Future Proof Brands, L.L.C. v. Molson Coors Bevera ( 2020 )

Case: 20-50323 Document: 00515659541 Page: 1 Date Filed: 12/03/2020
United States Court of Appeals
for the Fifth Circuit
United States Court of Appeals
Fifth Circuit
FILED
December 3, 2020
No. 20-50323 Lyle W. Cayce
Clerk
Future Proof Brands, L.L.C.,
Plaintiff—Appellant,
versus
Molson Coors Beverage Company, formerly known as Molson
Coors Brewing Company; MillerCoors, L.L.C.,
Defendants—Appellees.
Appeal from the United States District Court
for the Western District of Texas
No. 1:20-CV-144
Before Higginbotham, Smith, and Dennis, Circuit Judges.
Jerry E. Smith, Circuit Judge:
Future Proof Brands, L.L.C. (“Future Proof”) and Molson Coors
(“Coors”) sell competing hard seltzer beverages. Future Proof named its
seltzer “Brizzy.” Coors chose “Vizzy.” Future Proof sued Coors for trade-
mark infringement, claiming that consumers would confuse Vizzy and
Brizzy. The district court denied Future Proof’s motion for a preliminary
injunction. Finding no abuse of discretion, we affirm.
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I.
Hard seltzers are alcoholic beverages that contain carbonated water,
alcohol, and—in most cases—fruit flavors, and that have enjoyed skyrocket-
ing popularity in the United States. 1 Many alcoholic-beverage makers have
rushed to capitalize on that trend, releasing their own lines of hard seltzers.
Future Proof and Coors are two such competitors.
Both named their hard seltzers with a variation of the word “fizzy.”
Future Proof styles Brizzy as a “seltzer cocktail” and sells 12-packs at retail
for $14.99 in four states. Future Proof registered its BRIZZY mark with the
United States Patent and Trademark Office (“USPTO”) in 2019. Coors
branded Vizzy by amalgamating its two “most prominent attributes: Vitamin
C and fizzy.” Future Proof contends that Coors knew about Brizzy by the
time it began marketing Vizzy and that a wholesaler once asked a Future
Proof employee about Vizzy instead of Brizzy.
Neither company was the first to have the inspiration to brand a car-
bonated product with a variant of “fizzy.” Other products include Malibu’s
“FIZZY PINK LEMONADE,” Malibu’s “FIZZY MANGO” drink,
“IZZE” sparkling juice, “FIZZY FOX” sparkling shrub, IGA’s “FIZZY”
sparkling water, and Hubble’s “FIZZY JUICE” sparkling juice drink.
1
For instance, the two best-selling brands of hard seltzers—White Claw and
Truly—together sold over 64 million cases in 2019. See also Elena Elmerinda Scialabba,
A Copy of a Copy of a Copy: Internet Mimesis and the Copyrightability of Memes, 18 Duke L.
& Tech. Rev. 332, 350 n.139 (2020) (“[T]he U.S. is experiencing a White Claw shortage
thanks to the many, many memes that drove the season’s insatiable thirst for the fizzy
alcoholic beverage.” (cleaned up)).
2
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The parties’ respective products look like this:
The cans are dissimilar in a variety of ways. First, they are shaped differently.
Second, Brizzy cans have “solid and dark backgrounds” along with a
“‘digital’ appearance with bubbles and the vague shapes of drinking
glasses.” In contrast, Vizzy cans have “white backgrounds” and “pictures
of fruit.” Third, the text on each is different. Brizzy cans include the flavor
and the words “SELTZER COCKTAIL” in small text. Vizzy cans feature
the words “HARD SELTZER,” the flavor, and the bolded phrase “With
Antioxidant Vitamin C.”
Future Proof sued Coors for trademark infringement, seeking to pre-
liminarily enjoin Coors from “selling and marketing products confusingly
similar to” its BRIZZY mark. The district court declined to issue the injunc-
tion. Future Proof timely appeals.
II.
We review the denial of a preliminary injunction for abuse of discre-
tion. MWK Recruiting Inc. v. Jowers, No. 19-51064, 2020 U.S. App. LEXIS
35286, at *3 (5th Cir. Nov. 6, 2020) (per curiam) (unpublished). “As to each
element of the district court’s preliminary-injunction analysis, however, the
district court’s findings of fact are subject to a clearly-erroneous standard of
review, while conclusions of law are subject to broad review and will be
3
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reversed if incorrect.” Dennis Melancon, Inc. v. City of New Orleans, 703 F.3d
262, 267 (5th Cir. 2012) (cleaned up). For instance, the preliminary-
injunction factor at issue—likelihood of confusion—“is a question of fact
reviewed for clear error.” 2 Under the clearly-erroneous standard, we uphold
factual findings that “are plausible in light of the record as a whole.” Moore
v. Brown, 868 F.3d 398, 403 (5th Cir. 2017) (per curiam).
