“MTN DEW RISE ENERGY” Doesn’t Infringe “Rise Brewing” Nitro-Brewed Canned Coffee Trademark
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 presumpti
Article from Reason.com