Pom Wonderful v. Robert Hubbard, Jr. , 775 F.3d 1118 ( 2014 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
POM WONDERFUL LLC, a Delaware No. 14-55253
limited liability company,
Plaintiff-Appellant, D.C. No.
2:13-cv-06917-
v. MMM-CW
ROBERT G. HUBBARD, JR., DBA
Portland Bottling Company, DBA OPINION
Pur Beverages,
Defendant-Appellee.
Appeal from the United States District Court
for the Central District of California
Margaret M. Morrow, District Judge, Presiding
Argued and Submitted
October 6, 2014—Pasadena, California
Filed December 30, 2014
Before: David M. Ebel,* Andrew J. Kleinfeld, and Susan P.
Graber, Circuit Judges.
Opinion by Judge Ebel
*
The Honorable David M. Ebel, Senior Judge for the United States
Court of Appeals for the Tenth Circuit, sitting by designation.
2 POM WONDERFUL V. HUBBARD
SUMMARY**
Trademark / Preliminary Injunction
The panel reversed the district court’s order denying a
motion for a preliminary injunction in a trademark
infringement action under the Lanham Act.
The panel held that the district court abused its discretion
in finding that Pom Wonderful, owner of the “POM” standard
character mark, was unlikely to demonstrate a likelihood of
consumer confusion and therefore was unlikely to succeed on
the merits of its claim regarding defendants’ use of the word
“p4m” on their pomegranate-flavored drink.
The panel remanded with instructions that the district
court consider whether, in light of the panel’s decision, Pom
Wonderful met its burden of proving the other elements for
a preliminary injunction.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
POM WONDERFUL V. HUBBARD 3
COUNSEL
Joseph Scott Klapach (argued), Klapach & Klapach, Beverly
Hills, California; Daniel Beck, Roll Law Group P.C., Los
Angeles, California; Douglas N. Masters, Loeb & Loeb LLP,
Chicago, Illinois, for Plaintiff-Appellant.
Heather Lynn McCloskey (argued) and James J.S. Holmes,
Sedgwick, LLP, Los Angeles, California, for Defendant-
Appellee.
OPINION
EBEL, Circuit Judge:
This appeal arises from the district court’s order denying
Plaintiff-Appellant Pom Wonderful’s motion for a
preliminary injunction. Pom Wonderful—the owner of the
“POM” standard character mark—brought a trademark
infringement claim against Defendant-Appellee Robert G.
Hubbard, Jr., d/b/a Portland Bottling Company and Pur
Beverages (“Pur”) to stop Pur from using the word “p4m” on
its pomegranate-flavored energy drink. The district court
denied Pom Wonderful’s motion, finding that Pom
Wonderful is unlikely to demonstrate a likelihood of
consumer confusion and therefore is unlikely to succeed on
the merits of its trademark infringement claim.
Exercising our jurisdiction under 28 U.S.C. § 1292(a)(1),
we hold that the district court abused its discretion in finding
that Pom Wonderful is unlikely to succeed on the merits of its
claim and, accordingly, we reverse. Because the district
court’s decision to deny Pom Wonderful’s motion for a
4 POM WONDERFUL V. HUBBARD
preliminary injunction was tainted by its mistaken likelihood-
of-success determination, we remand with instructions that
the district court consider whether, in light of our decision
today, Pom Wonderful meets its burden of proving the other
elements for a preliminary injunction: that it is likely to suffer
irreparable harm in the absence of preliminary relief; that the
balance of equities tips in its favor; and that a preliminary
injunction is in the public interest.
I. Background1
Pom Wonderful owns numerous trademark registrations
that together comprise the “POM” brand family of
trademarks. These trademarks are used in connection with
various goods, including pomegranate juice beverages. In
addition to producing its own “POM” brand goods, Pom
Wonderful also sells its pomegranate ingredients to other
companies in the food and beverage industry. On occasion,
Pom Wonderful licenses the use of its “POM” brand
trademarks to these other companies.
Before 2002, when Pom Wonderful first began using the
“POM” brand trademarks in connection with beverages, no
one in the industry was known to have used the term “pom”
in any way. Since 2002, Pom Wonderful has sold more than
190 million bottles of pomegranate juice, making it the
leading seller of 100% pomegranate juice in supermarkets
throughout the United States. Pom Wonderful’s annual
supermarket sales exceed $60 million.
1
This appeal comes before us on the preliminary injunction record, and
we therefore accept all of the parties’ undisputed allegations and all of the
district court’s undisputed findings of fact as true for the purposes of our
analysis.
POM WONDERFUL V. HUBBARD 5
Pom Wonderful has devoted a great deal of time—and
spent millions of dollars—marketing and selling its “POM”
brand products. In 2011 and 2012 alone, Pom Wonderful
spent $24 million promoting its pomegranate juice beverages.