A preliminary injunction is “an extraordinary remedy which should
not be granted unless the party seeking it has clearly carried [its] burden of
persuasion . . . .” PCI Transp., Inc. v. Fort Worth & W. R.R. Co., 418 F.3d 535,
545 (5th Cir. 2005) (cleaned up). “Only under extraordinary circumstances
will we reverse the denial of a preliminary injunction.” Anderson v. Jackson,
556 F.3d 351, 355–56 (5th Cir. 2009) (cleaned up). Even if we disagree with
the district court’s analysis in some places, “we may not simply . . . substitute
our judgment for the trial court’s, else that court’s announced discretion
would be meaningless.” White v. Carlucci, 862 F.2d 1209, 1211 (5th Cir.
1989) (cleaned up).
III.
A plaintiff must prove four factors to obtain a preliminary injunction. 3
2
Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 328 (5th Cir. 2008)
(cleaned up). It is true that, “[w]hen a likelihood-of-confusion factual finding is inextric-
ably bound up in, or infected by, a district court’s erroneous view of the law, we may con-
duct a de novo review of the fully-developed record before us.” Elvis Presley Enters., Inc. v.
Capece, 141 F.3d 188, 196 (5th Cir. 1998) (cleaned up). To the extent that the district court
incorrectly ascertained the law, as noted below, those errors did not infect its likelihood-of-
confusion finding. We thus review the likelihood-of-confusion finding for abuse of discre-
tion, not de novo.
3
Planned Parenthood Ass’n of Hidalgo Cnty., Inc. v. Suehs, 692 F.3d 343, 348 (5th
Cir. 2012) (“To obtain a preliminary injunction, the appellees were required to demon-
strate (1) a substantial likelihood of success on the merits, (2) a substantial threat of irrep-
arable 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
4
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Because Future Proof fails on the first factor—“a substantial likelihood of
success on the merits”—we do not address the other three. Planned
Parenthood, 692 F.3d at 348.
To determine likelihood of success on a trademark-infringement
claim, courts consider (1) the type of mark infringed, (2) the similarity be-
tween 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. Bd. of Supervisors for La.
State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 478 (5th
Cir. 2008). We label those “digits of confusion.” Viacom Int’l v. IJR Cap.
Invests., L.L.C., 891 F.3d 178, 192 (5th Cir. 2018).
Two of those digits possess particular prominence: The sixth—bad
intent—is “not necessary” but “may alone be sufficient to justify an infer-
ence that there is a likelihood of confusion.” Streamline Prod. Sys., Inc. v.
Streamline Mfg., Inc., 851 F.3d 440, 455 (5th Cir. 2017) (cleaned up). Like-
wise, the seventh—actual confusion—constitutes the “best evidence of a
likelihood of confusion.” Viacom, 891 F.3d at 197 (cleaned up).
“[A] finding of a likelihood of confusion need not be supported by a
majority of the [digits].” Streamline Prod., 851 F.3d at 453 (cleaned up). And
district courts may weigh those digits “differently from case to case, depend-
ing on the particular facts and circumstances involved.” Id. (cleaned up).
The district court concluded that the third, fourth, and fifth digits
favored granting the injunction. Neither party contests that decision, so we
don’t consider those digits. Future Proof contends that the court erred in
preliminary injunction would not disserve the public interest.”).
5
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evaluating the first, second, sixth, seventh, and eighth digits. We examine
each. Although the court made some errors, it correctly concluded that
Future Proof failed to show a substantial likelihood of success on its
trademark-infringement claim.
A.
Future Proof contends that the district court erred in determining that
the first digit—“the type of mark allegedly infringed”—weighed against the
injunction. Smack Apparel, 550 F.3d at 478 (cleaned up). We disagree.
The type-of-mark digit refers to the strength of a mark: Strong marks
receive “the widest ambit of protection,” and weak marks do not. Sun Banks
of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th Cir. July
1981). To determine the strength of a mark, we examine (1) “where the mark
falls on a spectrum . . . .” of categories and (2) “the standing of the mark in
the marketplace.” Am. Rice, 518 F.3d at 330.
1.
The spectrum employs five categories: “(1) generic, (2) descriptive,
(3) suggestive, (4) arbitrary, and (5) fanciful.” Streamline Prod., 851 F.3d
at 451 (cleaned up). “[T]he strength of a mark, and of its protection,
increases as one moves away from generic and descriptive marks toward
arbitrary marks.” Am. Rice, 518 F.3d at 330 (cleaned up). We must deter-
mine (1) which categories on the spectrum are strong and (2) where BRIZZY
falls on the spectrum.
a.
The relevant spectrum measures two separate aspects of
trademarks—distinctiveness and strength. Future Proof confuses the two.
