th Cir.1979), abrogated in part on other grounds by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 (9th Cir. 2003). "Some Sleekcraft factors are much more important than others, and the relative importance of each individual factor will be case specific." M2 Software, Inc. v. Madacy Entm't, 421 F.3d 1073, 1080 (9th Cir.2005) (quotation marks and citation omitted). "In essence, the test for likelihood of confusion is whether a `reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks." Id. (citations and brackets omitted).
JL Beverage alleges both forward and reverse trademark confusion. "In the usual [forward] infringement case," a court must determine "whether junior user is palming off its products as those of the senior user. Would a consumer who finds a running shoe marked Mike be bamboozled into thinking that it was manufactured by Nike?" Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129-30 (9th Cir.1998). Conversely, reverse confusion "occurs when the junior user saturates the market with a similar trademark and overwhelms the senior user." Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F.Supp.2d 671, 688 n. 19 (W.D.Ky.2010) (citing Ameritech, Inc. v. Am. Information Techs. Corp., 811 F.2d 960, 964 (6th Cir.1987)). "The public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter." Maker's Mark, 703 F.Supp.2d at 688, n. 19 (citing Ameritech, 811 F.2d at 964).
Accordingly, the Court must determine whether a reasonable consumer interested in purchasing vodka or flavored vodka could think that JL Beverage produces Pucker or that Pucker Vodka is the same product as Johnny Love Vodka (forward confusion), or could think that the Beam Defendants produce Johnny Love Vodka or that Johnny Love Vodka is the same product as Pucker Vodka (reverse confusion). See M2 Software, Inc. v. Madacy Entm't, 421 F.3d at 1080.
JL Beverage uses the JLV mark on bottles of its unflavored vodka.
"The more likely a mark is to be remembered and associated in the public mind with the mark's owner, the greater
Therefore, the Court considers (1) the conceptual strength of the JLV mark, for the purposes of both forward and reverse confusion; (2) the commercial strength of the JLV mark, for the purposes of forward confusion; and (3) the commercial strength of the Pucker Vodka mark, for the purposes of reverse confusion.
"The conceptual strength of a mark refers to its categorization on the continuum of `genericness' to arbitrariness, with arbitrary marks being entitled to the highest degree of protection from infringement." Playmakers I, 297 F.Supp.2d at 1281. "Generic marks are those that refer to the genus of which the particular product is a species." One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1164 (9th Cir.2009) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (internal quotation marks omitted)). "Descriptive terms directly describe the quality or features of the product." Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1058, n. 19 (9th Cir.1999). "A suggestive mark conveys an impression of a good but requires the exercise of some imagination and perception to reach a conclusion as to the product's nature." Id. "Finally, arbitrary and fanciful marks have no intrinsic connection to the product with which the mark is used; the former consists of words commonly used in the English language ... whereas the latter are wholly made-up terms." Id. at 1164 (quotation marks and citation omitted).
Because the JLV mark contains the word "vodka," the Court determines that the mark is descriptive. It describes the primary feature of the Johnny Love brand product: vodka. In its briefings, JL Beverage focuses not on the entire mark, but solely the lips. JL Beverage argues that "to associate `lips' to a bottle of vodka requires great imagination, and therefore" the mark is arbitrary or fanciful. (Dkt. no. 61 at 3.) It is true that the lips portion of the JLV mark is the only part that Defendants could potentially infringe upon; it is the only common feature shared by the two trademarks. However, "under the anti-dissection rule, the validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace." Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993). This is because "[w]hether a mark suggests or describes the goods or services of the trademark holder depends, of course, upon what those goods or services are." Entrepreneur Media, Inc. v. Smith,
The Court's conclusion on this point would not differ even were it to examine the conceptual strength of the lips portion of the JLV mark alone.
"Identifying whether a mark is generic, descriptive, suggestive, arbitrary or fanciful, however, is only the first step of the inquiry." One Indus., 578 F.3d at 1164. "The second step is to determine the strength of this mark in the marketplace." Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988), abrogated in part on other grounds as recognized in Eclipse Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114 (9th Cir. 1990). As mentioned, the commercial strength of the senior mark is relevant for the Court's forward confusion analysis only.
