I thought about Daisy when Katfriend Chris Torrero brought to our attention a decision issued by the 9th U.S. Circuit Court of Appeals on 30 December, Pom Wonderful LLC v Hubbard et al, No. 14-55253. First a word about the plaintiff: Some Kat readers may recall that Pom Wonderful prevailed in a closely watched decision given by the United States Supreme Court on June 12, 2014, Pom Wonderful LLC v Coca Cola Company. In that case Pom Wonderful convinced the Supreme Court to reverse the position of the lower courts, which had held that the food and beverage labelling provisions of the Food, Drug and Cosmetic Act precluded Pom Wonderful from asserting a false-advertising claim under Lanham Act. Tenacity of the kind that Daisy would approve of paid off for Pom Wonderful, as it was allowed by the Supreme Court to pursue its false-advertising claim. But the dispute with Coca Cola is not the only trade mark case in which Pom Wonderful is seeking to assert its trade mark rights. And once again, Pom Wonderful’s legal tenacity seems to have been justified.
“Although the district court correctly found that the strength of mark, relatedness of goods, and degree of consumer care factors weighed in favor of Pom Wonderful, it incorrectly found that the similarity of marks, marketing channel convergence, actual confusion, defendant’s intent, and product expansion factors weighed against Pom Wonderful.”The court of appeal then went on:
“Our review of the Sleekcraft factors reveals that five factors weigh in favor of Pom Wonderful (strength of mark, relatedness of goods, degree of consumer care, similarity of marks, and marketing channel convergence) and three factors are neutral (actual confusion, defendant’s intent, and product expansion). None of the factors weighs in favor of Pur.”In particular, the court of appeal took issue with the lower court on the issue of the similarity of the respective marks. The court of appeal set out a side-by-side comparison of the two marks, observing that there are “many obvious visual similarities”.
Admittedly, the marks also possess some visual dissimilarities, as the district court stressed--
“particularly when we consider the marks in the context of their respective labels, with the Pom Wonderful bottle on the left [here, below left], the front of the Pur can in the center [here, below right], and the back of the Pur can on the right.” [here, a long way down on the right]However, the court of appeal did not find these dissimilarities tipped the balance against finding a similarity between the respective marks, concluding as follows:
“Balancing the marks’ many visual similarities, perfect aural similarity, and perfect semantic similarity more heavily than the marks’ visual dissimilarities—as we must [footnote omitted]—the similarity factor weighs heavily in Pom Wonderful’s favor. And, because a lesser degree of similarity is required when a trademark holder’s mark is strong, the commercial strength of the “POM” mark amplifies the significance of the marks’ many similarities See Perfumebay.com Inc. v. eBay Inc., 506F.3d 1165, 1174 (9th Cir. 2007) (“[T]he fact that the similarity involves the use of a much stronger mark would make that similarity weigh more heavily in the analysis of this factor.” (Internal quotation marks omitted)). Mistakenly weighing the marks’ differences more heavily than their similarities, the district court clearly erred in finding that the similarity of marks factor weighed against Pom Wonderful.”As such,
“When these errors are corrected and the totality of the facts is considered, it is clear that Pom Wonderful is likely to show that consumers are likely to be confused as to the source of Pur’s "pŏm" beverage.”
“with instructions that the district court consider whether Pom Wonderful can meet its burden of proving that it will suffer irreparable harm in the absence of preliminary relief, that the balance of the equities tips in its favor, and that injunctive relief would further the public interest.”
is applied by various courts, is especially prone to uncertainty of result, suggested by the fact that in both of these Pom Wonderful cases, the reviewing court reversed the decision of the trial court. Is this due to the particular nature of Pom Wonderful’s trade mark rights or is there something more systemic at work? Second, given the tenacity shown by Pom Wonderful in asserting its trade mark rights, perhaps it would be interested in adopting Daisy—they seem a perfect fit.