First, distinctiveness is a “condition[] for registration” of a mark on the
principal register: “The more distinctive the mark, the more readily it quali-
6
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fies for the principal register.” U.S. Pat. & Trademark Off. v. Booking.com
B. V., 140 S. Ct. 2298, 2302 (2020). Generic marks are never distinctive. Id.
at 2303. Descriptive marks can become distinctive, but only by acquiring
“secondary meaning.” Id. (cleaned up). Suggestive, arbitrary, and fanciful
marks are “inherently distinctive . . . .” Id. at 2302 (cleaned up).
Second, that spectrum helps us determine a mark’s strength. See Sun
Banks, 651 F.2d at 315. But the strength inquiry is different from the distinc-
tiveness inquiry in that suggestive marks don’t always make the cut. “A
strong mark is usually fictitious, arbitrary or fanciful . . . .” Id. Suggestive
marks, on the other hand, are “comparatively weak . . . .” 4 Moreover, classi-
fication of the mark on the spectrum is “not conclusive of ‘strength,’ . . .
[because] a descriptive mark through vigorous promotion can become a
strong mark, and an arbitrary mark that is not well known in the market can
be a weak mark.” 5
In a word, suggestive marks are not necessarily strong marks that favor
granting an injunction. For instance, we have found that suggestive marks
4
Sun Banks, 651 F.2d at 315; see also RESTATEMENT (THIRD) UNFAIR COMPE-
TITION § 21, cmt. i (“As a general rule, trademarks that are fanciful or arbitrary tend to be
stronger than those that are suggestive, and suggestive marks tend to be stronger than those
that are descriptive . . . .”).
5
RESTATEMENT (THIRD) UNFAIR COMPETITION § 21, cmt. i. For instance, even
where we concluded that a term might be arbitrary, we still concluded that the first digit
weighed against finding a likelihood of confusion. Sun Banks, 651 F.2d at 315, 318 (con-
cluding that arbitrariness “does not precipitate absolute protection. Arbitrariness refers to
the quality of a mark, i. e., [sic] that it bears no relation to the service provided. The ulti-
mate strength of a mark, the key inquiry before us, is determined by a number of factors
which establish its standing in the marketplace.” (emphases added)).
7
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support granting an injunction, 6 support denying an injunction, 7 or are
indeterminate, 8 depending on other factors that help establish strength.
At issue is whether BRIZZY is strong—not whether it’s distinctive. 9
Thus, Future Proof cannot prevail on that digit solely by showing that
BRIZZY is suggestive.
b.
The district court concluded that BRIZZY is descriptive. Coors
agrees. Future Proof, on the other hand, contends that BRIZZY is arbitrary
or suggestive. Neither party suggests that BRIZZY is generic or fanciful, so
we don’t analyze those categories. We conclude that BRIZZY is suggestive.
Courts define descriptive, suggestive, and arbitrary marks by their
relationship to the products they represent. Descriptive marks “convey[] an
6
Where we found little persuasive evidence of third-party usage of a mark, we con-
cluded that a mark’s status as suggestive “weighs in favor of finding a likelihood of con-
fusion.” Streamline Prod., 851 F.3d at 454
7
We recently concluded that a suggestive mark’s potential strength was “substan-
tially undercut by [its] lack of recognition in the market and widespread third-party use.”
Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., 912 F.3d 805, 815 (5th Cir. 2019), as
revised (Jan. 29, 2019), as revised (Feb. 14, 2019). Even though the mark at issue was
suggestive, we still concluded that “the first digit suggests no likelihood of confusion.” Id.
8
Where we determined that a mark was arguably suggestive, but also “appears
frequently on cosmetics and grooming products,” we could not “say with certitude that
[the mark] is strong or weak.” Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221,
227–28 (5th Cir. 2009). In Xtreme Lashes, we determined that “[f]or summary judgment
purposes”—where we had to view all facts in the light most favorable to the plaintiff—
“the mark is entitled to protection.” Id. at 228. That same conclusion is not warranted
where, as here, a plaintiff must prove that it has “clearly carried [its] burden of persuasion
. . . .” PCI Transp., 418 F.3d at 545 (cleaned up).
9
Future Proof claims we must decide “whether the mark is inherently distinctive.”
But that’s wrong. The present suit isn’t about whether BRIZZY makes it onto the principal
register. It’s already there. And Coors doesn’t dispute the validity of that registration.
8
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immediate idea of the qualities, characteristics, effect, purpose, or ingredi-
ents of a product or service.” 10 Suggestive marks “require[] the consumer
to exercise the imagination in order to draw a conclusion as to the nature of
the goods . . . .” Amazing Spaces, 608 F.3d at 241 (emphasis added) (cleaned
up). Arbitrary marks “bear no relationship to the products or services to
which they are applied.” Id. (emphasis added) (cleaned up). We must,
therefore, determine whether BRIZZY (1) conveys an immediate idea of the
qualities of seltzers, (2) requires consumers to exercise their imaginations to
draw conclusions about seltzers, or (3) bears no relationship to seltzers.
