Overview
Rise. It’s something we all do in the morning, and that’s an issue for anyone seeking to monopolize the term as a trademark for drinks that help consumers wake up. In Riseandshine Corporation d/b/a Rise Brewing v. PepsiCo, Inc., 41 F.4th 112 (2d Cir. 2022), the United States Court of Appeals for the Second Circuit vacated a preliminary injunction against PepsiCo from using the mark MTN DEW RISE for a canned energy drink. The Court held that the district court had erred in assessing the strength of the plaintiff’s RISE mark and the similarity of the products.
The facts of the case showed that the plaintiff had launched the first cans of its RISE branded nitro-brewed coffee in 2016. It now sells the canned beverages nationwide and has registered the mark “RISE BREWING CO” with the United States Patent and Trademark Office (the “USPTO”). In January 2021, Rise Brewing learned that PepsiCo planned to launch a fruit-flavoured canned energy drink under the mark MTN DEW RISE ENERGY. Undeterred by Rise Brewing’s cease-and-desist letter, the defendant launched its MTN DEW RISE ENERGY beverage in March 2021 and sold it in over 170,000 retailers across the country. The plaintiff subsequently filed suit and moved for a preliminary injunction, which the district court granted, enjoining the defendant from using the challenged mark in the market pending trial. On appeal, the appellate court vacated the injunction.
Plaintiff had argued that the defendant’s use of the word “Rise” created a likelihood of “reverse” confusion in that PepsiCo’s use of the word “Rise” was likely to result in consumers mistakenly concluding that plaintiff’s coffee drink was a Mountain Dew product. To evaluate claims of consumer confusion, whether forward or reverse, the court employed the familiar eight-factor test set out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961): (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the plaintiff will bridge the gap; (5) actual confusion; (6) defendant’s good faith in adopting its own mark; (7) the quality of the defendant’s product; and (8) the sophistication of the buyers.
Upon evaluating these factors, the district court found that plaintiff had established a likelihood of success on the merits and granted the injunction.
The appellate court disagreed. It found the district court had abused its discretion when evaluating what is often considered the most crucial factor—the strength of the plaintiff’s mark (as well as in its finding of similarity in the appearance of the products). The appellate court found no error in the district court’s determination that the plaintiff’s mark is “suggestive,” but that, despite being a suggestive mark, because the word “Rise” is so tightly linked with the perceived virtues of coffee (e.g., after consuming caffeine, one’s energy levels can be expected to “rise”), the mark is inherently weak and commands only a narrow scope of protection.
In granting the preliminary injunction, the district court had discounted the weight of the plaintiff’s statements to the USPTO regarding third-party coexistence because “courts do not bind parties to their statements made or positions taken in ex parte application.” However, the appellate court took a decidedly more sceptical view: “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 were room for plaintiff’s use of ‘Rise’ in the already crowded coffee field, there would also be room for defendant’s. . .” Thus, the plaintiff had hoisted itself up by its own petard. The arguments it asserted to obtain registration came back to haunt it in its ability to enforce its rights against others.
