JL Beverage Co. v. Beam, Inc.

899 F.Supp.2d 991

JL BEVERAGE COMPANY, LLC, Plaintiff,

v.BEAM, INC. et al., Defendants.

Case No. 2:11–cv–00417–MMD–CWH.

United States District Court, D. Nevada.

Sept. 25, 2012.

Chad W. Miller, Ryan R. Gile, Kendelee Leascher–Works, Weide & Miller, Ltd., Las Vegas, NV, A. Todd Merolla, Meroilla & Gold, LLP, Atlanta, GA, for Plaintiff.

Michael J. McCue, Jonathan W. Fountain, Lewis & Roca, LLP, Las Vegas, NV, Angela J. Baylin, Claudia W. Stangle, Mark J. Liss, Leydig, Voit & Mayer, Ltd., Chicago, IL, Defendants.

ORDER

(Plf.'s Motion for Preliminary Injunction—dkt. no. 36)

MIRANDA M. DU, District Judge.

I. SUMMARY

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 IMAGE

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 IMAGE 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:

IMAGE

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.

2. Defendants' Mark

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 marketing campaign for the brand. The new Pucker Vodka launched in Spring 2011. The bottles contain a prominent lips IMAGE

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 IMAGE

JL Beverage uses the JLV mark on bottles of its unflavored vodka.

1. Factor 1: Strength of the Mark

“The more likely a mark is to be remembered and associated in the public mind with the mark's owner, the greater protection the mark is accorded by trademark law.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir.2000). “The strength of the trademark is evaluated in terms of its conceptual strength and commercial strength.” SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 846 F.Supp.2d 1063, 1078 (N.D.Cal.2012). However, “[i]n reverse confusion cases, courts evaluate the conceptual strength of the senior user's mark and compare it to the commercial strength of the junior user's mark.” Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F.Supp.2d 1214, 1224 (C.D.Cal.2004); see also Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 n. 5 (9th Cir.1998); Playmakers, LLC v. ESPN, Inc., 297 F.Supp.2d 1277, 1281 (W.D.Wash.2003) (“Playmakers I ”), aff'd sub nom. Playmakers LLC v. ESPN, Inc., 376 F.3d 894 (9th Cir.2004) ( “Playmakers II ”). “The ultimate question in a reverse confusion case is whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user.” Playmakers II, 376 F.3d at 897 (quotation marks and citation omitted).

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.

a. Conceptual strength of the senior mark

“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, 279 F.3d 1135, 1142 (9th Cir.2002). JL Beverage uses the JLV mark in commerce as a whole. Although Plaintiff does at times only use the lips portion of the mark in commerce (for example, on the imprint at the top of the bottle cap), JL Beverage owns and has registered the lips mark as a separate trademark.⁵

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. ⁶ The ‘lips' portion of the mark is not descriptive. It is arbitrary, because it is a symbol in “common linguistic use but which, when used with [vodka], neither suggest[s] nor describe[s] any ingredient, quality or characteristic of those goods or services.” Moose Creek, 331 F.Supp.2d at 1222. Yet “even an arbitrary mark may be classified as weak where there has been extensive third party use of similar marks on similar goods.” Matrix Motor Co., Inc. v. Toyota Jidosha Kabushiki Kaisha, 290 F.Supp.2d 1083, 1091 (C.D.Cal.2003). “This is known as the ‘crowded field’ doctrine.” Moose Creek, 331 F.Supp.2d at 1224 (citation omitted). “In a crowded field of similar marks, each member of the crowd is relatively weak in its ability to prevent use by others in the crowd.” One Indus., 578 F.3d at 1164 (internal quotation marks omitted). “[T]hat the marketplace is replete with products using a particular trademarked word” or symbol “indicates not only the difficulty in avoiding its use but also, and directly, the likelihood that consumers will not be confused by its use.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1144 (9th Cir.2002). Defendants provide numerous examples of alcoholic beverages that use lips as trademarks or as part of their trademarks. ( See, e.g., dkt. nos. 47, 49–1, 49–2, 49–4, 49–5, 49–6, 49–7, and 49–8.) These examples include lips marks used on product labels for prepared vodka cocktails, wine, and beer. ( See id.) Plaintiff argues that none of these lips IMAGE 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

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'...