Pom Wonderful LLC v. Hubbard, __ F.3d __, No. 14-55253, 2014 WL 7384391 (9th Cir. Dec. 30, 2014).

In the course of policing its registered “POM” trademark, Pom Wonderful LLC filed an action against Pur Beverages, a maker of fruit flavored energy drinks, for its use of “pom” on its pomegranate flavored beverage. When it filed its action, Pom Wonderful also moved for a preliminary injunction, enjoining Pur from using the “pom” mark on its beverages. The district court denied Pom Wonderful’s motion, resting its decision primarily on its finding that Pom Wonderful could not demonstrate that it was likely to succeed on the merits of its underlying claim. The district court made this determination pursuant to its finding that the coexistence of the POM mark and Pur’s “pom” mark would not likely cause consumer confusion, because the marks are not relevantly similar.

Pom Wonderful timely appealed the district court’s denial, and the Circuit Court reviewed the matter only for clear error. Proving clear error is normally a prohibitively difficult bar to relief for appellants. However, in this case, the Circuit Court reversed the district court’s decision, finding that the district court had clearly erred in determining that the POM mark and “pom” mark were dissimilar. The Court opined: “Balancing the marks’ many visual similarities, perfect aural similarity, and perfect semantic similarity more heavily that the marks’ visual dissimilarities – as we must – the similarity factor weighs heavily in Pom Wonderful’s favor. . . . Mistakenly weighing the marks’ differences more heavily than their similarities, the district court clearly erred in finding that the similarity of the marks factor weighed against Pom Wonderful.”

While the district court focused on certain visual and design differences between the two marks in holding that the marks were dissimilar, the Circuit Court based its finding on the overall impressions of the marks in commerce. The sound, the grammatical structure, and even some visual aspects of the marks were nearly congruent. The Court’s decision serves to remind trademark owners that the question of similarity between one’s mark and an alleged infringer is a holistic one.