Article by Sarah Benowich
A recent decision highlighted some of the evidentiary challenges in seeking preliminary injunctions, and provided guideposts to overcome those challenges. In Future Proof Brands, L.L.C. v. Molson Coors Bev. Co.,[1] the Court of Appeals for the Fifth Circuit affirmed the district court’s[2] denial of a motion for a preliminary injunction on a trademark infringement claim. In this David and Goliath beverage story, Future Proof, L.L.C. (“Future Proof”) sued Molson Coors Bev. Co. (“Coors”) for trademark infringement, seeking to preliminarily enjoin Coors from “selling and marketing products confusingly similar to its BRIZZY mark.”[3] While preliminary injunctions are, inherently preliminary, the Fifth Circuit in Future Proof affirmed the district court’s insistence on a very high factual burden before the benefit of discovery, particularly when a mark is considered relatively weak.
- Background
Hard seltzers are packaged alcoholic beverages generally containing “carbonated water, alcohol, and – in most cases – fruit flavors, and that have enjoyed skyrocketing popularity in the United States.”[4] Beverage manufacturers have “rushed to capitalize on that trend”.[5] “Future Proof and Coors are [just] two such competitors” in what is the fastest growing alcoholic drinks category in the United States.[6] In 2019 alone, sales in the hard seltzer category in the US hit over one billion dollars, and are projected to reach $2.5 billion by 2021. Although the market was dominated by smaller upstarts in earlier years, in 2020 several of the biggest beer brands, including Coors, Corona, and Budweiser, have entered the market.[7]
Future Proof is a growing beverage company founded in Austin, Texas, which in 2018 secured a $1 million investment from Mark Cuban while during their participation in CNBC’s popular pitch contest show Shark Tank.[8] Among their other beverages, Future Proof markets and sells its Brizzy®, which it calls a “seltzer cocktail”. Brizzy comes in several flavors, and like most hard seltzers, boasts a lower calorie count than many traditional cocktails.
Coors’ hard seltzer product, launched in conjunction with Coca-Cola launched in the first quarter of 2020, is part of Coors’ effort to gain in this growing market.[9]
Both canned carbonated beverages are named with a variation of the word “fizzy” and are available in several fruit-centric flavors. As the court noted sarcastically, “[n]either company was the first to have the inspiration to brand a carbonated product with a variant of ‘fizzy.’”[10] The court’s visual comparison of the cans showed several differences, including in shape, size, color, and font and formatting of the text.[11]
- The Fifth Circuit’s Decision: No Likelihood of Success
As in its sister circuits, in the Fifth Circuit, a party seeking to obtain a preliminary injunction against alleged trademark infringement claim, must show four elements: “(1) a substantial likelihood of success on the merits, (2) a substantial threat of irreparable injury if the injunction were not granted, (3) that their substantial injury outweighed the threatened harm to the party whom they sought to enjoin, and (4) that granting the preliminary injunction would not disserve the public interest.”[12] The first factor – likelihood of success on the merits – is the critical factor, and for Future Proof here, the fatal factor.
- Likelihood of Confusion
Although different federal circuits have slightly different articulations of the factors used to determine whether a party is likely to succeed on the merits of its trademark infringement claim, overall, they are substantively similar. Courts in the Fifth Circuit consider eight factors: “(1) the type of mark infringed, (2) the similarity between the marks, (3) the similarity of the products, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant’s intent, (7) evidence of actual confusion, and (8) the degree of care exercised by potential purchasers.”[13] In this set of factors, the last two are particularly weighty, with the last factor – actual confusion – being the best evidence of a likelihood of confusion. Unfortunately for litigants, courts have wide discretion in applying and weighing these factors, leading to a highly case-specific inquiry which can lead to a lack of predictability and consistency.
Underlying any motion for a preliminary injunction is courts’ general hesitancy to grant such “extraordinary” relief. Id., at *4. Thus, litigants must be well prepared and marshal any and all facts to show as convincingly as possible that without this drastic relief they will suffer irreparable harm. Appellants challenging the denial of a preliminary injunction face a further uphill battle, as the standard of review, abuse of discretion, is highly deferential to the district court. Here at least, that standard of review meant that despite the district court (the Western District of Texas) making some errors, because the overall outcome was correct and the court did not abuse its discretion, the appellate court affirmed the lower court decision.