To protect its investment, and the rights of companies that
license its “POM” brand trademarks, Pom Wonderful actively
polices third-party uses that may infringe on its trademark
rights.
Through these policing efforts, Pom Wonderful
discovered that Pur was selling a pomegranate-flavored
energy drink labeled “p4m” and informed Pur of Pom
Wonderful’s ownership interest in the “POM” brand
trademarks. When Pur refused to change its packaging, Pom
Wonderful filed suit, alleging that Pur’s use of the word
“p4m” violated Pom Wonderful’s trademark rights under the
Lanham Act.2 See 15 U.S.C. §§ 1114, 1125(a). Shortly after
filing its first amended complaint, Pom Wonderful moved for
a preliminary injunction to enjoin Pur from selling or
marketing its “p4m” beverage.
The district court denied the motion. Specifically, after
considering the eight Sleekcraft factors,3 the district court
found that Pom Wonderful is unlikely to demonstrate a
2
Pom Wonderful also alleged that Pur violated California’s unfair
competition and unfair business practices statute, as well as California’s
common law. We do not consider these claims because Pom Wonderful
moved for a preliminary injunction premised only on its federal trademark
infringement claim.
3
These factors, first articulated in AMF Inc. v. Sleekcraft Boats, 599
F.2d 341, 348–49 (9th Cir. 1979), abrogated on other grounds by Mattel
Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003),
guide a district court’s likelihood-of-confusion determination.
6 POM WONDERFUL V. HUBBARD
likelihood of consumer confusion as to the source of Pur’s
“p4m” beverage. Absent a likelihood of confusion, the
district court concluded that Pom Wonderful is unlikely both
to succeed on the merits of its trademark claim and to meet its
burden of proving the other Winter4 factors for issuance of a
preliminary injunction: that a preliminary injunction is
necessary to prevent irreparable harm to Pom Wonderful; that
a balancing of the equities favors a preliminary injunction;
and that a preliminary injunction is necessary to protect the
public interest. The district court accordingly denied the
motion for a preliminary injunction, and Pom Wonderful filed
a timely notice of appeal.
II. Standard of Review
We review for abuse of discretion the district court’s
order denying Pom Wonderful’s motion for a preliminary
injunction. Alliance for the Wild Rockies v. Cottrell, 632 F.3d
1127, 1131 (9th Cir. 2011). This case implicates two of the
ways in which a district court might abuse its discretion. See
id. First, a district court abuses its discretion if the court rests
its decision on an erroneous legal standard. Id. To determine
whether a district court abused its discretion in this way, we
review legal conclusions de novo. Id. Second, a district court
abuses its discretion if the court rests its decision on a clearly
erroneous finding of fact. Id. To determine whether a district
court abused its discretion in this way, we review factual
findings for clear error. Id. Clear error results “from a
factual finding that was illogical, implausible, or without
support in inferences that may be drawn from the facts in the
4
See Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)
(outlining a four-part test that a party seeking a preliminary injunction
must satisfy).
POM WONDERFUL V. HUBBARD 7
record.” M.R. v. Dreyfus, 697 F.3d 706, 725 (9th Cir. 2012)
(internal quotation marks omitted). In other words, we defer
to a district court’s factual findings unless, “based on the
entire evidence,” we are left with “a definite and firm
conviction that a mistake has been committed.” Lahoti v.
Vericheck, Inc., 586 F.3d 1190, 1196 (9th Cir. 2009) (internal
quotation marks omitted).
Because de novo review is more stringent than clear error
review, it is important to determine which standard applies
before considering whether the district court abused its
discretion in this case. Pom Wonderful argues that de novo
review applies because the district court’s decision to deny
injunctive relief was grounded in a number of asserted legal
errors that the district court committed in applying the
Sleekcraft factors. We disagree. Although legal standards
certainly inform a district court’s application of the Sleekcraft
factors, Ninth Circuit precedent requires us to review the
district court’s Sleekcraft-factor findings for clear error.
In Levi Strauss & Co. v. Blue Bell, Inc., we held
unequivocally that “the clearly erroneous standard should be
applied in reviewing a trial court’s determination concerning
likelihood of confusion.” 778 F.2d 1352, 1355 (9th Cir.
1985) (en banc). Since Levi Strauss, we have further clarified
that a district court’s individual Sleekcraft-factor
findings—which guide the ultimate likelihood-of-confusion
determination—also should be reviewed for clear error. Pac.
Telesis Grp. v. Int’l Telesis Commc’ns, 994 F.2d 1364, 1367
(9th Cir. 1993); Reno Air Racing Ass’n. v. McCord, 452 F.3d
1126, 1136 (9th Cir. 2006).
