JL Beverage Co. v. Jim Beam Brands Co.
828 F.3d 1098
| 9th Cir. | 2016Background
- JL Beverage owns registered marks for its flavored vodka line: a composite “Johnny Love Vodka” (JLV) mark (registered 2005) and a standalone color-coordinated lips logo (JL Lips) (registered 2011); the lips vary by flavor and appear on bottle labels.
- Jim Beam acquired the Pucker brand and redesigned Pucker Vodka with a prominent, flavor-colored lips logo; Jim Beam’s legal search earlier found JL Beverage’s JLV mark and the USPTO later cited JL Beverage’s lips mark in refusing Jim Beam’s lips registration.
- JL Beverage sued Jim Beam for trademark infringement, false designation of origin, and unfair competition under the Lanham Act and Nevada law after sending a cease-and-desist and after Jim Beam’s national Pucker rollout; the district court denied a preliminary injunction and granted summary judgment for Jim Beam.
- The Ninth Circuit reviewed de novo and held the district court applied the wrong standard at summary judgment (it used the preliminary-injunction standard) and failed to view evidence in the light most favorable to the nonmoving party.
- Applying the Sleekcraft multi-factor likelihood-of-confusion test, the Ninth Circuit found genuine disputes of material fact on key Sleekcraft factors (mark strength, similarity, evidence of actual confusion, and defendant intent) and reversed and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standard for deciding cross-motions for summary judgment | District court must view evidence favorably to nonmoving plaintiff (JL Beverage) and require movant (Jim Beam) to show no genuine dispute | District court applied preliminary-injunction standard and placed burden on JL Beverage | Court reversed: district court applied wrong standard and failed to test for genuine disputes of material fact |
| Strength of JL Beverage’s marks (conceptual/commercial) | JLV is at least suggestive (color-coordinated lips indicate flavor); JL Lips may be arbitrary; commercial strength is disputed (national sales/marketing) | Lips are in a “crowded field” and JLV is descriptive because it includes “vodka”; JL Beverage’s market presence is weak | Genuine disputes exist on conceptual and commercial strength; factual issues preclude summary judgment |
| Similarity of the marks | Both use puckered, flavor-colored human lips with similar angle/shape; USPTO examiner and a regulator found them similar | Bottle shape, labeling, and house marks differ; overall commercial impression differs | Evidence creates a genuine dispute of material fact about similarity |
| Evidence of actual confusion | Broker declarations and third-party messages report instances of confusion | Much of that evidence is hearsay and some reports show no confusion; district court found it unreliable | Current actual-confusion evidence is weak (hearsay), but absence is not dispositive; disputed facts remain for trial |
| Defendant’s intent | Jim Beam knew of JL Beverage’s JLV (from clearance search), employee awareness, and USPTO rejection notice, yet proceeded with colored-lips design | Jim Beam lacked intent to infringe; use was innocent and based on stock art/independent design | Knowledge creates a jury question; intent to deceive not required—fact dispute precludes summary judgment |
Key Cases Cited
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (sets the eight-factor likelihood-of-confusion test)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (likelihood-of-confusion inquiries are fact intensive and summary judgment is generally disfavored)
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008) (preliminary-injunction burden on moving plaintiff explained)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (movant on summary judgment must show no genuine dispute of material fact)
- Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 (9th Cir. 2005) (distinguishes forward and reverse confusion and applies Sleekcraft factors)