- Weighing the Factors
The district court found that three of the factors – the similarity of the products, the retail outlets and purchasers, and the advertising media used – weighed in favor of enjoining Coors from marketing and distributing Vizzy. However, the other factors, the more critical factors, weighed against enjoining Vizzy.
- BRIZZY® as a Suggestive Mark
First, in determining the type of mark infringed, the court disagreed with the district court’s assessment of the mark as descriptive, instead ruling that BRIZZY is slightly stronger, and suggestive but still only entitled to moderate protection.
The stronger a mark is, the more protection it is entitled to. Marks range from least strong to strongest: “(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.”[14] Importantly, this “spectrum measures two separate aspects of trademarks – distinctiveness and strength.”[15] Common examples of trademarks along this spectrum include: Kleenex® (a mark now eponymous with the general class of tissues); Park ‘n Fly® (descriptive of airport parking); Tide® (suggestive of the idea of a tide of water to clean clothing); Camel Cigarettes® (an arbitrarily selected existing term, but without a connection to cigarettes); and Kodak film® (a fanciful creation of a new term).
Whereas distinctiveness is a condition for registration, strength is a factor in determining the scope of protection a mark is entitled to. Generally, the more descriptive a mark is of the “qualities, characteristics, effect, purpose, or ingredients of a product or service”, the less protection it is likely to have.
Because the consumer must first infer that “brizzy” is related to “fizzy” or “dizzy” (a reference to intoxication), the Fifth Circuit Ruled, BRIZZY does not immediately convey the characteristics of hard seltzers to consumers, and is thus not descriptive. Nor is it arbitrary, because it still does bear some relationship to the products to which BRIZZY refers. Rather, BRIZZY, the appellate court held, is suggestive because “consumers must ‘exercise the imagination’” to connect BRIZZY with a carbonated beverage.[16] Still, suggestive marks are “comparatively weak”, and such relatively weak marks face a more difficult obstacle to obtaining preliminary injunctions. Additionally, the court emphasized that any presumption of the validity of a registered trademark “is not relevant to the issue of infringement”, which turns on “the strength of a mark, not its distinctiveness or validity.”[17] While registering a trademark is highly important in a company developing and protecting its brand and intellectual property – and creates presumptions of validity – it is not the slam dunk factor in a preliminary injunction analysis.
Further undermining Future Proof’s argument is the vast number of third parties – aside from Brizzy and Vizzy – in the beverage marketplace using the “IZZY” root, showing the mark is inherently weaker. In its motion for a preliminary injunction, Future Proof only briefly addressed this issue by saying “there is no significant third-party use of the BRIZZY mark on similar goods.”[18] However, perhaps understandably based on their trademark registration, this statement ignored the plethora of non-alcoholic drinks that include the IZZY (or IZZIE) stem, as Coors highlighted in their opposition.[19] The courts seized on the abundance of other IZZY-styled beverages, even outside of alcohol, as evidence that the mark was relatively weak.
Second, Future Proof argued that the lower court was wrong to focus on visual differences in the packaging and overlooking the aural similarities between “brizzy and vizzy.”[20] Neither argument was availing. Regarding packaging, the appellate court noted that determining the similarity of the marks requires an assessment of how a consumer (and the “reasonable person”) would perceive the marks as similar enough to have “a common origin or association”, and thus, assessing the visual impact of the marks and products is logical and relevant.
Third, Future Proof’s argument that “aural similarities [in this context] are particularly important.’ Because consumers often purchase alcoholic drinks ‘by verbal request’ in bars and restaurants.” However, Future Proof provided “no evidence that its seltzers sell primarily – or at all – in bars and restaurants.” Thus, this was only a marginal factor in favor of granting the injunction, and could not outweigh the mark’s weakness. The court’s focus on Future Proof’s failure to provide proof supporting this allegation underscores the need to provide as many data points and relevant factual allegations as possible to support the legal arguments made to obtain this “drastic” relief.
Fourth, in a discussion highly relevant to close competitors and crowded marketplaces, the court held that Future Proof again failed to submit evidence to support its allegation that Coors acted in bad faith. Mere awareness of a senior user’s mark does not establish bad intent, and there must be something more, i.e., that “the defendant intended to derive benefits from the reputation of the plaintiff”, to prove bad faith.[21] In support of its motion, Future Proof provided transcripts, articles, and a declaration intending to set the stage of Coors as a bad faith actor. However, much of the evidentiary support only showed that hard seltzer was indeed a part of Coors’ growth strategy, and at most that its wholesalers had once expressed confusion over the origin of the two products.[22]
Of course, a plaintiff is not expected to proffer all of the evidence it would have at the end of discovery, but this is a clear indication to movants that they must present strong evidence that not only was the competitor aware of their mark and product, but intended to adopt or imitate the product or its distribution methods to capitalize on the movant’s reputation. Here, this factor seems particularly fact-specific: is it unreasonable to assume that a large company would be trying to piggy-back off the profit of a much smaller, regional company? Or was the behemoth riding an upstart’s wave to greater profits?