First, BRIZZY is not descriptive, because it does not “convey[] an
immediate idea” about the characteristics of hard seltzers. Zatarains,
698 F.2d at 792. To conclude anything about hard seltzers from “brizzy,” a
consumer must make an inference. For instance, a consumer might surmise
that “brizzy”—because it rhymes with “fizzy”—denotes carbonation. But
that consumer must first infer that “brizzy” is a play on “fizzy.” Using the
same logic, a consumer might surmise that “brizzy”—because it rhymes
with “dizzy”—denotes the sensation a consumer gets after a few rounds
(because of a high alcohol content). But that consumer must first infer that
“brizzy” is a play on “dizzy.” Either result constitutes conjecture. Given
the necessary inference, BRIZZY does not “convey[] an immediate idea”
about the characteristics of hard seltzers. Id. (emphasis added). 11
10
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir. 1983)
(emphasis added), abrogated on other grounds by KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111 (2004); see also Amazing Spaces, Inc. v. Metro Mini Storage,
608 F.3d 225, 241 (5th Cir. 2010) (defining a descriptive term as one that “identifies a
characteristic or quality of an article or service . . . .”).
11
To the extent our precedents employ various tests to determine descriptiveness,
BRIZZY flunks them all. Under the dictionary test, “the dictionary definition of the word
is an appropriate and relevant indication of the ordinary significance and meaning of words
to the public.” Zatarains, 698 F.2d at 792 (cleaned up). But “[t]his test is inapplicable
9
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Second, BRIZZY is not arbitrary, because it “bear[s] [a] relationship
to the products” to which it refers. Amazing Spaces, 608 F.3d at 241 (cleaned
up). It rhymes with “fizzy,” which denotes the carbonated quality of hard
seltzers. Moreover, arbitrary marks are usually “ordinary words which do
not suggest or describe the services involved.” 12 And Future Proof concedes
that “brizzy” is not an ordinary word in the English language, because Future
Proof coined it. 13 BRIZZY is thus not arbitrary.
Third, BRIZZY is suggestive. “Brizzy” relates to carbonation only
because [“brizzy”] is not a standard dictionary term.” Blendco, Inc. v. Conagra Foods, Inc.,
132 F. App’x 520, 521–22 (5th Cir. 2005) (per curiam).
Under the imagination test, “[i]f a term requires imagination, thought and percep-
tion to reach a conclusion as to the nature of goods,” it isn’t descriptive. Zatarains,
698 F.2d at 792 (cleaned up). As noted, a consumer must make an inference to reach any
conclusion about the nature of hard seltzers from “brizzy.” We thus cannot conclude that
“a consumer unfamiliar with [hard seltzers] would doubtless have an idea of [their] purpose
or function” on seeing “brizzy.” Id.
Under the competitor tests, we ask “whether competitors would be likely to need
the terms used in the trademark in describing their products” or whether “a term actually
has been used by others marketing a similar service or product.” Id. at 793 (cleaned up).
But neither party suggests that competitors need to use “brizzy,” and neither party cites
any instance of a competitor using “brizzy” to describe its product.
12
Union Nat’l Bank of Tex., Laredo v. Union Nat’l Bank of Tex., Austin, 909 F.2d
839, 845 (5th Cir. 1990). For instance, “Ivory is an arbitrary term as applied to soap.”
Amazing Spaces, 608 F.3d at 241 (cleaned up). Where we concluded that “domino” was
“a common English name for a game, a hooded costume, a type of mask, and a theory of
political expansion,” we decided that “its application to sugar may be arbitrary.” Amstar
Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980).
13
Fanciful marks—not arbitrary marks—“are most often coined words . . . .”
Union Nat’l Bank, 909 F.2d at 845; see also Amstar, 615 F.2d at 260 (“Thus, ‘Domino’ is
not a coined word, is not purely fanciful, and while its application to sugar may be arbitrary,
it is still not to be accorded the same degree of protection given such coined and fanciful
terms as ‘Kodak’ or ‘Xerox.’”). Because Future Proof does not contend on appeal that
BRIZZY is fanciful, its contentions about coining “brizzy” only hurt its claim that BRIZZY
is arbitrary.
10
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because it rhymes with “fizzy.” 14 To make that connection—and make a
conclusion about the carbonation of Brizzy—consumers must “exercise the
imagination . . . .” Id. at 241 (cleaned up). A consumer must infer that
“brizzy” is a play on “fizzy” and not on other words. That exercise of the
imagination renders BRIZZY suggestive.
Although we disagree with the district court’s classification of
BRIZZY as a descriptive mark, suggestive marks—like descriptive marks—
are “comparatively weak.” Sun Banks, 651 F.2d at 315. Thus, even if the
district court erred in making that initial classification, its ultimate conclusion
that BRIZZY is weak was not necessarily erroneous. 15
c.
Future Proof contends that the district court should have applied a
presumption that BRIZZY was valid. We disagree.
