The U.S. Court of Appeals for the Ninth Circuit affirmed a District Court decision finding that the lips used on Jim Beam Brand Co.’s (“Jim Beam”) Pucker brand vodka do not infringe on the lip trademark used by JL Beverage Company (“JL”) on its Johnny Love Vodka trademark. The Court found that the marks as a whole were dissimilar and would cause no likelihood of confusion for consumers.

Background

In 2011, JL brought suit against Jim Beam for trademark infringement of both it’s JLV mark and it’s JL Lips mark shown below:

The marks are used on different flavored vodkas in the Johnny Love Vodka brand with the lips changing colors according to the vodka flavor as shown below:

Jim Beam applied for a trademark for its lip mark in 2011 but ended up withdrawing the application after discovering the lip was “stock art” from iStockphoto LP. Prior to withdrawal, Jim Beam received a rejection of the mark from the Trademark Office citing JL’s lip mark as being confusingly similar. Jim Beam relaunched the newly designed Pucker product in April of 2011 as shown below:

JL sent a cease and desist letter to Jim Beam alleging trademark infringement. Jim Beam responded that they did not believe that their lip mark on the Pucker vodka infringed on JL’s mark. Accordingly, JL brought suit in the U.S. District Court for the District of Nevada in July 2011 alleging trademark infringement, false designation of origin and unfair competition.

First District Court and Appeals Court Cases

The District Court granted Jim Beam’s motion for summary judgement and dismissed the case. JL appealed to the U.S. Court of Appeals for the Ninth Circuit.

The Appeals Court found that there was a genuine dispute of material fact. The Appeals Court cited that both the JLV mark and the lips mark have conceptual strength because the lips have no common connection to vodka; both JL and Pucker vodkas are related flavored liquor products sold to the same consumers; these consumers would not likely exercise a high degree of care in distinguishing between the two products; the products are similar in that they both use color-coded puckered human lips; and Jim Beam was aware of JL’s trademarks prior to marketing its Pucker brand. Accordingly, the Appeals Court reversed and remanded the case back to the District Court.

Second District Court and Appeals Court Cases

In its second swing at the case, the District Court found that there was no likelihood of confusion between the JLV mark or the JL lips mark and the lips on Pucker vodka. The Court stated that there are several differences in the appearance of the lips. Also, the JLV line has drastically different trade dress than that of the Pucker line. In addition, the Court found that consumers exercise some care when selecting alcoholic beverages such that they would not be confused between the brands. The Court also found that Jim Beam did not act with intent to capitalize on the good will of JL. Further, the Court found that JL failed to introduce persuasive evidence of the commercial strength of its marks. As such, the District Court ruled that there was no likelihood of confusion between the marks. JL appealed.

The Appeals Court agreed with the District Court and found no infringement by Jim Beam. The Appeals Court stated that the marks must be considered in their entirety as they appear in the marketplace. The Court noted several differences between JL’s product and Jim Beam’s product. For example, the Court noted differences in the placement of the lips on the product; differences in background color; and differences in the shapes of the bottles. Accordingly, the Appeals Court affirmed the District Court’s decision that there was no likelihood of confusion between the marks and thus Jim Beam’s lip mark on its Pucker vodka brand did not infringe.

An important consideration when picking an image as a trademark is the distinctiveness of that image. Ideally you want to pick a mark that is distinct to be afforded the most protection.