We are bound by that precedent. Accordingly, in
reviewing the district court's preliminary-injunction decision
8 POM WONDERFUL V. HUBBARD
for an abuse of discretion, we consider whether the district
court clearly erred in finding that Pom Wonderful is unlikely
to demonstrate a likelihood of consumer confusion.
III. Analysis
We now turn our attention to the issue on appeal: whether
the district court abused its discretion in denying Pom
Wonderful’s motion for a preliminary injunction. “A
preliminary injunction is an extraordinary and drastic remedy
. . . .” Munaf v. Geren, 553 U.S. 674, 689 (2008) (citation
and internal quotation marks omitted). In Winter v. Natural
Resources Defense Council, Inc., the Supreme Court
announced a four-part test that a party seeking a preliminary
injunction must satisfy. 555 U.S. 7, 20 (2008). Under the
Winter test, the moving party must establish that: (1) it is
likely to succeed on the merits; (2) it is likely to suffer
irreparable harm in the absence of preliminary relief; (3) the
balance of equities tips in its favor; and (4) an injunction is in
the public interest. Id.A. Likelihood of Success
As a threshold matter, Pom Wonderful must establish a
likelihood of success on the merits of its trademark
infringement claim. To prevail on its claim, Pom Wonderful
must demonstrate that (1) it has a protected ownership
interest in the “POM” mark, and (2) Pur’s use of the word
“p4m” is likely to cause consumer confusion, thereby
infringing upon Pom Wonderful’s rights. See Dep’t of Parks
& Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124
(9th Cir. 2006). Although the district court correctly found
that Pom Wonderful is likely to prove that it has a protected
ownership interest in the “POM” standard character mark (the
POM WONDERFUL V. HUBBARD 9
first element of a trademark claim), it committed clear error
in finding that Pom Wonderful is unlikely to demonstrate a
likelihood of consumer confusion (the second element of a
trademark claim).
1) Protected Ownership Interest
Registration of a mark is prima facie evidence of the
validity of the mark, the registrant’s ownership of the mark,
and the registrant’s exclusive right to use the mark in
connection with the goods specified in the registration. See
15 U.S.C. § 1115(a). When proof of registration is
uncontested, the ownership interest element of a trademark
infringement claim is met. See Sengoku Works Ltd. v. RMC
Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996).
The district court correctly found that Pom Wonderful is
likely to prove that it has a protected ownership interest in the
word “pom” because Pom Wonderful proffered a copy of its
“POM” federal trademark registration. This registration was
issued in 2002 for use with fruit juices, and Pur does not
contest the registration on appeal. The uncontested
registration therefore establishes not only the validity of the
“POM” mark and Pom Wonderful’s ownership of the mark,
but also Pom Wonderful’s exclusive right to use the mark in
connection with fruit juices.5 See 15 U.S.C. § 1115(a).
5
“Although the validity of a registered mark extends only to the listed
goods or services, an owner’s remedies against confusion with its valid
mark are not so circumscribed.” Applied Info. Scis. Corp. v. eBay, Inc.,
511 F.3d 966, 971 (9th Cir. 2007). Thus, having “established a
protectable interest by proving it is the owner of a registered trademark,
[Pom Wonderful] does not additionally have to show that [Pur’s] allegedly
confusing use involves the same goods or services listed in the
registration.” Id. at 972.
10 POM WONDERFUL V. HUBBARD
Importantly, Pom Wonderful’s exclusive right to use the
“POM” mark covers all design variations of the word because
“POM” was registered as a standard character mark.6
Standard character registrations “are federal mark
registrations that make no claim to any particular font style,
color, or size of display.” Citigroup Inc. v. Capital City Bank
Grp., Inc., 637 F.3d 1344, 1349 (Fed. Cir. 2011). Because a
word registered in standard characters is “not limited to any
particular rendition of the mark,” In re Mighty Leaf Tea, 601
F.3d 1342, 1348 (Fed. Cir. 2010) (internal quotation marks
omitted), the registration covers the word per se, 3 McCarthy
on Trademarks and Unfair Competition § 19:58 (4th ed.)
(updated Sept. 2014). Therefore, Pom Wonderful’s exclusive
right to use its “POM” standard character mark is extremely
broad, covering the word in all types of depictions.
2) Likelihood of Consumer Confusion
Despite Pom Wonderful’s exclusive right to use all design
variations of its “POM” standard character mark, establishing
a protected ownership interest “is only half the battle” in a
trademark infringement claim. Brookfield Commc’ns, Inc. v.
W. Coast Entm’t Corp., 174 F.3d 1036, 1053 (9th Cir. 1999).
To demonstrate a likelihood of success on the merits, Pom
Wonderful also must show that a reasonably prudent
consumer in the marketplace is likely to be confused as to the
6
Before 2003, “standard character” marks were called “typed” marks.