Finally, turning to the most prominent factors (actual confusion and consumers’ degree of care), Future Proof again failed to proffer sufficient evidence to show that consumers, distinguished from wholesalers or retailers, were confused or make snap purchasing decisions. Another warning to litigants: in addition to factual allegations, affidavits from customers can be critical to demonstrating the key factor of actual confusion.
- Practical Implications
This David and Goliath style trademark clash between beverage companies highlights some of the challenges of obtaining preliminary injunctions against competitors who have yet to fully enter the market. One key takeaway here is, despite the urgent nature inherent in a motion for a preliminary injunction, a movant must be prepared with as many facts as possible supporting each and every factor in the likelihood of success determination. This evidence can include allegations in the complaint, but consumer affidavits can be even more persuasive. Of course, this evidence is difficult to obtain before discovery, and Future Proof did include a creative and robust presentation of secondary evidence, but it was not sufficiently targeted to showing the particular elements of likelihood of success – namely, consumer confusion and bad faith. Perhaps, for example, including consumers’ social media posts expressing dissatisfaction or confusion, or other evidence of consumer confusion in the alcohol industry more broadly would aide future movants.
Finally, in light of the late Justice Ginsburg’s ruling in USPTO v. Booking.com B.V., 19-46 (Jun. 30, 2020), holding that “generic.com” terms may be registered if they have acquired secondary meaning to consumers, this case is an example of the distinction between registrability and enforcement standards. While BRIZZY® is a registered mark, it still may not ultimately be a strong enough mark to warrant broad protection and deference. Here again, we see trademark law struggle to bridge the divide between marketing considerations of picking a brand name which is descriptive, understandable, and memorable – and picking a strong trademark. It remains to be seen whether Future Proof has only lost the battle or the war against alleged infringers.
[1] Case No. 20-50323, (5th Cir. Dec. 3, 2020) (“Fifth Cir.”)
[2] See Future Proof Brands, LLC v. Molson Coors Beverage Co. F/K/A Molson Coors Brewing Company and MILLERCOORS, LLC, Case 1:20-cv-00144-JRN (W.D. Tex. Feb. 6, 2020) (“Dist. Ct.”)
[3] Fifth Cir., at *3
[4] Fifth Cir., at *2.
[5] Id.
[6] Id.
[7] See Eads, L., “10 of the Biggest Hard Seltzer Brands”, The Drinks Business (Apr. 29, 2020), available at https://www.thedrinksbusiness.com/2020/04/10-of-the-biggest-hard-seltzer-brands/ (last accessed Dec. 10, 2020).
[8] See https://www.prnewswire.com/news-releases/future-proof-makes-headway-with-federal-infringement-claim-against-molson-coors-301189566.html
[9] See Stankiewicz, K., Hard Seltzer Market is Big Enough for Multiple Brands, Says Molson Coors CEO, CNBC (Sept. 30, 2020), available at: https://www.cnbc.com/2020/09/30/molson-coors-ceo-on-expansion-into-hard-seltzer-market-coca-cola-deal.html.
[10] Fifth Cir., at *2.
[11] Id.
[12] See id. at *4, n.3 (quoting Planned Parenthood Ass’n of Hidalgo Cnty., Inc. v. Suehs, 692 F.3d 343, 348 (5th Cir. 2012)).
[13] Id. at *4-5.
[14] Id. at *6.
[15] Id.
[16] Id. at *9-10.
[17] Id. at *11.
[18] See Dist. Ct., Dkt. No. 8 at 14.
[19] See Dist. Ct., Dkt. No. 24, at 7.
[20] Fifth Cir., at *14-15.
[21] Id. at *17.
[22] “Look, we believe that the seltzer category is here to stay. Let’s be clear about that. And Molson Coors plans to compete in this space aggressively. And we are going to have a multi-pronged approach to attacking that space.” (Dist. Ct., Dkt. No. 9 at 24)