The commercial strength of a mark refers to its degree of recognition in the minds of the relevant consumer class, and it is often measured by the junior user's amount and volume of advertising. See Playmakers I, 297 F.Supp.2d at 1281. "Commercial strength is based on actual marketplace recognition, and thus advertising expenditures ...." are often a sound measure of commercial success. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir.2011) (quotation marks and citation omitted).
There is significant evidence that JL Beverage has a relatively weak presence in the marketplace. It engages in local rather than national advertising and has a small advertising budget. The evidence provided by Mr. Diab in his deposition demonstrates that JL Beverage is still a small, growing corporation with a minimal presence on alcohol and grocery store shelves. (See, e.g., dkt. no. 47-7 at 21.)
Therefore, because the JLV mark (1) contains a description of the product; (2) uses an image commonly used and associated with alcoholic beverage products; and (3) has relatively weak commercial presence, the Court determines that the mark's overall strength is weak for the purposes of JL Beverage's forward confusion claim.
Pucker Vodka's commercial strength is relatively strong. The Beam Defendants presented evidence that Jim Beam spends a significant amount of money on national ads. Jim Beam promotes Pucker Vodka in national advertisements spanning a wide array of mediums, including television/cable, print ads, in-store and on-premise promotions at restaurants and bars, and digital advertising. Accord Maker's Mark, 703 F.Supp.2d at 690 (holding that a mark had strong commercial strength where the company spent $22 million annually on marketing and engaged in a national advertising campaign with ads spanning various mediums).
Accordingly, because the conceptual strength of the JLV mark is relatively weak and the commercial strength of the Pucker mark is strong, the Court determines that factor one favors the Beam Defendants for the purposes of its reverse confusion analysis.
"The standard for deciding whether the parties' goods or services are related is whether customers are `likely to associate' the two product lines." Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 633 (9th Cir.2005) (citation and remaining internal quotation marks omitted); see also Sleekcraft, 599 F.2d at 350 (goods are related when there is a likelihood that the consumer will "assume there is an association between the producers of the related goods, though no such association exists."). "Proximity of the parties' goods exists where they are (1) complementary, (2) sold to the same class of purchasers, or (3) are similar in use or function." Matrix Motor Co., 290 F.Supp.2d at 1092.
This factor weighs in JL Beverage's favor. (See dkt. no. 42 at 22.) The products are similar — vodka and flavored vodka — and would therefore be sold in the same section of the grocery store or liquor store. Moreover, the companies sell their products to the same class of purchasers — alcohol distributors. (See dkt. no. 36-1 at ¶ 13.)
Courts consider "sight, sound and meaning to determine the similarity of competing marks." One Indus., 578 F.3d at 1162 (quotation marks and citation omitted). Here, sight is the most important subfactor, because the parties discuss consumer confusion primarily in the context of buyers interested in purchasing a bottle of their respective vodkas at a liquor or grocery store. See, e.g., id. at 1162-73 (determining that since the case involved competing motocross product logos, sight was the most important sub-factor because any consumer confusion there "would occur as motocross enthusiasts select helmets inside a store or during online browsing."). "Sound" is also relevant, because purchasers could potentially ask for the type of vodka by name at a store, bar, or restaurant.
"In considering the degree of similarity between the two marks, courts should analyze each mark within the context of other identifying features." Surfvivor, 406 F.3d at 633. Here, the marks' composite parts are not similar, and taken as a whole, the two trademarks are dramatically different.
First, the bottles' shapes are distinct. JL Beverage uses a stock wine bottle in the "Bordeaux-style" with a long neck whereas Defendants use a cylindrical bottle. The bottle caps are markedly different: whereas JL Beverage uses a traditional-style cap, akin to those covering a typical wine bottle, bottles of Pucker are closed with a unique cylindrical, thick plastic colored cap. The cap is colored to correspond to the vodka flavor and also has a grooved wave pattern running diagonally across it.