See 3 McCarthy on Trademarks and Unfair Competition § 19:58 (4th ed.)
(updated Sept. 2014). Despite the change in nomenclature in 2003, these
terms are synonymous and have been interpreted as bestowing the same
broad scope of protection to trademark holders. Id. Because the “POM”
mark was registered in 2002, it is technically registered as a typed mark.
However, we refer to it as a standard character mark to reflect modern
usage.
POM WONDERFUL V. HUBBARD 11
origin of Pur’s “p4m” beverage and to associate that beverage
with Pom Wonderful. See Dreamwerks Prod. Grp., Inc. v.
SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). We look
to the following eight Sleekcraft factors for guidance in
assessing the likelihood of consumer confusion: (1) strength
of the protected mark; (2) proximity and relatedness of the
goods; (3) type of goods and the degree of consumer care;
(4) similarity of the protected mark and the allegedly
infringing mark; (5) marketing channel convergence;
(6) evidence of actual consumer confusion; (7) defendant’s
intent in selecting the allegedly infringing mark; and
(8) likelihood of product expansion. AMF Inc. v. Sleekcraft
Boats, 599 F.2d 341, 348–49 (9th Cir. 1979), abrogated on
other grounds by Mattel Inc. v. Walking Mountain Prods.,
353 F.3d 792, 810 n.19 (9th Cir. 2003).
Importantly, although these Sleekcraft factors “channel
the analytical process,” they do not necessarily dictate a
result. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1141 (9th Cir. 2002). Because the factors are “fluid,” a
“plaintiff need not satisfy every factor, provided that strong
showings are made with respect to some of them.” Surfvivor
Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir.
2005). Thus, despite the important role that the Sleekcraft
factors play in determining whether a likelihood of confusion
exists, it is “the totality of facts in a given case that is
dispositive.” Entrepreneur Media, 279 F.3d at 1140 (internal
quotation marks omitted).
Our evaluation of the Sleekcraft factors and of the totality
of the facts in this case leads us to conclude that the district
court clearly erred—and therefore abused its discretion—
when it found that Pom Wonderful failed to demonstrate that
it is likely to show a likelihood of consumer confusion.
12 POM WONDERFUL V. HUBBARD
Although the district court correctly found that the strength of
mark, relatedness of goods, and degree of consumer care
factors weighed in favor of Pom Wonderful, it incorrectly
found that the similarity of marks, marketing channel
convergence, actual confusion, defendant’s intent, and
product expansion factors weighed against Pom Wonderful.
When these errors are corrected and the totality of the facts is
considered, it is clear that Pom Wonderful is likely to
demonstrate a likelihood of consumer confusion.
Strength of Mark
We begin our likelihood-of-confusion analysis by
examining the strength of Pom Wonderful’s “POM” mark.
The district court correctly found that this factor weighs in
Pom Wonderful’s favor. The scope of a mark’s trademark
protection depends on its strength, “with stronger marks
receiving greater protection than weak ones.” Entrepreneur
Media, 279 F.3d at 1141; see also Brookfield, 174 F.3d at
1058.
To determine the strength of Pom Wonderful’s “POM”
mark, we begin by placing it on the conceptual distinctiveness
spectrum. See Brookfield, 174 F.3d at 1058. On this
spectrum, the most distinctive marks—i.e., arbitrary and
fanciful marks—receive the most trademark protection,
whereas the least distinctive marks—i.e., generic marks—
receive no trademark protection. Entrepreneur Media, 279
F.3d at 1141. Suggestive and descriptive marks lie between
these two extremes, with suggestive marks being entitled to
greater protection than descriptive marks. Id. Unlike
descriptive marks, which “define qualities or characteristics
of a product in a straightforward way,” suggestive marks
convey impressions of goods that require the consumer to
POM WONDERFUL V. HUBBARD 13
“use imagination or any type of multistage reasoning to
understand the mark’s significance.” Id. at 1141–42 (internal
quotation marks omitted).
The district court correctly found that the “POM” mark is
suggestive because the word “POM”—which is not ascribed
independent pomegranate-related meaning by conventional
dictionaries—requires customers to use some additional
imagination and perception to decipher the nature of Pom
Wonderful’s goods. This finding, however, does not by itself
render the “POM” mark strong because suggestive marks,
although stronger than descriptive or generic marks, are still
“presumptively weak.” Brookfield, 174 F.3d at 1058.
However, we next consider whether the “POM” mark has
achieved sufficient marketplace recognition to transform it
into a strong mark. See id. (explaining that “placement within
the conceptual distinctiveness spectrum is not the only
determinant of a mark’s strength” and that actual marketplace
recognition can “transform a suggestive mark into a strong
mark”); see also Entrepreneur Media, 279 F.3d at 1144(explaining that suggestive marks “may be strengthened by
such factors as extensive advertising, length of exclusive use,
[and] public recognition”) (internal quotation marks omitted).
