RiseandShine Corporation v. PepsiCo, Inc.
41 F.4th 112
2d Cir.2022Background
- RiseandShine (Rise Brewing) sells nitro cold-brew coffee in 7-ounce cans under the mark RISE and registered RISE BREWING CO. and a RISE design mark; use began in 2016 and the cans display large, plain RISE lettering with radiating lines.
- PepsiCo launched a 16-ounce fruit-flavored energy drink in March 2021 as MTN DEW RISE ENERGY with large stylized RISE lettering, MTN DEW house mark, bright colors, and a geometric lion logo.
- RiseandShine sent a pre-launch demand; Pepsi declined to cease use; RiseandShine sued for trademark infringement and unfair competition, alleging reverse confusion.
- The district court (S.D.N.Y.) granted a preliminary injunction enjoining Pepsi from using the mark pending trial, finding likelihood of confusion and that RISE was suggestive and relatively strong.
- The Second Circuit vacated the preliminary injunction, holding the district court erred in assessing the mark’s strength (inherent weakness and crowded third-party use) and in finding the cans’ overall appearance confusingly similar.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Inherent strength of the mark RISE | RISE is suggestive of morning/energy and thus protectable; registration and promotion show strength | RISE is inherently weak because it directly evokes coffee/energy and is widely used by third parties | Court: RISE is a weak suggestive mark closely tied to coffee/energy; inherent weakness weighs against plaintiff |
| Acquired (secondary) meaning from advertising | $17.5M in promotion and nationwide sales show consumer recognition supporting protection | Even with promotion, RISE’s inherent weakness and crowded field undercut any meaningful acquired strength for reverse-confusion claim | Court: Plaintiff failed to show acquired strength sufficient to overcome inherent weakness |
| Similarity of marks/trade dress (overall commercial impression) | Prominent, large RISE occupies top third of both cans and could cause reverse confusion that Rise products are Mountain Dew products | Overall packaging, size, color schemes, fonts, house mark (MTN DEW), and artwork are materially different and unlikely to confuse | Court: Visual and commercial differences are substantial; similarity finding was clear error |
| Entitlement to preliminary injunction (likelihood of success, balance of hardships) | Likelihood of success shown by reverse confusion; irreparable harm and public interest support injunction | Weak mark and dissimilar trade dress undercut likelihood of success; injunction imposes hardship on Pepsi | Court: Plaintiff did not show likelihood of success; balance of hardships does not favor plaintiff; injunction vacated |
Key Cases Cited
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (establishes the Polaroid factors for likelihood of confusion)
- Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020) (plaintiff must show likelihood of confusion to prevail on trademark claim)
- W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567 (2d Cir. 1993) (distinguishes inherent distinctiveness and acquired strength)
- Lang v. Retirement Living Pub. Co., 949 F.2d 576 (2d Cir. 1991) (defines reverse confusion)
- Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (discusses borderline suggestive marks and strength)
- Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43 (2d Cir. 2000) (shared common words may be insufficient for confusion absent stronger similarities)
- Plus Prods. v. Plus Disc. Foods, Inc., 722 F.2d 999 (2d Cir. 1983) (crowded field reduces scope of protection for marks)
- McGregor–Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979) (strength of mark depends on distinctiveness in eyes of public)