Second, the product labeling is not similar. Johnny Love's label is silver with minimal wording, a small image denoting the flavor of the vodka at the bottom of the label, and is in black lettering. The Pucker Vodka bottle by contrast uses purple and white lettering. Pucker labels not only contain a lips image, but also images of fruit (the fruit corresponding to the flavor of the vodka in the bottle), and colored ink blots (also colored to correspond to the flavor in the bottle). The Pucker label's background color is not silver like with the Johnny Love bottle, but colored on top and bottom with a white portion in the middle. Finally, the two products use different fonts.
Defendants argue that the presence of both parties' house marks — the names "Johnny Love Vodka" and "Pucker" appear prominently on each bottle — decreases the marks' similarity. "In Sleekcraft, the Ninth Circuit noted that the use of a housemark can reduce the likelihood of confusion[.]" Marketquest Group, Inc. v. BIC Corp., No. 11-cv-618, 2011 WL 5360899, at *9 (S.D.Cal. Nov. 7, 2011). Here, the presence of the house mark reduces confusion for the purposes of JL Beverage's forward confusion claim. Consumers looking to purchase vodka and/or flavored vodka are less likely to be confused about the source of the vodka because each mark clearly delineates the brand.
However, "[i]n the reverse confusion context," the "addition of a celebrity `housemark' to an allegedly infringing mark may heighten confusion rather than reduce it." Glow Indus., Inc. v. Lopez, 252 F.Supp.2d 962, 995 (C.D.Cal.2002); see also A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 230 (3d Cir.2000) ("As to the presence of the housemark on the [famous defendant's] product, not only is there the possibility that consumers will fail to remember the mark when encountering [the plaintiff's] swimwear, but there is also the possibility that the mark will aggravate, rather than mitigate, reverse confusion, by reinforcing the association of the [at-issue] word `miracle'
Third, the lips images are distinct. They are used in a different fashion on their respective vodka bottles. The Johnny Love lips image is used as the "o" in the word "love" on the vodka label. On Defendants' bottle, the lips stand alone, are very large, and appear to be the focal point of the label.
JL Beverage's lips show only a few lip creases and are more rounded than Defendants', shaped almost like an "o". Defendants' lips are oval, elongated, have many more creases than JL Beverage's, and are surrounded not by a word, but by colored ink blotches.
Though not as important as the "sight" subfactor in this case, the Court concludes that the two trademarks do not sound the same. JL Beverage asserts that "consumers would verbally describe the marks as `lips' given the prominent appearance of the `human lips' design for both parties," and therefore "the sound of Plaintiff's Marks would be identical to the LIPS mark being used by the Beam Defendants." (Dkt. no. 61 at 6.) But neither product is called "lips" or "lips vodka." As Defendants correctly point out, consumers would call the products either "Johnny Love" or "Pucker" — two names that sound nothing alike — when asking for the respective vodkas over the phone or at a bar or restaurant. (Dkt. no. 42 at 12.)
JL Beverage provides numerous examples of what it deems to be consumer confusion. For example, on July 15, 2011, a woman named Erin Murphy contacted Shaun Robertson, JL Beverage's North Carolina broker, stating that she saw JL Beverage's new bottle at an ABC Store. (Dkt. no. 36-2 at 5.) The bottle was a bottle of Pucker Vodka. (Id.) On October 16, 2011, a man named Sam Mills contacted Robertson stating that he purchased Pucker cherry flavored vodka thinking it was Johnny Love Vodka. (Dkt. no. 36-2 at 4.) On February 15, 2011, a man named
Defendants counter that JL Beverage's proffered evidence of actual confusion is inherently unreliable because it was provided by friends of Plaintiff's employees and its broker and broker's friends. (Dkt. no. 42 at 18.) Because they have a financial interest in the success of the product, broker and distributor opinions about actual confusion are of "little probative value." Global Mfg. Group, LLC v. Gadget Universe.Com, 417 F.Supp.2d 1161, 1174 (S.D.Cal.2006). And the evidence from friends of JL Beverage employees is likewise of limited weight because "[e]vidence of secondary meaning from a partial source possesses very limited probative value." Filipino Yellow Pages v. Asian Journal of Publications, Inc., 198 F.3d 1143, 1152 (9th Cir.1999). JL Beverage does not deny that the evidence comes from informal sources familiar with the JL Beverage brand and its employees and contractors.
