Myers Berstein
Toll Free Communication

Pom Wonderful Protects Its Pom-Trademark

If you've ever had pomegranate juice from the supermarket, chances are, it's Pom Wonderful. Pom Wonderful spends tremendous amounts of time and energy marketing its products - and bringing lawsuits against other companies' uses that may infringe its trademarks. Indeed, Pom Wonderful recently succeeded in bringing an action against Pur, which is known for making water filters, for selling a pomegranate-flavored energy drink called "Pom." The lessons learned from that case are helpful for anyone considering bringing a trademark action.

Trademark infringement cases are important because they help companies control their brand and ensure that appropriate revenue is directed toward their company, and not to a competitor trying to benefit from the original company's goodwill. Most companies do not want to see their brand "diluted" when a similar product enters the market.

Pom Wonderful sued Pur for trademark infringement and moved for a preliminary injunction for the duration of the case, which is essentially a restraining order on a company, forbidding a certain type of practice. Here, Pom Wonderful wanted Pur to stop selling the energy drink that it believed created confusion for consumers. Pom Wonderful lost its motion for the injunction at the trial court level but Pom appealed. In order to be entitled to a preliminary injunction, a party must show that it is likely to win in the trademark action before a court. Ultimately, the court applied a "balancing test" and found Pom Wonderful had made this showing.

These types of balancing tests to determine preliminary injunctions in trademark infringement and other matters are extremely fact-specific. First, the court considered the "strength" of the "Pom" mark. The court found the mark was commercially strong, because when consumers saw the word "Pom," due to Pom Wonderful's marketing efforts, they would connect that word with the Pom Wonderful line of products. Next, the court considered how "related" Pur's Pom energy drink was to Pom Wonderful's line of fruit juices. The court found that an energy drink and fruit juice beverage were similar enough that a consumer would connect the two. The court then considered the "degree of consumer care," which means, when the consumer is buying the product, how sophisticated and careful will he or she be in reviewing the products? (Think about how much more time and effort you spend in selecting a new car compared to a beverage.) The court found there was a low degree of sophistication, which was another factor in Pom Wonderful's favor because consumers would quickly grab a drink and assume Pur's energy drink was made by Pom Wonderful.

Finally, the court examined how similar the marks were: for a start, the court found that they sound identical, and both rely on three letters with a stylized "o." These facts were significant enough to establish similarity for purposes of an injunction. The court also found the customer base overlapped in terms of how the parties advertised and marketed their products. The appellate court remanded the case and required the trial court to consider whether Pom Wonderful should be granted injunctive relief.

In essence, the appellate court found that Pom is likely to succeed in the ultimate case and, therefore, is entitled to an order from the court that Pur cannot sell its product during the course of the case. Preliminary injunction hearings are essentially mini trials on the front end of a case and the court's ruling on a preliminary injunction often determines the ultimate outcome and/or leads to early settlement.

If you believe that a company is trying to infringe on your trademark, contact the experienced intellectual property lawyers at MYERS BERSTEIN today.

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