Registration of a mark on the principal register provides “prima facie
evidence of the validity of the registered mark . . . .” 15 U.S.C. § 1057(b).
That provision provides a presumption that a registered mark is inherently
distinctive. All. for Good Gov’t v. Coal. for Better Gov’t, 901 F.3d 498, 507,
508 (5th Cir. 2018). The rationale is that, if the USPTO didn’t require evi-
dence of secondary meaning—which it would have needed if the mark were
merely descriptive—the USPTO must have registered the mark based on its
14
Future Proof seems to suggest that “brizzy” has nothing to do with “fizzy,”
claiming that Coors contended “ispe dixit” that “brizzy” “originates in large part from the
term ‘fizzy.’” That’s an odd suggestion, given Brizzy’s slogan, “FOLLOW THE FIZZ.”
15
See Springboards to Educ., 912 F.3d at 815. Coors claims that Future Proof’s fail-
ure to contend that BRIZZY is suggestive until its reply prohibits it from contending on
appeal that BRIZZY is suggestive. We don’t decide that issue, because it wouldn’t change
our analysis: Even assuming that BRIZZY is suggestive, the district court still did not err
in concluding that BRIZZY is weak.
11
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conclusion that the mark is inherently distinctive. Nola Spice Designs, L.L.C.
v. Haydel Enters., Inc., 783 F.3d 527, 537 n.1 (5th Cir. 2015).
But “the presumption of validity that attaches to a service mark is not
relevant to the issue of infringement.” Sun Banks, 651 F.2d at 315 (cleaned
up). And that makes sense. For an infringement claim, we examine the
strength of a mark, not its distinctiveness or validity. 16 Thus, Future Proof’s
claim that the district court should have given “weight to the presumption of
distinctiveness” is inconsistent with our precedent. 17
2.
Although Future Proof largely closes its argument by contending that
BRIZZY is distinctive, that is not the end of our analysis. Besides the
spectrum, to determine strength, “the key inquiry before us, is determined
by . . . standing in the marketplace.” Sun Banks, 651 F.2d at 315. Specifically,
evidence of “third-party single and multi-word uses” of a mark tends to show
weakness. Id. at 316. We do not require third-party usage involving the plain-
tiff’s entire mark, but instead only the portion of the plaintiff’s mark that the
16
Future Proof contends that, in Amazing Spaces, we “explain[ed]” that, where
there is “overlap between the elements of infringement and the USPTO’s conclusion
about validity,” we require “evidence . . . to overcome the presumption.” Not so. In fact,
in Amazing Spaces, 608 F.3d at 234, we analyzed the presumption in the context of a claim
that the mark there was not “legally protectable as a service mark,” and only after analyzing
that claim did we examine trade-dress-infringement claims—without once referring to the
presumption, id. at 250–52.
17
Although Future Proof doesn’t expressly advance it, one theory is that the pre-
sumption of inherent distinctiveness does not provide a presumption in the context of an
infringement claim, but it does provide evidence that a mark is not descriptive, but instead
suggestive, arbitrary, or fanciful. Because Future Proof did not raise that theory, we do not
address it. We note, however, that our conclusion that BRIZZY is suggestive comports
with that theory.
12
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defendant also uses. 18
Brizzy and Vizzy share the common “IZZY” root. Several third par-
ties also brand their products with the “IZZY” root. Those include Malibu’s
“FIZZY PINK LEMONADE,” Malibu’s “FIZZY MANGO” drink,
“IZZE” sparkling juice, “BIZZY” coffee, “FIZZY FOX” sparkling shrub,
IGA’s “FIZZY” sparkling water, and Hubble’s “FIZZY JUICE” sparkling
drink. That third-party usage of the “IZZY” root tends to show that
BRIZZY is weak. In fact, we recently concluded that a suggestive mark did
not “enjoy strong standing in the market,” where the record showed six
examples of third-party usage, which constituted “widespread third-party
use.” Springboards to Educ., 912 F.3d at 815.
Future Proof raises two objections to that analysis. First, it objects
that “not one beverage product identified by Coors is a hard seltzer.” But we
do not confine our analysis of third-party usage to products of the exact type
that the plaintiff sells. 19
18
For instance, in Sun Banks, 651 F.2d at 316, where we analyzed the likelihood of
confusion between “Sun Banks” and “Sun Federal Savings and Loan Association,” we
found that “third-party use of the word ‘Sun’ . . . .” was persuasive of weakness. Simi-
larly, in Holiday Inns, Inc. v. Holiday Out In Am., 481 F.2d 445, 446, 448 (5th Cir. 1973),
where we analyzed the likelihood of confusion between “Holiday Inn” and “Holiday Out,”
we found evidence that “‘Holiday’ is used, alone or in combination with words other than
‘Inn,’ throughout the United States” to be persuasive.