Defendants also argue that JL Beverage's evidence of actual confusion consists of double, triple, and quadruple hearsay. The record demonstrates that at least some of the examples of alleged consumer confusion involve multiple levels of hearsay. For example, many of the instances of alleged confusion involve Mr. Robertson recounting via email his conversations with various consumers. (Dkt. no. 36-2 at 4); see Japan Telecom, Inc. v. Japan Telecom Am., Inc., 287 F.3d 866, 874 n. 1 (9th Cir.2002) (statements that declarant knows of others who were confused by similar trademarks is inadmissible hearsay).
Finally, some of the alleged evidence of actual confusion includes consumers noting that the two vodkas look alike. For example, Mr. Herring commented that Pucker "looks like" Johnny Love. (Dkt. no. 36-2 at 5.) Such evidence demonstrates lack of confusion because it shows that Mr. Herring understood that Johnny Love and Pucker are distinct products. See, e.g., Duluth News-Tribune v. Mesabi Publishing Co., 84 F.3d 1093, 1098 (8th Cir.1996).
In light of the above, there are several potential problems with the reliability and admissibility of JL Beverage's proffered evidence of actual confusion. Later discovery may strengthen this evidence, but the Court determines that for the purposes of this Motion, factor four weighs in neither party's favor. See Sleekcraft, 599 F.2d at 353 ("Because of the difficulty in garnering" evidence of actual confusion, "the failure to prove instances of actual confusion is not dispositive.").
"Convergent marketing channels increase the likelihood of confusion." Groupion, LLC v. Groupon, Inc., 826 F.Supp.2d 1156, 1164 (N.D.Cal.2011) (quotation marks and citations omitted).
JL Beverage argues that the marketing channels used here are identical. Both parties use the 3-tier distribution system for the sale of alcoholic spirits.
Defendants counter first by arguing that the marketing tactics used by each party are different, but the relevant inquiry involves marketing channels, not marketing tactics. Defendants then argue that even if the marketing channels are identical, Defendants can only be enjoined in the geographic areas where JL Beverage actively sells its vodkas. Defendants invoke the Dawn Donut rule to support their argument:
Kerzner Int'l Ltd. v. Monarch Casino & Resort, Inc., 675 F.Supp.2d 1029, 1047 (D.Nev.2009) (citing Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir.1959)). Defendants argue that in light of the Dawn Donut rule, "Plaintiff must show not only that it is actively selling product so as to create consumer recognition of its product, but also where those sales are being made." (Dkt. no. 42 at 24.) Defendants assert that JL Beverage has not provided evidence that it is actively selling its product in each of Defendants' markets. However, the Dawn Donut rule plainly does not apply to this case. (Id.) JL Beverage has distributors in 20 states, a Federal Basic Alcohol Permit to sell in all 50 states, and is pursuing expansion of its product line nationally. (See dkt. no. 62-2.) While there is some evidence that Johnny Love Vodka may not be currently experiencing strong sales, the fact that Johnny Love is sold in at least 20 states and JL Beverage is working towards selling it in all fifty states suffices to make Dawn Donut inapplicable here.
JL Beverage has demonstrated that the marketing channels are identical. Moreover, given the nature of the 3-tier distribution market for alcohol, the fact that the marketing channels are identical places JL Beverage at a particularly significant disadvantage. This factor favors JL Beverage.
"In assessing the likelihood of confusion to the public, the standard used by the
Brookfield, 174 F.3d at 1060.
The parties agree that both Johnny Love and Pucker are "call brands" rather than "well brands," and that the two drinks fall into the same price category.
"This factor favors the plaintiff where the alleged infringer adopted his mark with knowledge, actual or constructive, that it was another's trademark."
