By Peter Reap, J.D., LL.M.
Through the use of its "Beam Lips Mark" used on a line of Puckers vodkas launched in 2011, Beam Inc. and Jim Beam Brands Co. (collectively, Jim Beam) did not infringe two marks asserted by JL Beverage Company, (JL Beverage) that also featured a graphical design depicting a lips imprint (as if from lipstick) that JL Beverage registered in 2005 (the JLV Mark) and in 2011 (the JL Lips Mark) on its line of Johnny Love Vodka products from 2005 until sales ended in 2011, the federal district court in Las Vegas has decided. There was no likelihood of confusion between the marks, and importantly, the trade dress of Johnny Love Vodka differed substantially from the trade dress of Jim Beam’s products, the court noted. In addition, the court ruled that Jim Beam was not entitled to cancellation of JL Beverage’s JL Lips Mark (JL Beverage Co., LLC v. Beam, Inc., July 23, 2018, Du, M.).
JL Beverage registered its JLV Mark for "vodka" on August 16, 2005, under United States Patent and Trademark Office ("USPTO") Registration No. 2,986,519. The JL Lips Mark was registered for "distilled spirits" on October 25, 2011, under USPTO Registration No. 4,044,182. JL beverage filed its amended complaint for Lanham Act and common law infringement on December 5, 2011. Jim Beam filed three counterclaims, but the only counterclaim it presented evidence on was for cancellation of the JL Lips Mark registration based on a likelihood of confusion with Jim Beam’s earlier U.S. Registration No. 2,638,476 (the "Beam Lips Mark").
Likelihood of confusion. Because JL Beverage pursued both theories of forward and reverse confusion, the court was required to determine whether a reasonable consumer interested in purchasing vodka or flavored vodka could think that JL Beverage produces Pucker or that Pucker Vodka is the same product as Johnny Love Vodka (forward confusion), or could think that the Beam defendants produce Johnny Love Vodka or that Johnny Love Vodka is the same product as Pucker Vodka (reverse confusion). To determine whether a likelihood of forward or reverse confusion exists, courts apply the eight Sleekcraft factors.
Here, there was no likelihood of confusion, an analysis of the relevant factors showed, the court ruled. First, considering the conceptual strength of JL Beverage’s marks, Jim Beam conceded that the JLV Mark is arbitrary. The JL Lips Mark is suggestive—not arbitrary or fanciful—because the JL Lips Mark suggests at least three characteristics of the vodka: (1) the color of the JL Lips Mark suggests the flavor of the vodka the bottle contains; (2) the JL Lips Mark suggests that the vodka is appealing from the point of first contact with the mouth—the lips; and (3) the JL Lips Mark connotes sexuality—it resembles the imprint left by a lipstick-slathered kiss.
As to the commercial strength of the JL Beverage marks, the evidence did not show extensive sales or advertising, especially for a national market, the court explained. In addition, the vast majority of JL Beverage’s advertising and sales occurred before Pucker Vodka even hit the market. JL Beverage had only minimal sales in 2011 and did not produce credible evidence of any sales after 2011. Thus, whatever marketplace recognition JL Beverage possessed at the time of its relatively modest promotional efforts had likely waned to some degree by the time Pucker Vodka launched. As for Jim Beam’s Lips Mark, it looked substantially different from the lips that appear on the Pucker Vodka bottles. The Jim Beam Lips Mark is heavily stylized, whereas the lips on the Pucker Vodka bottles are more naturalistic, closely resembling an actual lipstick print. Thus, the depiction of lips that appears on the Pucker Vodka bottles is junior to both of JL Beverage’s marks, the court concluded. Nevertheless, in light of the weak commercial strength of JL Beverage’s marks, the commercial strength of Jim Beam’s trade dress design does not generate a likelihood of confusion.
Furthermore, there were significant differences between the marks when evaluated in the context of their entire trade dress, the court reasoned. The bottle shapes are different. JL Beverage uses a standard stock wine bottle with a long neck, whereas Jim Beam uses a bespoke cylindrical bottle. The bottle closures and product labels also are different. The "lips" images, including their thickness, curvature, and placement, are different too. The product names—"Pucker" and "Johnny Love"—are dissimilar in sight, sound, and meaning. Moreover, Jim Beam’s prior successful use of the Pucker name in association with liqueurs meant that consumers who encounter Jim Beam’s new line of Pucker flavored vodkas are more likely to believe that the product is an extension of the existing Pucker liqueur line.
JL Beverage’s minimal evidence of actual confusion was rebutted by Jim Beam’s evidence of an absence of actual confusion, the court decided. Moreover, consumers occasionally give some thought to distilled spirits products before deciding to purchase them. Consequently, this factor weighed against a finding of likelihood of confusion. Finally, JL Beverage did not introduce evidence that Jim Beam acted intentionally to capitalize on or siphon off the goodwill of the Johnny Love Vodka brand. In sum, JL Beverage could not succeed on its infringement claims because there is no likelihood of confusion.
Cancellation of the JL Lips Mark. As for Jim Beam’s cancellation counterclaim, Jim Beam’s argument that the court should evaluate the similarity of the marks in the abstract and divorced from their trade dress was unpersuasive. There is no likelihood of confusion because the marks are so plainly dissimilar.
This case is No. 2:11-cv-00417-MMD-CWH.
Attorneys: Chad W. Miller (Weide & Miller, Ltd.) and Colin C. Holley (HamptonHolley LLP) for JL Beverage Co., LLC. Edward T. Colbert (Hunton Andrews Kurth LLP) and Michael J. McCue (Lewis Roca Rothgerber Christie LLP) for Jim Beam Brands Co. and Beam Inc. d/b/a Beam Suntory, Inc.
Companies: JL Beverage Co., LLC; Jim Beam Brands Co.; Beam Inc. d/b/a Beam Suntory, Inc.
MainStory: TopStory Trademark NevadaNews
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