Considering the national scope of Pom Wonderful’s sales
and marketing efforts, the district court correctly found that
Pom Wonderful enjoys sufficient marketplace recognition to
render its “POM” mark commercially strong. Pom
Wonderful is the leading supermarket-seller of 100%
pomegranate juice nationwide and in several major cities.
Since 2002—when Pom Wonderful first acquired the
exclusive right to use all iterations of the “POM” mark in
connection with fruit juices—Pom Wonderful has sold more
than 190 million bottles of juice. And, Pom Wonderful
14 POM WONDERFUL V. HUBBARD
extensively markets its products through a wide variety of
outlets, including television and newspaper ads, web media,
billboards, trade shows, and charity events. In light of this
evidence, which is uncontested on appeal, the district court
correctly found that Pom Wonderful is likely to demonstrate
that the “POM” mark is strong.
Relatedness of Goods
The district court also correctly found that Pom
Wonderful is likely to demonstrate that its juice beverages are
related to Pur’s “p4m” energy drink. “Related goods (or
services) are those ‘which would be reasonably thought by
the buying public to come from the same source if sold under
the same mark.’” Rearden LLC v. Rearden Commerce, Inc.,
683 F.3d 1190, 1212 (9th Cir. 2012) (quoting Sleekcraft, 599
F.2d at 348 n.10). To satisfy the relatedness factor, parties
need not be direct competitors, id.; see also Entrepreneur
Media, 279 F.3d at 1147 (explaining that goods are related
when both companies offer products relating to the same
general industry), so long as the goods “are similar in use and
function,” Sleekcraft, 599 F.2d at 350.
The district court correctly found—and Pur does not
contest—that fruit-juice beverages and fruit-flavored energy
drinks are sufficiently complementary and related that a
reasonable consumer could connect them and be confused
regarding the source of the products. Both beverages are
pomegranate-based or pomegranate-flavored, single-serve,
and marketed for their healthful properties. Although Pur’s
“p4m” carbonated energy drink is somewhat different from
Pom Wonderful’s 100% juice beverages, the use and function
of these products is clearly related. Accordingly, the district
court correctly weighed this factor in Pom Wonderful’s favor.
POM WONDERFUL V. HUBBARD 15
Degree of Consumer Care
We further conclude that the district court correctly found
that Pom Wonderful is likely to demonstrate that consumers
exercise a low degree of care and sophistication when
selecting inexpensive, single-serve beverages like Pom
Wonderful’s juices or Pur’s “p4m” energy drink. Unlike
purchasers of expensive goods—whom we expect to be more
discerning and less easily confused—purchasers of
inexpensive goods “are likely to exercise less care, thus
making confusion more likely.” Brookfield, 174 F.3d at
1060. Here, the district court found that the beverages at
issue cost between $1.99 and $2.49, and neither party
disputes this finding on appeal. Accordingly, the district
court properly weighed this factor in Pom Wonderful’s favor
because consumers are likely to exercise a low degree of care
when purchasing either company’s inexpensive pomegranate
beverages.
Similarity of Marks
The district court, however, clearly erred in finding that
the similarity–of–marks factor weighed against Pom
Wonderful. This factor is always important in determining
whether a likelihood of confusion exists because when
“marks are entirely dissimilar, there is no likelihood of
confusion.” Id. at 1054. Accordingly, as the similarities
between two marks increase, so too does the likelihood of
confusion. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d
1199, 1206 (9th Cir. 2000). The following axioms define and
delimit the similarity analysis: (1) similarity is best evaluated
by appearance, sound, and meaning; (2) marks should be
considered in their entirety and as they appear in the
16 POM WONDERFUL V. HUBBARD
marketplace7; and (3) similarities weigh more heavily than
differences. See Entrepreneur Media, 279 F.3d at 1144.
With these constraints in mind, it is clear that the similarity
factor weighs in Pom Wonderful’s favor.
Turning first to the appearance of the “POM” mark on the
left and the “p4m” mark on the right, the marks possess many
obvious visual similarities.