19
Thus, where we analyzed the likelihood of confusion between the marks of pizza
and sugar companies, we examined third-party usage for products like “canned fruits,
citrus, cigarettes, cheese, wheat flours, chrome-tanned leather, canned sardines, animal
feed, envelopes, pencils, fishing line, candy mints, whiskey, ladies’ hosiery and hair-
cream.” Amstar, 615 F.2d at 259. Where we examined the likelihood of confusion between
two financial institutions, only 75 of 4,400 examples of third-party usage came from finan-
cial institutions. Sun Banks, 651 F.2d at 316 & n.8.
Future Proof is correct that “[t]hird-party use for unrelated products is not rele-
vant when evaluating descriptiveness” under the competitor test. Xtreme Lashes, 576 F.3d
at 233 (emphasis added). But standing in the marketplace and descriptiveness are two
13
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Second, Future Proof implies that we may not parse letters of a mark
for the purposes of identifying third-party usage, contending that Coors
“failed to identify a single competitor using the term ‘BRIZZY’ to market
any product.” But we don’t require litigants to show third-party usage of the
plaintiff’s entire mark. Instead, third-party usage involves the portion of the
plaintiff’s mark that the defendant also uses. See Sun Banks, 651 F.2d at 314,
316; Holiday Inns, 481 F.2d at 448.
At bottom, it’s Future Proof’s contention about how the two marks
might confuse consumers that warrants our parsing of BRIZZY. 20 Future
Proof contends that consumers will confuse Brizzy and Vizzy not because the
“Br” and “V” letters are similar, but because the marks share the common
“IZZY” root. 21 Because Future Proof has made the shared “IZZY” root the
basis of its claim, it is likewise appropriate to analyze third-party usage of the
“IZZY” root. Because BRIZZY is suggestive and there is significant evi-
dence of third-party usage, the district court’s conclusion that BRIZZY is
weak is not “clear error” as Future Proof suggests.
B.
Future Proof contends that the district court erred in determining that
the second digit—“the similarity between the two marks,” Smack Apparel,
550 F.3d at 478 (cleaned up)—weighed “only marginally in favor of granting
separate inquiries. Sun Banks, 651 F.2d at 315.
20
Where a plaintiff sought to enjoin a defendant “from using the name ‘Sun’ . . .
in the advertising and promotion of banking services,” we analyzed third-party usage of
“Sun”—not the plaintiff’s entire mark. Sun Banks, 651 F.2d at 313, 316.
21
Specifically, Future Proof says, “the marks are so similar that they differ only by
the initial character(s)–‘V’ instead of ‘BR.’ Otherwise, the marks have the same number
of syllables, the same stress pattern, and are made up of the exact same sequence of
characters—IZZY—which causes the marks to not only rhyme, but when spoken, to be
difficult to distinguish based solely on the initial consonant sounds.”
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the injunction . . . .” That digit, the argument goes, weighs “heavily in favor
of injunctive relief” for two reasons: the court erroneously (1) “focused on
certain visual differences in product packaging” and (2) failed to consider the
aural similarities of “brizzy” and “vizzy.” We disagree on both points.
First, Future Proof claims that the court shouldn’t have considered
differences in product packaging. But to determine the similarity of two
marks, we examine “whether, under the circumstances of use, the marks are
similar enough that a reasonable person could believe the two products have
a common origin or association.” Xtreme Lashes, 576 F.3d at 228. And it is
well established that “[c]ourts consider marks in the context that a customer
perceives them in the marketplace,” which can include “labels, packages, or
. . . advertising material directed to the goods . . . .” 22
The district court correctly noted several differences in product pack-
aging. Brizzy and Vizzy cans have different shapes. Moreover, Brizzy cans
have “solid and dark backgrounds” with a “‘digital’ appearance with bub-
bles and the vague shapes of drinking glasses.” Vizzy cans, on the other
hand, feature white backgrounds and pictures of fruit. Finally, the text sur-
rounding each mark is different. Brizzy cans have the flavor and the words
“seltzer cocktail” in small text. Conversely, Vizzy cans feature the words
“hard seltzer,” the flavor, and the “bolded text ‘With Antioxidant
Vitamin C.’”
Second, Future Proof claims that the court failed to consider aural
similarities of the “B” and “V” consonants. That claim is baseless, because
22
Capece, 141 F.3d at 197 (cleaned up); see also 4 MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION § 23:26 (5th ed. 2020) (“The ‘meaning’ that is alleged to be
similar is that which is known to the ordinary viewer or customer. . . . In determining the
meaning and connotation which the trademark projects, it is proper to look to the context
of use, such as material on labels, packaging, advertising and the like.”).
15
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the court did consider the aural similarities of “B” and “V.” It is true that
the aural similarities of two marks are relevant. Capece, 141 F.3d at 201.
