Metropolitan News-Enterprise


Friday, July 15, 2016


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Ninth Circuit Revives Vodka Trademark Suit


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals yesterday  revived claims that Jim Beam’s line of flavored vodkas, Pucker, infringes on the trademark of JL Beverage, which markets its Johnny Love flavored vodkas with a prominent image of lips. 

U.S. District Judge Miranda Du of the District of Nevada granted summary judgment to Jim Beam Brands in 2013. But the appellate panel yesterday said there were triable issues of fact as to whether, among other things, consumers may have confused the competing brands.

JL Beverage sued Jim Beam Brands in 2011, shortly after the launch of Pucker Vodka. The company said Pucker Vodka’s use of lipstick imprint on its bottle would confuse consumers with regards to Johnny Love, allowing Jim Beam to capitalize on the brand’s recognizable image.

Du initially denied JL Beverage’s motion for preliminary injunction, saying it was unlikely to prevail on the merits, and later granted Jim Beam’s motion for summary judgment. But Senior Judge J. Clifford Wallace, writing for the Ninth Circuit, said the district judge mistakenly applied the same standard to both motions.

On a preliminary injunction motion, he said, the burden is on the plaintiff to show a likelihood of prevailing, among other things. But on a summary judgment motion, the burden is on the defendant to show that there are no triable issues of fact, he emphasized.

Du, he said, “ultimately placed the burden on JL Beverage, the plaintiff, to prove the merits of its claims [and] failed to view the evidence in the light most favorable to JL Beverage, and never analyzed whether a genuine dispute of material fact existed.”

The Ninth Circuit, Wallace explained, uses an eight-factor test to determine whether consumers are likely to be confused, under the 1979 case AMF Inc. v. Sleekcraft Boats, 599 F.2d 341. In this case, he said, there are triable issues with respect to four of the factors—“the strength of the mark,” “similarity of the marks,” “evidence of actual confusion,” and “the defendant’s intent in selecting the marks.”

The judge summarized:

“A reasonable fact-finder could conclude that: the JLV Mark has conceptual strength because the Mark’s salient feature, the color-coordinated lips, requires consumers to use their imagination to connect the color to the vodka flavor; the Lips Mark has conceptual strength because the lips have no commonly understood connection to the vodka product; JohnnyLove Vodka does or does not have commercial strength (because a finding of either would support one of JL Beverage’s theories of confusion–reverse or forward); Johnny Love and Pucker Vodka are related flavored-liquor products sold to the same customers and distributors; the products are similar given their use of color-coordinated, puckered human lips as the focal point of their bottle designs; consumers purchasing the vodka products are not likely to exercise a high degree of care in distinguishing between the two; and Jim Beam was aware of JL Beverage’s trademarks prior to rolling out its Pucker Vodka line.”

The case is JL Beverage Company, LLC v. Jim Beam Brands Company, 13-17382.


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