Most significantly, each mark is comprised of the same three
letters. These three letters are presented in the same order,
with a stylized second letter (i.e., the “o” in “POM” is heart-
7
Pom Wonderful argues that it is improper for this court to consider the
products’ trade dress (i.e., their packaging and labeling) when assessing
the similarity of the products’ trademarks. We disagree. This court “does
not consider the similarity of the marks in the abstract, but rather in light
of the way the marks are encountered in the marketplace and the
circumstances surrounding the purchase.” Perfumebay.com Inc. v. eBay
Inc., 506 F.3d 1165, 1174 (9th Cir. 2007) (internal quotation marks
omitted). Because consumers will encounter “POM” and “p4m” as they
appear on their respective labels and advertising materials, we consider
these items when reviewing the marks’ visual similarities. Although the
“POM” mark at issue is a word mark (i.e, it does not contain design
elements), we consider the “POM” design mark that includes a heart-
shaped “O” in evaluating the mark’s visual similarities because “the only
images of Pom Wonderful’s products included in the preliminary
injunction record [show that] the ‘O’ in ‘POM’ is in the shape of a heart.”
Order 31–32.
POM WONDERFUL V. HUBBARD 17
shaped, and the “o” in “p4m” has a breve over it). In
addition, the letters in both marks are uniformly cased (i.e.,
they are either all uppercase, or all lowercase) and presented
in a simplistic, white front that is offset by a dark maroon
background.
Admittedly, the marks also possess some visual
dissimilarities, particularly when we consider the marks in the
context of their respective labels, with the Pom Wonderful
bottle on the left, the front of the Pur can in the center, and
the back of the Pur can on the right.
18 POM WONDERFUL V. HUBBARD
As these images reveal, the presentation of the marks
differs in terms of prominence, font, size, and capitalization
(i.e., “POM” is prominently displayed at the top of the bottle
in thicker font and larger uppercase letters, whereas “p4m” is
placed near the bottom of the front of the can8 in slimmer font
and smaller lowercase letters). In addition, the middle letter
in each mark is stylized differently (i.e., the “o” in “POM” is
shaped like a heart and is filled-in with red color, whereas the
“o” in “p4m” has a breve over it and is not filled-in with
color).
However, because “[l]ooks aren’t everything,” we next
compare the marks’ sound and meaning. Brookfield, 174
F.3d at 1055. As for the sound of the marks, the district court
found that “POM” and “p4m” are pronounced in precisely the
same manner. Because neither party contests this finding on
appeal, we agree that the marks are aurally identical.
As for the meaning of the marks, the district court found
that “POM” and “p4m” mean precisely the same thing, as
“each refers to pomegranate flavoring and/or ingredients.”
Order 33. Because neither party contests this finding on
appeal, we agree that the marks are semantically identical.
This similarity is particularly noteworthy because
“[c]loseness in meaning can itself substantiate a claim of
similarity of trademarks.” Sleekcraft, 599 F.2d at 352.9
8
However, “p4m” is more prominently placed near the top of the back
of the can where a consumer would look for nutrition facts. The record
also reflects that Pur displays the “p4m” mark in its advertising and
promotional materials with varying degrees of prominence.
9
Non-visual similarities are particularly important where, as here, there
is no evidence that consumers encounter the marks side-by-side in the
marketplace. To illustrate the potential that aural and semantic similarities
POM WONDERFUL V. HUBBARD 19
Balancing the marks’ many visual similarities, perfect
aural similarity, and perfect semantic similarity more heavily
than the marks’ visual dissimilarities—as we must10—the
similarity factor weighs heavily in Pom Wonderful’s favor.
And, because a lesser degree of similarity is required when a
trademark holder’s mark is strong, the commercial strength
of the “POM” mark amplifies the significance of the marks’
many similarities. See Perfumebay.com Inc. v. eBay Inc., 506
F.3d 1165, 1174 (9th Cir. 2007) (“[T]he fact that the
similarity involves the use of a much stronger mark would
make that similarity weigh more heavily in the analysis of
this factor.” (Internal quotation marks omitted)). Mistakenly
weighing the marks’ differences more heavily than their
similarities, the district court clearly erred in finding that the
similarity of marks factor weighed against Pom Wonderful.
Marketing Channel Convergence
The district court also clearly erred in finding that the
marketing channel convergence factor weighed against Pom
Wonderful. Just as visual, aural, and semantic similarities
between marks increase the likelihood of confusion, so too do
convergent marketing channels. Sleekcraft, 599 F.2d at 353.
In assessing marketing channel convergence, courts consider
whether the parties’ customer bases overlap and how the
increase the likelihood of consumer confusion, consider the confusion that
could arise if one verbally asked a friend to buy “a ‘POM’ drink,”
intending that the friend purchase a Pom Wonderful product for him or
her. Unless the friend is already familiar with the requester’s pomegranate
beverage preferences, the friend could easily return with Pur’s “p4m”
beverage, having reasonably concluded that “p4m” is pronounced the
same, and has the same meaning, as the drink requested.
10
See Enterpreneur Media, 279 F.3d at 1144.
20 POM WONDERFUL V. HUBBARD
parties advertise and market their products. Nutri/System,
Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606 (9th Cir.
