Frequent trademark litigant Pom Wonderful, Inc. secured a long-shot win on December 30, 2014 in its running campaign to squelch the use of the term “pom” by other beverage makers.

In late 2013, Pom Wonderful had sued the owner of Pur Beverages in federal district court over Pur’s use of the mark “pŏm” for an energy drink containing pomegranate juice.  Pom Wonderful subsequently moved for a preliminary injunction, but the trial court denied the motion. Pom Wonderful appealed.

Despite giving Pur every break—holding that an abuse-of-discretion standard applied to the trial court’s decision—the Ninth Circuit panel nevertheless held that the trial judge had clearly erred in her determination of likelihood of confusion and so vacated the denial of the preliminary injunction.

In assessing likelihood of confusion, the trial court had concluded that the differences in appearance between the marks outweighed the similarities.

The appeals court ruled that this was clear error, finding that the similarities in the marks far outweighed any differences in appearance.  Both marks consist of the same word, both would be pronounced identically and have the identical meaning, both feature a stylization of the letter “o”, both are in white lettering over a dark red background, and both are uniformly capitalized (either all lowercase or all uppercase).  Unstated in the appellate decision is that the trial judge appeared to have placed too much importance on the differences in the parties’ packaging and trade dress (shown left)—particularly where Pom Wonderful’s mark is registered in “standard character” format, thus covering all reasonable methods of display.  Given Pom Wonderful’s broad rights in the word POM standing alone, trade dress should have been irrelevant, but in a footnote the appeals court specifically stated that it was proper to consider the marks as used in commerce and not in a vacuum.  Nevertheless, even when considering the visual context the still panel concluded that the similarities predominated.

The appeals court also found clear error in the district court’s conclusions regarding another key likelihood of confusion factor: channels of trade.  The record showed that both parties sell similar products through supermarkets and grocery stores in many states—the trade channels are virtually if not actually identical.  The appeals court rejected the trial judge’s holding that Pom Wonderful would have to prove sales of both products in the exact same brick-and-mortar stores at the same time.  Other likelihood of confusion factors as to which there were no evidence in the record should be deemed neutral, the appeals court held, rather than deemed to favor Pur Beverages.

Concluding that Pom Wonderful was likely to succeed on the merits of its trademark claim, the appeals court remanded the case back to the trial judge for consideration of the other preliminary injunction factors—irreparable harm, balance of equities, and public interest.

The case is Pom Wonderful, Inc. v. Hubbard d/b/a Pur Beverages, No. 14-55253 (9th Cir., Dec. 30, 2014).