Here, the only difference between the two marks is the “Br” and “V”
consonants. And the Court of Customs and Patent Appeals did conclude that
“‘VEEP’ and ‘BEEP’” are similar marks, because “[t]he consonant sounds
‘B’ and ‘V’ are likely to be misunderstood by the listener, depending as they
do on such variables as the diction of the speaker and the hearing acuity of
the listener.” Krim-Ko Corp. (Krim-Ko Div., Nat. Sugar Ref. Co.) v. Coca-
Cola Bottling Co. of N.Y., 390 F.2d 728, 731–32 (C.C.P.A. 1968). The court
didn’t provide any citation to support that claim, and the court didn’t analyze
BRIZZY’s “Br” sound. Future Proof thus overemphasizes Krim-Ko’s per-
suasive value, and, contrary to what Future Proof contends, Krim-Ko in no
way “compels the conclusion” that BRIZZY and VIZZY are “confusingly
similar . . . .” In any event, the district court concluded that the similarity of
the “B” and “V” consonants “is relevant here.”
Future Proof also contends that those aural similarities are “particu-
larly important,” because consumers often purchase alcoholic drinks “by
verbal request” in bars and restaurants. But Future Proof provides no evi-
dence that its seltzers sell primarily—or at all—in bars and restaurants. 23 In
fact, Future Proof tells us that consumers can find Brizzy at “retail locations”
like “H-E-B” or “Circle K.” Even supposing that Brizzys pervade bars and
restaurants, our precedent says only that “[s]imilarity of sound . . . may be
taken into account,” not that we should place aural similarity on a pedestal.
Marathon Mfg. Co. v. Enerlite Prod. Corp., 767 F.2d 214, 219 (5th Cir. 1985)
23
Future Proof does claim that “Coors intends its Vizzy hard seltzer products to
compete head-to-head with Future Proof’s Brizzy® hard seltzer products in grocery and
liquor stores, bars, and restaurants.” But that’s a statement of intent, not evidence of the
locations where a consumer can find Brizzy.
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(emphasis added) (cleaned up). The court did not err in concluding that that
digit weighs “only marginally in favor of granting the injunction . . . .”
C.
Future Proof claims that the court “did not correctly weigh” the sixth
digit—“the defendant’s intent,” Smack Apparel, 550 F.3d at 478 (cleaned
up)—because it found that that digit “weighs in favor of denying the injunc-
tion.” Specifically, it claims that the sixth digit is “no worse than neutral.”
Even assuming that the district court erred, that would not be substantial
enough to render the court’s ultimate decision about likelihood of confusion
an abuse of discretion.
First, Future Proof claims that Coors and its executives were “keenly
aware” and had “constructive notice” of Brizzy at the time they began mar-
keting Vizzy. “But mere awareness of the senior user’s mark does not estab-
lish . . . bad intent.” Streamline Prod., 851 F.3d at 456 (cleaned up). Instead,
“[o]ur intent inquiry focuses on whether the defendant intended to derive
benefits from the reputation of the plaintiff,” and we usually rely on evidence
that a defendant “imitat[ed] . . . packaging material” or “adopt[ed] similar
distribution methods.” Id. at 455, 456 (cleaned up). Future Proof provides
no such evidence. Given its failure to provide evidence, Future Proof’s
claims about Coors’s knowledge do not establish bad intent.
Second, Future Proof says that the district court erroneously con-
cluded that “[t]his digit weighs in favor of denying the injunction” even
though that digit can only be neutral. Our precedent has used inconsistent
language on that issue. We usually indicate that an absence of intent renders
that digit neutral. 24 Conversely, we have also found that the digit can
24
See Xtreme Lashes, 576 F.3d at 229 (“However, with no evidence of Xtended’s
intent, this factor is neutral.”); Viacom Int’l, 891 F.3d at 195 (“If there is no evidence of
17
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“weigh[] against finding a likelihood of confusion.” Streamline Prod.,
851 F.3d at 457. Coors is silent on that point.
We do not resolve that inconsistency here. Even assuming, arguendo,
that the district court got it wrong, that error would not tip the scales in favor
of finding an abuse of discretion. Future Proof bears the burden of estab-
lishing a likelihood of success, and it failed to provide evidence on that digit.
Thus, even if the court employed the wrong language in drawing its con-
clusion about that digit, it correctly concluded that the sixth digit does not
support the injunction.
D.
Future Proof contends that the district court erred in determining that
the seventh digit—“evidence of actual confusion” among consumers, Smack
Apparel, 550 F.3d at 478 (cleaned up)—“weighs against granting the injunc-
tion.” The court did not err in weighing that digit.
The district court considered “one instance of actual confusion,”
namely that a wholesaler confused Brizzy and Vizzy. The court concluded
that (1) that was not evidence of actual confusion, because it involved a
wholesaler—not a consumer—and (2) regardless, the instance involved a
fleeting mix-up of names, which is insufficient to establish actual confusion.