1987). Marketing channels can converge even when different
submarkets are involved so long as “the general class of . . .
purchasers exposed to the products overlap.” See Sleekcraft,
599 F.2d at 353 (finding convergence where both companies
sold boats to authorized retail dealers in diverse localities,
used the same sales methods, advertised extensively through
different national magazines, and priced their products almost
identically).
Here, it is likely that Pom Wonderful will be able to show
that both companies use parallel market channels. First, both
companies sell their products in supermarkets located
throughout the United States. As the top-supermarket seller
of pomegranate juice, Pom Wonderful sells its products all
over the country and in key cities such as Los Angeles,
Chicago, New York, Boston, Atlanta, Dallas, Pittsburgh, and
Charlotte. Pur, in turn, sells its products to distributors and
supermarkets in Alaska, Washington, Idaho, Montana, North
Dakota, South Dakota, Minnesota, Indiana, Michigan, Ohio,
Nevada, Arizona, New Mexico, Texas, Utah, and Colorado.
In addition to selling their products in at least one
overlapping state (Texas),11 both companies sell their
products in an overlapping supermarket chain (Albertson’s).
Although it is unclear whether Pom Wonderful and Pur
products are sold simultaneously in the same Albertson’s
stores, this uncertainty does not alter our analysis because a
11
Because Pom Wonderful is the leading seller of 100% pomegranate
juice beverages in supermarkets nationwide, it is possible that its products
are sold in other states that also sell Pur’s “p4m” beverage. However, the
preliminary injunction record is not sufficiently developed to allow us to
draw this inference.
POM WONDERFUL V. HUBBARD 21
channel of trade is not limited to identical stores or agents.
See Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 877 (Fed. Cir. 1992) (explaining that “a channel of
trade includes the same type of distribution channel” and that
channels converge “when products [are] sold under opposing
marks in supermarkets and grocery stores across the
country”).
Second, the products at issue are highly similar. Both
companies sell pomegranate-based or pomegranate-flavored
beverages that are inexpensive and marketed to health-
conscious consumers. See Lindy Pen Co. v. Bic Pen Corp.,
725 F.2d 1240, 1244 (9th Cir. 1984) (finding market channel
convergence where the goods at issue—pens—were
“essentially interchangeable,” “inexpensive,” and
“disposable”). Although Pom Wonderful advertises its
products using a much broader range of outlets than Pur uses,
the similarities between the products suggest an overlapping
general class of consumers.
Because Pom Wonderful and Pur sell highly similar
products in supermarkets located across the country, the
marketing channel convergence factor weighs in Pom
Wonderful’s favor. The district court clearly erred in finding
that this factor weighed against Pom Wonderful, mistakenly
requiring Pom Wonderful to prove that its beverages were
sold in the very same brick-and-mortar stores as Pur’s “p4m”
beverage. Although such proof would surely increase the
likelihood of consumer confusion, the absence of identical
channels does not, by itself, undermine Pom Wonderful’s
likelihood of proving that the marketing channels converge.
22 POM WONDERFUL V. HUBBARD
Actual Confusion, Defendant’s Intent, & Product
Expansion
Turning to the remaining Sleekcraft factors—actual
confusion, defendant’s intent, and product expansion—we
determine that the district court clearly erred by weighing
these factors against Pom Wonderful when, in the context of
this case, these factors are simply neutral. Although the
district court correctly found that Pom Wonderful failed to
adduce evidence of actual past confusion between its products
and Pur’s products, of Pur’s intent to deceive when it adopted
the “p4m” mark, or of either party’s plans to expand their
products into new markets, the district court incorrectly found
that the absence of such proof weighed against Pom
Wonderful.
Failing “to prove instances of actual confusion is not
dispositive against a trademark plaintiff” because “difficulties
in gathering evidence of actual confusion make its absence
generally unnoteworthy.” Perfumebay.com, 506 F.3d at 1176(internal quotation mark and emphasis omitted); see also
Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d
1069, 1072–73 (9th Cir. 2014) (explaining that actual
confusion is “of diminished importance” at the preliminary
injunction stage because “a motion for preliminary injunction
normally occurs early in litigation,” before the parties “have
amassed significant evidence of actual confusion”).
Similarly, evidence of the defendant’s intent to confuse
customers or of product expansion is not required for a
finding of likelihood of confusion. See GoTo.com, 202 F.3d
at 1208 (characterizing the intent factor as minimally
important and explaining that intent to confuse consumers is
not necessary to demonstrate a likelihood of confusion);
POM WONDERFUL V. HUBBARD 23
Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (9th Cir. 2011)
(characterizing the product expansion factor as “neutral”
because neither party presented evidence regarding the
likelihood of expansion).