Here, it is clear that at some point in the development of its Pucker Vodka label, Defendants were at the very least aware of Plaintiff's trademark, and that at least one of Jim Beam's employees was aware of the Johnny Love Vodka brand. However, such knowledge is of little weight in light of the circumstances surrounding Defendants' Pucker Vodka campaign. First, the record demonstrates that Defendants and their predecessors in interest have used different lips images as part of Pucker's branding since 1996. (Dkt. no. 46-3 at ¶ 5.) Thus, while JL Beverage is the senior user of the `lips' mark, De Kuyper, Defendants' predecessor in interest, used lips images in commerce several years before JL Beverage's existence. In fact, Kimberly Washington, Jim Beam's Senior Director of Vodka, Cognac, and Gin, and the person who oversaw the design, development, and promotion of Pucker Vodka at Beam (dkt. no. 46 at ¶ 3), instructed LPK to include lips images in any original design it developed for the Pucker product (id. at ¶ 12). This is significant because it decreases the likelihood that Defendants wrongfully treaded upon JL Beverage's lips mark in its redesign and repackaging of Pucker, and makes it more likely that Defendants merely wanted to continue to use an image that had long been associated with the Pucker brand.
Second, Defendants present evidence that LPK, the outside design firm tasked with creating a new label and marketing campaign for Pucker Vodka, did not know about the Johnny Love line of vodkas. (Dkt. no. 43 at ¶¶ 4-6.) Nor is there evidence that members of Jim Beam's Pucker
Third, the fact that Jim Beam withdrew its application for a trademark on its design is of no import here. JL Beverage asserts that Defendants withdrew their application once they found out that the JLV marks were a potential bar to registration.
Factor seven therefore favors neither party. See Self-Ins. Inst. of Am., Inc. v. Software & Info. Indus. Ass'n, 208 F.Supp.2d 1058, 1074 (C.D.Cal.2000) ("a lack of intent to confuse is largely irrelevant in determining if consumers likely will be confused.") (citing Brookfield, 174 F.3d at 1059) (internal quotation marks omitted).
When the goods or services of the parties are related, this factor is irrelevant. See Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1029 (9th Cir.2004). This factor therefore weighs in neither party's favor.
This is not a case where the factors overwhelmingly favor either party. Factors one and three strongly favor Defendants. Factors 2, 5, and 6 favor JL Beverage. Factors 4, 7, and 8 favor neither party.
As mentioned, the relative import of each Sleekcraft factor is case-dependent. The very fact that this case involves similar
Defendants contest the validity of the JL Lips mark, and have petitioned to cancel the mark. (Dkt. no. 32 at ¶¶ 14-25.) However, Defendants do not appear to argue invalidity for the purposes of this Motion.
The Court determines that consumers are unlikely to confuse the JL Lips Mark with Defendants' mark, for largely the same reasons discussed supra in Section IV.A. The JL Lips mark is used on the top of Plaintiff's bottle cap and on the back label.
As alluded to in Section IV(A)(1)(a), the lips image used above is arbitrary. The JL Lips mark, unlike the JLV mark, is therefore conceptually strong. However, the Court's analysis supra regarding the two marks' commercial strength makes factor one favor Defendants here.
Further, factor three weighs in favor of Defendants because there is even greater dissimilarity between the JL Lips mark and the Pucker Vodka trademark than between the JLV mark and Defendants' mark. The two marks are used on different parts of the bottle; the JL Lips mark stands alone while the Pucker lips are part
JL Beverage also alleges common law trademark infringement against Defendants. Though not entirely clear from its filings regarding this Motion, it appears as if JL Beverage asserts a common law trademark in its colored lips images and/or its colored labels.
The Sleekcraft analysis here would not significantly differ from the analysis above regarding the JLV registered trademark. JL Beverage's common law marks are conceptually and visually more similar to the Pucker marks than JL Beverage's registered marks because the concept of coloring the lips portion of the label to correspond to the flavor within the bottle is common to both JL Beverage and Pucker Vodka. However, this additional similarity does not tip the scales in JL Beverage's favor, because the marks when viewed as a whole — on their respective labels and bottles — are distinct.
