Monday, July 11, 2016

Pom and circumstance: Pom Wonderful wins against Pur Pom

Pom Wonderful LLC v. Hubbard, No. 13-06917, 2016 WL 3621281 (C.D. Cal. Jun. 29, 2016)

Disclosure: I consulted with Pom on an earlier iteration of this litigation, though I have not been involved subsequently.  Even when courts in the Ninth Circuit get outcomes right, their reasoning is often head-scratching, and this case is no exception.

Pom sued Hubbard and his company for trademark infringement over its PUR Pǒm flavored beberages.  The district court initially denied Pom’s motion for a preliminary injunction; the court of appeals reversed, but the district court again denied a preliminary injunction given the high standard set by Herb Reed.  Now we’re at summary judgment, where Hubbard counterclaimed for cancellation of Pom’s marks on various grounds.  Pom won summary judgment; Hubbard lost. The court included lots of pictures, which is great!

The parties’ products are sold in single serve containers in the refrigerated sections of supermarkets, at a retail price of $1.99 for POM Wonderful pomegranate juice and $2.00 for PUR Pǒm.

The parties' marks as used

Hubbard argued that Pom abandoned its standard character mark by only ever using a version with a heart in the place of the “o” in Pom, which it separately registered as a stylized mark. The court held that use of the stylized mark also constituted use of the standard character mark, and thus there was no abandonment.  The parties appear to think that abandonment is important because a standard character mark affords a registrant “a broader scope of coverage” compared to a stylized mark (citing McCarthy), even though that doesn’t actually affect the infringement analysis.  The court cites a number of registration proceedings/rulings about the significance of a standard character mark in the registration process, as well as the Ninth Circuit’s statement in this case, that the “‘POM’ standard character mark is extremely broad, covering the word in all types of depictions.” Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 (9th Cir. 2014).  But then it went on to ignore that in the infringement analysis, focusing on the similarity between the mark Pom uses and the mark Hubbard uses.
Pom's stylized mark
If the specimen of use shows a display of the standard characters “in a distinctive manner that changes the meaning or overall commercial impression of the mark,” then the standard character mark can’t stand.  The PTO allows a stylized version to be separately registered if “the word [that forms the standard character mark] itself creates a commercial impression separate and apart from the designs in the letters.” The TMEP says: “If a mark remains the same in essence and is recognizable regardless of the form or manner of display that is presented, displaying the mark in standard character format affords a quick and efficient way of showing the essence of the mark.”

The TTAB allowed a standard character registration for OROWEAT with the specimen shown below, because the word “creates a commercial impression separate and apart from the merely ancillary design with which it is associated.”

The same with SPECTRAMET, even though the specimen depicted a stylized “C” consisting of “an arrow within an arrow in contrasting shades, in which the outer arrow is dark and surrounding the inner arrow in white.” 

Given this precedent, the court thought the result here was clearly mandated, because “POM” created a distinct commercial impression; the stylized lettering “does not alter the pronunciation or perception of the word; the standard character mark is both aurally and visually indistinguishable from the mark bearing a heart-shaped ‘O.’”

The TTAB’s contrary decision about the version of FOSSIL shown below was very different: the rights conferred by the standard character mark “FOSSIL” did not cover use of the mark coupled with additional words inside an oval.

The court then granted Pom summary judgment on Hubbard’s argument that the term “pom” was generic for pomegranates.  Hubbard submitted one Pom Wonderful advertisement and evidence of third-party use of the term “pom,” but the court found this failed to create a triable issue of fact, given Hubbard’s burden of proof.  Pom’s own generic use of the term was not repeated and consistent; it was one ad from 2002 that said, “The POM stands for pomegranate.” This single, isolated incident was insufficient.

As for third-party use, Hubbard testified in a declaration that he googled  “pom flavor,” which yielded 52,000 pages of results. He searched the first ten pages and located numerous generic uses in which third parties referenced “pom” as shorthand for pomegranate. Pom has also opposed 32 third-party applications with the USPTO to register trademarks containing the word “pom” as a component of the mark.

The Google search didn’t show anything about whether the term was generic when Hubbard’s product entered the market, in 2013, which was the relevant date for determining genericity.  Also, Hubbard’s URL list dump was unexplained and unanalyzed.  “It is impossible to determine solely from a series of hyperlinks whether competitors are actually using the term ‘pom’ as a proxy for pomegranate or whether these third-party references simply use ‘pom’ in a descriptive manner to designate the pomegranate flavor of their products.”  Hubbard also didn’t explain the relevance of the 32 trademark applications, some of which clearly made no reference to pomegranate, such as “Pom Poms” for cookies in the shape of pom poms.

This “anemic” showing didn’t create a triable issue of fact on genericness.

The parties' beverage containers

Pom’s trademark infringement claim: The court, unfortunately, found that “Pom” was suggestive because it “requires consumers to exercise some imagination to ascertain the nature of Pom Wonderful’s products.”  At this point, I guess I have to say this is not the test outside the 9th Circuit.  Everywhere else does it right: you don’t ascertain conceptual distinctiveness without considering the goods or services.  Is “pomegranate” inherently distinctive?  Well, that depends on what it’s for!  I might have to use imagination to guess that it was for computers, but not for beverages.

This error has limited consequence here because (a) the court considered suggestive marks “presumptively weak” and (b) Pom showed marketplace strength through ad expenditures and other evidence.

Similarities in the marks “abound[ed].”  The letters were the same; both had style variations on the “o,” a heart and a diacritical; they both used uniform casing (all caps and all lower case); they were both in white print on a dark maroon background.  Sound and meaning were also similar/semantically identical.  There were differences in sizes, fonts, and capitalization, as well as the emphasis given to the marks; the Pur product used a smaller “Pǒm” mark near the bottom of the can.  But overall the similarities made this factor weigh in Pom’s favor.

The goods were closely related, the marketing channels overlap (both were even at Albertson’s stores at one point), the degree of consumer care was low, and the remaining factors weren’t important under the circumstances—intent is minimally important, and no evidence of actual confusion is required. Five of the Sleekcraft factors “overwhelmingly” weighed in favor of Pom, and the only one that weighed in favor of Hubbard was intent.

The court then rejected Hubbard’s descriptive fair use defense.  The court first ruled that “pom” didn’t have a descriptive meaning, which seems really inconsistent with its treatment of the Google search results above, not to mention the classification of “pom” as suggestive; the court thought that, because “pom” didn’t have a dictionary definition, it couldn’t be used descriptively, “as it carries no inherent meaning or significance beyond its function as a registered trademark.”

Even if it could be used descriptively, the court (either failing to notice KP Permanent or, perhaps more realistically, doing what courts in the 9th Circuit do when confronted with KP Permanent) held that, in the Ninth Circuit, descriptive fair use is unavailable when there’s a likelihood of confusion.

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