The absence of any proof regarding actual confusion, the
defendant’s intent, and product expansion does not affect our
likelihood-of-confusion analysis. Pom Wonderful’s lack of
evidence with respect to these factors neither undermines nor
advances its ability to prove likelihood of confusion. Thus,
we conclude that the district court clearly erred by weighing
these factors against Pom Wonderful.
Totality of the Facts
Our review of the Sleekcraft factors reveals that five
factors weigh in favor of Pom Wonderful (strength of mark,
relatedness of goods, degree of consumer care, similarity of
marks, and marketing channel convergence) and three factors
are neutral (actual confusion, defendant’s intent, and product
expansion). None of the factors weighs in favor of Pur.
Sheer numerosity of Sleekcraft factors, however, is not by
itself dispositive of the ultimate likelihood-of-confusion
determination. See Official Airline Guides, Inc. v. Goss, 6
F.3d 1385, 1395 (9th Cir. 1993). Accordingly, we next
consider whether—in light of the totality of the facts—the
district court’s likelihood-of-confusion determination rises to
the level of clear error. See Entrepreneur Media, 279 F.3d at
1140.
When reviewing the district court’s determination of
likelihood of confusion for clear error, we will not reverse
merely because we would have weighed the evidence
differently. Reno Air Racing, 452 F.3d at 1135. Despite this
24 POM WONDERFUL V. HUBBARD
deferential standard, we nonetheless conclude that the district
court clearly erred in finding that Pom Wonderful is unlikely
to demonstrate a likelihood of consumer confusion. This
finding is not plausible on the preliminary injunction record
because the district court mistakenly (1) weighed the
differences between the “POM” and “p4m” marks more
heavily than the similarities, (2) interpreted the marketing
channels factor as requiring Pom Wonderful to prove that it
sells its products in the same stores as Pur, and (3) weighed
three neutral factors against Pom Wonderful.
When these errors are corrected and the totality of the
facts is considered, it is clear that Pom Wonderful is likely to
show that consumers are likely to be confused as to the
source of Pur’s “p4m” beverage. Pur’s beverage not only
bears a mark that is visually, aurally, and semantically similar
to Pom Wonderful’s commercially strong “POM” mark—
which Pom Wonderful has used exclusively since 2002—but
also is designed for the same use and sold to the same general
class of consumers as Pom Wonderful’s juice beverages at a
price point where consumer discernment is weak.
Accordingly, the district court’s likelihood-of-confusion
finding leaves us with the “definite and firm conviction that
a mistake has been committed.” See Lahoti, 586 F.3d at
1196.
B. Irreparable Harm, Equities, & Public Interest
The district court also addressed the other three Winter
elements: likelihood of irreparable harm, balance of the
equities, and the public interest. The court found that these
elements, too, weighed against the issuance of an injunction
based, in significant part, on its conclusion that Pom
Wonderful is unlikely to establish a likelihood of consumer
POM WONDERFUL V. HUBBARD 25
confusion. Because the district court’s erroneous likelihood-
of-confusion determination clearly influenced its rulings on
the remaining Winter elements, we cannot determine on this
record how the district court would have ruled on these
Winter elements had it correctly found that Pom Wonderful
is likely to succeed on the merits of its trademark
infringement claim.
Accordingly, we remand this case to the district court
with instructions that it reconsider the final three Winter
elements in light of our holding that Pom Wonderful is likely
to succeed on the merits of its trademark infringement claim.
When evaluating the likelihood-of-irreparable-harm element,
the district court should consider Herb Reed Enterprises, LLC
v. Florida Entertainment Management, Inc., 736 F.3d 1239,
1249, 1250–51 (9th Cir. 2013) (holding that a plaintiff
seeking a preliminary injunction in a trademark infringement
case must establish a likelihood of irreparable harm that is
grounded in evidence, not in conclusory or speculative
allegations of harm), cert denied, 135 S. Ct. 57 (2014), and
allow the parties to submit any additional evidence that the
district court deems appropriate.
IV. Conclusion
For the foregoing reasons, we conclude that the district
court abused its discretion in denying Pom Wonderful’s
motion for a preliminary injunction because it made a clear
error in its determination of no likelihood of confusion.12
Because the district court’s likelihood-of-success
12
In reaching this conclusion we express no opinion on the ultimate
merits of the case. See, e.g., Barahona-Gomez v. Reno, 167 F.3d 1228,
1238 (9th Cir. 1999).
26 POM WONDERFUL V. HUBBARD
determination tainted its evaluation of the remaining three
Winter elements, we reverse and remand this case with
instructions that the district court consider whether Pom
Wonderful can meet its burden of proving that it will suffer
irreparable harm in the absence of preliminary relief, that the
balance of the equities tips in its favor, and that injunctive
relief would further the public interest.
REVERSED and REMANDED.