"The test for false designation under the Lanham Act, as well as the common-law and statutory unfair competition claims, is whether there was a `likelihood of confusion.'" Walter v. Mattel, Inc., 210 F.3d 1108, 1111 (9th Cir.2000) holding modified by Surfvivor, 406 F.3d 625 (citations omitted). The Ninth Circuit "has consistently held that state common law claims of unfair competition ... are `substantially congruent' to claims made under the Lanham Act." Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) (citations omitted). Therefore, for reasons stated above regarding JL Beverage's trademark infringement claims, JL Beverage is unlikely to succeed on its common law unfair competition claim.
To prevail on this Motion, JL Beverage must establish that "remedies available at law, such as monetary damages, are inadequate to compensate for that injury." eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). That is, JL Beverage must establish that the harm caused by Defendants cannot be remedied except through injunctive relief. See MGM Studios, Inc. v. Grokster, Ltd., 518 F.Supp.2d 1197, 1210 (C.D.Cal.2007).
JL Beverage argues that it will suffer irreparable injury to its reputation and goodwill as long as Defendants are "allowed to continue their infringing activities." (Dkt. no. 61 at 12.) Yet this only holds true if Defendants are in fact engaging in infringing activity — if there is a likelihood that consumers will confuse Johnny Love for Pucker (or vice-versa in the case of forward confusion). But the Court has determined that consumer confusion is unlikely.
Defendants assert that JL Beverage waited more than one year after it learned of the alleged trademark infringement to
Because JL Beverage significantly delayed bringing this Motion and because JL Beverage does not demonstrate that it will incur significant non-monetary harm should this case proceed without preliminarily enjoining Defendants, the Court determines that JL Beverage has not demonstrated likelihood that it will suffer irreparable harm should the Court deny its Motion.
"In each case, a court must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief." Amoco Prod. Co. v. Village of Gambell, Alaska, 480 U.S. 531, 542, 107 S.Ct. 1396, 94 L.Ed.2d 542 (1987); see also Int'l Jensen v. Metrosound U.S.A., Inc., 4 F.3d 819, 827 (9th Cir.1993) ("In evaluating the balance of hardships a court must consider the impact granting or denying a motion for a preliminary injunction will have on the respective enterprises."). An injunction may not issue unless the balance of hardships tips in favor of the moving party. "[A] court must remain free to deny a preliminary injunction, whatever be the showing of likelihood of success, when equity in the light of all the factors so requires." Apple, Inc. v. Samsung Elecs. Co., Ltd., 877 F.Supp.2d 838, 916 (N.D.Cal. 2012).
The Court determines that the balance of the hardships favors Defendants.
JL Beverage argues that it has expended substantial "time, money, and other resources" to develop the goodwill and positive reputation surrounding the JLV marks. (Dkt. no. 36 at 22.) This is no doubt true. But beyond its arguments regarding likelihood of consumer confusion, JL Beverage does not demonstrate why preliminary injunctive relief is necessary to maintain its brand's positive reputation and goodwill.
On the other hand, Defendants argue that they will incur significant hardship were the Court to hold in Plaintiff's favor. Defendants predict that they will have to expend resources selecting a new product design, changing labels, destroying inventory, changing product advertising, and recalling products and promotional materials. (Dkt. no. 42 at 28.) Defendants assert that these steps will harm their business relationships with their suppliers, distributors, and retailers. (Id.) The Court agrees. This is an instance where "Plaintiff and Defendants have each spent substantial resources developing their marks, but the hardships Plaintiff may suffer if the status quo is maintained are far inferior to those Defendant would endure if it were required to cease further commercial use of its mark...." Credit One Corp. v. Credit One Fin., Inc., 661 F.Supp.2d 1134, 1141 (C.D.Cal.2009).
Courts "must consider the public interest as a factor in balancing the hardships when the public interest may be affected." Caribbean Marine Servs. Co. v. Baldrige,
IT IS THEREFORE ORDERED that JL Beverage's Motion for Preliminary Injunction (dkt. no. 36) is DENIED.