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Wednesday, December 31, 2014


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Ninth Circuit Revives Injunction Bid in Suit Over ‘POM’ Trademark


From Staff and Wire Service Reports


The maker of POM Wonderful pomegranate juice and related products is likely to prevail on its claim that the name and trademark of a competitor’s product are confusingly similar to its own, the Ninth U.S. Circuit Court of Appeals ruled yesterday.

The panel overturned an order by U.S. District Judge M. Margaret Morrow of the Central District of California, who had denied Pom Wonderful LLC’s motion for a preliminary injunction against Pur Beverages and its chief executive officer Robert Hubbard. Hubbard’s company makes a pomegranate-flavored energy drink called “pom,” with an upwardly curved diacritic over the “o.”



In these file photos, a bottle of Pom Wonderful is seen on left, and a bottle of Pur Beverages’ pomegranate juice is on the right.


The panel sent the case back to the district court for a ruling as to whether the plaintiff meets the other criteria for the issuance of a preliminary injunction.

Pom Wonderful sued Pur last year, one of a number of actions the company has taken over the last 12 years to jealously guard its trademark. Pom Wonderful has sold some 190 million bottles of pomegranate juice since 2002.

But Hubbard vowed that the company’s trademark “bullying” is coming to an end. “It’s preposterous and it’s going to stop with this lawsuit,” Hubbard said in an email to Courthouse News Service.

“Mark my words: I will be the company that makes Pom Wonderful lose their trademark ‘POM,’” Hubbard added. “It will then allow the consumer packaged goods industry to use the properly used, and widely known term ‘pom’ to describe it’s pomegranate flavored products, without the threat of a bully company suing every person or company that utters those three letters in sequence.”

Visiting Judge

Senior Judge David M. Ebel of the Tenth Circuit, sitting by designation, said it was error for Morrow to conclude “that the similarity of marks, marketing channel convergence, actual confusion, defendant’s intent, and product expansion factors weighed against Pom Wonderful.”

Ebel reasoned that “Pur’s beverage not only bears a mark that is visually, aurally, and semantically similar to Pom Wonderful’s commercially strong ‘POM’ mark—which Pom Wonderful has used exclusively since 2002—but also is designed for the same use and sold to the same general class of consumers as Pom Wonderful’s juice beverages at a price point where consumer discernment is weak,” Ebel added.

Senior Judge Andrew Kleinfeld and Judge Susan Graber concurred in the opinion. In a footnote, Ebel emphasized that the panel was not expressing an opinion on the ultimate merits of the case.

‘Broad Rights’

Pom Wonderful’s attorney, Joseph Klapach, applauded the court for “recognizing the extremely broad rights associated with POM’s nationally known character mark.”

“This is an important ruling that will protect trademark owners and consumers alike,” Klapach added.

For Hubbard, however, a trial will show that “there simply isn’t” confusion.

“Because they will not be able to provide evidence, simply because there is none, they will not obtain the injunction, nor will they succeed on their claims of infringement at trial,” Hubbard said in his email.

Hubbard added that the litigation will invalidate Pom Wonderful’s “previously incontestable” standard word trademark of “POM.”

“They will lose their registration of the mark under the theory of genericness,” Hubbard said.     The market is booming with products that widely use the term pom to describe pomegranate flavoring, Hubbard said.

“The term has now become generic, and thus, not deserving of Federal Trademark Registration,” his email continued.

Heather Lynn McCloskey of Sedgwick, LLP argued the case for Pur.

The case is Pom Wonderful LLC v. Hubbard, 14-55253.


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