Pom Wonderful the tenacious -- in pursuit of trade mark rights

For several months now, a cat has found night-time refuge in the stairway of our building. She has cannily found a way to avoid the worst of the outside cold and rain and she has attracted several supporters to provide her with sustenance. This Kat has chosen to call her Daisy, even if the name belies the resolve that Daisy has shown. All of this is of particular importance because Daisy is a very pregnant feline and her efforts are directed not only for her own well-being but for those of her prospective offspring. The bottom line: this Kat takes note of tenacity, whether by Daisy or members of the two-legged species.

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.

In the case before the 9th Circuit, Pom Wonderful, the largest maker in the United States of 100% pomegranate juice and the owner of the POM trade mark, filed suit for infringement and requested that the defendant be preliminarily enjoined from selling a pomegranate-flavoured energy drink labelled "pŏm". In a 26-page decision, the court of appeal reversed a district court ruling that the plaintiff was unlikely to be able to demonstrate a likelihood of consumer confusion. and therefore the plaintiff was unlikely to succeed on its claim for infringement. The court of appeals disagreed. Having regard to the eight-part Sleekcraft test for likelihood of confusion in force in the 9th Circuit, it ruled:

“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.”

In the view of the court of appeals, the ruling of the district court denying a preliminary injunction had, in significant measure, been tainted by its ruling that there was no reasonable basis to support a claim of likelihood of confusion. Since that finding by the district court was clearly erroneous, the court of appeal found that the district court had abused its discretion. Accordingly, the decision of the district court was reversed and it was remanded

“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.”

This Kat has two concluding comments. First, he wonders whether U.S. trade mark law, at least as it
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.