The Second Circuit saw little risk of consumer confusion between a canned java called Rise and PepsiCo’s use of the same word to market a new sweet and fruity energy drink offshoot of Mountain Dew soda.
MANHATTAN (CN) — PepsiCo is free to put the word “Rise” back in its Mountain Dew energy drink, the Second Circuit ruled Friday, vacating an injunction awarded to a coffee company last year.
“The trademark law does not favor giving one marketer an exclusive right to prevent others from using such valuable marketing terms in their own marketing campaigns,” US Circuit Judge Pierre Leval wrote for a three-judge panel in Manhattan. “When a mark so clearly evokes the claimed virtues of the product it references, that mark, although perhaps muscular as a marketing tool, is weak under the trademark law.”
Eight months earlier, PepsiCo was forced to drop the word “Rise” from its labeling after a federal judge ruled that the energy drink Mtn Dew Rise could be confused with a coffee beverage on the same shelf from Rise Brewing.
Vacating that injunction Friday, Leval said Rise Brewing had too weak a trademark, given that “rise” is a common word used for both coffee and energy products alike — a point the Clinton appointee also made at June oral arguments.
Rise Brewing had argued that the field was too crowded to add another “rise” product in the mix, but notably Rise Brewing was first denied its trademark request for the name “Rise Coffee Co.” because there were already too many coffee trademarks using “rise.”
Leval seized on this point in his 24-page ruling.
“If there was room for plaintiff’s use of ‘Rise’ in the already crowded coffee field, there would also be room for Defendant’s, especially on a product that is distinct from coffee,” the opinion states. “Trademark law does not offer robust protection to those who demand the exclusive right to use words that describe or suggest a product or its virtues.”
Rise Brewing has spent $17.5 million on publicity for its coffee drinks, but Leval noted that does not make their trademark any stronger, especially up against a senior brand like PepsiCo.
While both Rise Brewing and Mtn Dew cans say “RISE” in large letters, Leval said that there is not much else that would cause confusion to a shopper seeing the cans next to each other on a shelf.
“Beyond the presentations of the shared word, the overall appearances of the cans are very dissimilar,” Leval wrote. “There is little about the appearance of the two cans that would suggest to a consumer that they come from the same source.”
PepsiCo announced in 2021 it would release a fruit-flavored caffeinated beverage called Mtn Dew Rise Energy. Rise Brewing urged PepsiCo to not go forward with the name, but the parties failed to reach an agreement, prompting this suit.
PepsiCo was represented by Dale Cendali, with the firm Kirkland & Ellis, and Rise Brewing was represented by Paul Tanck, with Alston & Bird. Neither immediately responded to emails seeking comment.
Leval was joined in the opinion by US Circuit Judges Denny Chin, an Obama appointmentee, and Steven Menashi, a Trump appointmentee.
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