Last week, a decade-long trademark lawsuit met its end when the Ninth Circuit affirmed a non-infringement judgment for Jim Beam, the owner of the Pucker Vodka brand, in JL Beverage Co., LLC v. Jim Beam Brands Co.  Back in 2011, after sending a cease-and-desist letter to Jim Beam, which Jim Beam ignored, JL Beverage Company filed the suit asserting federal Lanham Act and Nevada state common law claims.  The suit alleged that Pucker Vodka’s "lips" mark infringed JL Beverage's two "lips" marks used in its Johnny Love Vodka products.  After the Ninth Circuit previously reversed the District Court of Nevada's summary judgment for Jim Beam, the District Court held a two-day bench trial and ultimately ruled that JL Beverage did not establish a likelihood of confusion between the marks.  On appeal of the trial judgment, the Ninth Circuit held that the district court’s determination on likelihood of confusion was not clearly erroneous on three challenged fronts.   

First, the Ninth Circuit found no clear error in the lower court’s holding that the marks were not similar.  Under AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), courts in the Ninth Circuit consider several factors in determining likelihood of confusion, including the “similarity of the marks.”  In this case, while the Court of Appeals recognized that the products’ lips designs were similar and both JL Beverage and Jim Beam matched the colors of the lips with vodka flavors, it decided that the district court properly assessed the marks “in their entirety and as they appear in the marketplace.”  Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1128 (9th Cir. 2014).  Specifically, the Court of Appeal held that the facts supported a finding of no likelihood of confusion because (1) JL Beverage’s lips spelled out the "Johnny Love Vodka" name but Jim Beam’s lips appeared below the "Pucker" name, (2) the bottles were shaped differently, and (3) JL Beverage placed its marks against a clean silver background while Jim Beam put its own marks against a background with bright splotches of color.

Second, the Ninth Circuit turned its attention to Sleekcraft’s “intent to confuse" factor, which depends on whether the plaintiff’s claim is for “forward” or “reverse” confusion.  Under forward confusion, which alleges that consumers mistake the subsequent junior user of a mark for the original senior user, intent to confuse is presumed where the junior user knowingly adopts a mark similar to the senior user’s mark.  On the other hand, reverse confusion is a claim that the junior user has saturated the market with its mark to such a degree that consumers mistake the senior mark for the junior mark and intent may be established where the defendant knew or should have known about the senior mark.  In considering both intent standards, because JL Beverage raised forward and reverse confusion claims, the Ninth Circuit found no clear error in ruling that Jim Beam had no intent to confuse because intent cannot be inferred where the marks are dissimilar and the district court’s holding of no similarity was not clearly erroneous.  Thus, although Jim Beam became aware of the senior marks due to JL Beverage’s cease-and-desist letter, actual knowledge did not warrant an inference of intent to confuse.

Finally, the Ninth Circuit found the lower court’s holding that the “strength of the mark” Sleekcraft factor favored Jim Beam also did not require reversal.  While the Court suggested that Jim Beam’s strong market presence meant that consumers could mistakenly believe when buying Johnny Love Vodka that they were purchasing a Jim Beam product, it was unclear from the record that in 2011—the only year that both products were sold simultaneously—Pucker Vodka’s trade dress design was commercially strong.  But in any event, the Ninth Circuit held that, even assuming the strength of the mark finding was clear error, the district court’s overall finding of no likelihood of confusion was not clearly erroneous because the other Sleekcraft factors weighed in Jim Beam’s favor. 

In this case, the Ninth Circuit’s affirmation of non-infringement after previously reversing summary judgment of the same result puts the higher standard for reversal following trial (as opposed to summary judgment) on full display.