Future Proof objects to that first conclusion, contending that the district
court was wrong to conclude that “a wholesaler is not a consumer” for pur-
poses of actual confusion. We agree on that point. A “plaintiff need not . . .
prove confusion in actual consumers,” where there is evidence of actual
intent to confuse, then this factor is neutral.”); Capece, 141 F.3d at 203 (“If the defendant
acted in good faith, then this digit of confusion becomes a nonfactor in the likelihood-of-
confusion analysis, rather than weighing in favor of a likelihood of confusion.”).
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confusion “on [the] part of distributors.” 25 The district court thus incur-
rectly concluded that wholesalers do not count as consumers.
But the district court expressly set that erroneous conclusion aside
and determined that, regardless, the alleged isolated incident was not “actual
confusion,” but instead a fleeting “mix-up.” And it is telling that Future
Proof does not object to that second conclusion. Actual confusion must be
“more than a fleeting mix-up of names . . . .” Streamline Prod., 851 F.3d
at 457 (cleaned up). A plaintiff “must show that the confusion . . . swayed
consumer purchases.” Id. (cleaned up). Future Proof offered evidence that
a wholesaler once asked a Future Proof employee about Vizzy, instead of
Brizzy. 26 But Future Proof provides no evidence that that confusion “swayed
consumer purchases.” Id. (cleaned up). At best, it has shown a “fleeting
mix-up of names,” and that isn’t sufficient to establish actual confusion. Id.
(cleaned up). Consequently, the district court did not err in concluding that
Future Proof failed to show actual confusion.
E.
Future Proof contends that the district court “did not correctly
weigh” the eighth digit—“the degree of care exercised by potential pur-
chasers,” Smack Apparel, 550 F.3d at 478 (cleaned up)—because it found
25
Soc’y of Fin. Exam’rs. v. Nat’l Ass’n of Certified Fraud Exam’rs Inc., 41 F.3d 223,
228 n.11 (5th Cir. 1995) (emphasis omitted) (citing Fuji Photo Film v. Shinohara Shoji
Kabushiki Kaisha, 754 F.2d 591, 597 (5th Cir. 1985)); see also Fuji Photo, 754 F.2d at 597
(“[T]he trial court appears to have believed that only actual confusion on the part of ulti-
mate purchasers was relevant . . . . This was error . . . .”).
26
Future Proof also claims that one of its wholesalers “expressed concern about
the confusion that its sales team will experience when simultaneously selling and distrib-
uting Brizzy® products alongside the Vizzy product.” But that is an allegation about some-
one’s opinion of confusion, not actual confusion. In any event, Future Proof provides no
evidence that that confusion “swayed consumer purchases.” Id. (cleaned up).
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that that digit “provides little or no relevance . . . .” The court did not err.
Future Proof gave the district court one piece of evidence to prove the
degree of care: A 12-pack of Brizzy sells for the “low cost” of $14.99. Al-
though we have concluded that, “[w]here items are relatively inexpensive, a
buyer may take less care in selecting the item,” id. at 458 (emphasis added),
we have never concluded that a low price is sufficient to establish a dearth of
care. In fact, we often rely on affidavits or testimony to show a lack of con-
sumer care. See, e.g., Xtreme Lashes, 576 F.3d at 231; Smack Apparel, 550 F.3d
at 483. Future Proof provides no such evidence.
Future Proof moreover urges that consumers make “quick decisions”
about hard seltzers “in a crowded array, often in a crowded bar or restau-
rant.” But Future Proof provides no affidavits, testimony, or other evidence
supporting that proposition. In fact, Future Proof provides the pricing infor-
mation for its 12-packs in “retail locations” like “H-E-B” or “Circle K”—
not for individual cans a consumer might order at a bar or restaurant. With-
out evidence that consumers typically make snap decisions to purchase
Brizzy in teeming bars and restaurants, the district court correctly concluded
the eighth digit does not favor granting the injunction.
IV.
Because a finding of a likelihood of confusion “need not be supported
by a majority” of the digits and each digit “may weigh differently from case
to case,” Streamline Prod., 851 F.3d at 453 (cleaned up), we review the
court’s ultimate conclusion about likelihood of success for clear error. See
Am. Rice, 518 F.3d at 328. In sum, the district court concluded that three
digits supported the injunction and one weighed “marginally in favor of
granting the injunction . . . .” But the court correctly concluded that the
other four factors did not support the injunction. And, notably, the court
correctly concluded that the two digits that have special importance, namely
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the sixth—which “may alone be sufficient to justify an inference that there
is a likelihood of confusion,” Streamline Prod., 851 F.3d at 455—and the
seventh—which constitutes the “best evidence of a likelihood of confusion,”
Viacom Int’l, 891 F.3d at 197 (cleaned up)—did not support the injunction.
The court did not commit clear error in concluding that Future Proof
failed to carry its burden of showing a likelihood of success on the merits.
Therefore, the decision isn’t one of the “extraordinary circumstances,” in
which a district court so clearly erred that we will “reverse the denial of a
preliminary injunction.” Anderson, 556 F.3d at 355–56. The court did not
abuse its discretion.
AFFIRMED.
21