Lipstick Marks Used in Vodka Trade Dress Not Sufficiently Similar to Create Confusion

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By Anandashankar Mazumdar

The use of an image intended to evoke the prints made by a woman's lips on a vodka label was not sufficient by itself to create a likelihood of confusion with another vodka brand that also uses lip marks in its logos, the U.S. District Court for the District of Nevada ruled Sept. 25 (JL Beverage Co. v. Beam Inc., D. Nev., No. 2:11-cv-00417-MMD-CWH, 9/25/12).

Denying a motion for a preliminary injunction, the court determined that the plaintiff—the producer of Johnny Love Vodka—had failed to establish a likelihood of success on the merits of its trademark claims against the maker of Pucker Vodka.

Calif. Restaurateur Develops Line of Flavored Vodkas.

Johnny Metheny was the owner of several restaurants in California, several of which operated under the name “Johnny Love,” his nickname.

Starting in 2003, Metheny began developing a line of flavored vodkas, and he designed a logo using the name “Johnny Love Vodka,” in which the letter O in “Love” was replaced by an image intended to depict lipstick marks left by a woman's kiss. In 2005, Metheny sold the rights to the brand and the vodkas to Thomas Diab, who established the JL Beverage Co., based in Henderson, Nev.

JL Beverage registered two trademarks with the Patent and Trademark Office, the first being the Johnny Love Vodka logo with the lip marks (in 2006), and the second being the lip mark by itself (in 2011).

Jim Beam Maker Buys Dutch Vodka Brand.

Beam Inc. of Deerfield, Ill., is a company that produces more than 50 brand names of whiskey, tequila, rum, brandy, and other spirits and liqueurs. Its popular brands include Jim Beam, Maker's Mark, Old Crow, Teacher's, Canadian Club, Courvoisier, and Harvey's Bristol Cream.

Another one of Beam's brands uses the name “Pucker Vodka,” which it purchased from a Dutch company, Koninklijke De Kuyper B.V., in 2010. Beam commissioned the development of a new design for the packaging and labeling of Pucker Vodka, which was launched in 2011. The label prominently features an image of a woman's lip prints.

Beam submitted applications to register the designs with the PTO, but withdrew the applications. According to Beam, the reason for the withdrawal was that it did not hold copyrights in the image of the lip marks used in the design.

However, the PTO did in June 2011 reject the applications based on JL Beverage's lips mark registration.

JL Beverage sued Beam, alleging trademark infringement, false designation of origin, and unfair competition. Beam counterclaimed for cancellation of the lips-only mark. JL Beverage moved for a preliminary injunction barring Beam from using the Pucker labels featuring the lipstick marks.

Likelihood of Confusion Test Applied.

In determining that JL Beverage had not established a likelihood of success on the merits of its infringement claims, Judge Miranda M. Du applied a seven-factor test set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ 808 (9th Cir. 1979) (438 PTCJ A-15, 7/26/79).

Turning first to the full “Johnny Love Vodka” mark, the court noted that lip symbols are used for several other alcoholic beverages and that the brand “has a relatively weak commercial presence.” On the other hand, the court found that the Pucker brand was relatively strong commercially. Thus, the first Sleekcraft factor favored Beam.

The second factor—relatedness of the goods—weighed in JL's favor, the court said.

In turning to the third factor, the court found reason for much more expansive exploration. The court compared the bottles, the labels, and the use of the parties' house marks (“Johnny Love Vodka” and “Pucker”).

The court gave particular attention to the actual lip print images, finding that they were distinct, not only in their own appearances, but also because of the use of the lip marks as the O in the Johnny Love logo.

“On [Beam's] bottle, the lips stand alone, are very large, and appear to be the focal point of the label,” the court said. “While both marks use images of lips, that basic commonality does not make them similar for the purpose of trademark infringement.”

Lipstick Markings Not Very Similar.

The court then set forth a detailed comparison of the lip designs, finding significant differences.

On top of that, the court determined that when spoken, the two brand names were not alike.

Among the remaining factors, the actual confusion factor was found to weigh for neither party. The factor addressing Beam's intent also did not weigh for either party.

The court found Beam's withdrawal of its registration applications irrelevant to the analysis, whether because of the rights issue or because they discovered JL Beverage's registrations. Mere awareness of a senior user's usage does not imply bad faith, the court said.

The marketing channels were identical, the court said, so this factor weighed for JL Beverage. The price ranges were also similar and thus the degree of care factor also weighed for JL.

The last factor—likelihood of expansion—was irrelevant because the parties' goods were already in the same market.

Balancing the factors, the court particularly emphasized what it considered to be the lack of similarity between the marks in question and determined that there was not a likelihood of success.

The court then addressed the question with regard to JL's lips-only mark. Here, the court emphasized the relative commercial strength of Beam's mark. Furthermore, when it came to similarity, the lips-only mark was considerably different from the Beam usage. The court said:

  • [T]here is even greater dissimilarity between the JL Lips mark and the Pucker Vodka trademark than between the [Johnny Love Vodka] mark and [Beam's] mark. The two marks are used on different parts of the bottle; the JL Lips mark stands alone while the Pucker lips are part of an intricate and colorful logo; the JL Lips mark appears to be decorative while the Pucker lips are colored to denote a particular flavor.

Given all these differences, the court concluded that there was no likelihood of confusion between the marks. The court reached the same conclusion with regard to JL's common law trademark claims and the unfair competition claims.

The court thus denied JL's motion for a preliminary injunction.

JL Beverage was represented by Chad W. Miller of Weide & Miller, Las Vegas, Beam was represented by Michael J. McCue of Lewis & Roca, Las Vegas. 

  

By Anandashankar Mazumdar

Opinion at http://pub.bna.com/ptcj/JLBeverageSept25.pdf