SportFuel, Inc. v. PepsiCo, Inc.

In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 18‐3010
SPORTFUEL, INC.,
Plaintiff‐Appellant,
v.
PEPSICO, INC. and
THE GATORADE COMPANY,
Defendants‐Appellees.
____________________
Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 16‐cv‐7868 — Matthew F. Kennelly, Judge.
____________________
ARGUED APRIL 9, 2019 — DECIDED AUGUST 2, 2019
____________________
Before KANNE, BARRETT, and BRENNAN, Circuit Judges.
KANNE, Circuit Judge. SportFuel appeals the district court’s
grant of summary judgment for Gatorade and its parent com‐
pany, PepsiCo. SportFuel brought this suit against Gatorade
alleging violations of its trademark after Gatorade rebranded
itself with the slogan, “Gatorade The Sports Fuel Company.”
The district court deemed Gatorade’s slogan a fair use pro‐
tected by the Lanham Act. We affirm.
2 No. 18‐3010
I. BACKGROUND
SportFuel is a Chicago‐based sports nutrition and well‐
ness consulting firm whose clients include several of Chi‐
cago’s prominent professional sports teams and their athletes.
The company provides personalized nutrition consulting ser‐
vices to professional and amateur athletes, but also sells
SportFuel‐branded dietary supplements. SportFuel holds two
registered trademarks for “SportFuel.” It registered the first
for “food nutrition consultation, nutrition counseling, and
providing information about dietary supplements and nutri‐
tion.” After several years of use, SportFuel’s trademark be‐
came “incontestable” in 2013 under 15 U.S.C. § 1065. Sport‐
Fuel also registered a trademark in 2015 for “goods and ser‐
vices related to dietary supplements and sports drinks en‐
hanced with vitamins.”
Gatorade was created in 1965 at the University of Florida
College of Medicine and public sales began several years later.
Undoubtedly, Gatorade is more widely known. It is the offi‐
cial sports drink of the NBA, PGA, MLB, MLS, and many
other professional and collegiate organizations. Whether by
television imagery of victorious athletes drenching their
coaches or teammates with a Gatorade shower from a distinc‐
tive cooler, or through aggressive national media marketing
campaigns, Gatorade became a household name.
In addition to its traditional sports drinks, Gatorade now
customizes its sports drink line by selling formulas that are
tailored to the nutritional needs of individual professional
athletes. The company also sells numerous other sports nutri‐
tion products beyond sports drinks. It began to publicly de‐
scribe its products as sports fuels in 2013. Seeking to broaden
its public image to reflect its expanded variety of products,
No. 18‐3010 3
Gatorade began a rebranding effort. In 2016 it registered the
trademark “Gatorade The Sports Fuel Company” with the
United States Patent and Trademark Office (“PTO”). Notably,
Gatorade disclaimed the exclusive use of “The Sports Fuel
Company” after the PTO advised the company that the
phrase was merely descriptive of its products.
The only link between SportFuel and Gatorade is a nutri‐
tionist and dietician named Julie Burns, who founded Sport‐
Fuel in 1993. Burns had a history of working with Gatorade:
she served as a nutritionist on the Gatorade Sports Science In‐
stitute’s Sports Nutrition Advisory Board from 1995 until
2003. Burns became aware of Gatorade’s rebranding efforts
and the alleged trademark infringement when she saw a Ga‐
torade commercial featuring the new slogan. SportFuel filed
suit against Gatorade and PepsiCo in August 2016. Its com‐
plaint alleged trademark infringement (15 U.S.C. § 1051), un‐
fair competition, and false designation of origin in violation
of the Lanham Act (15 U.S.C. § 1125(a)). Similarly, SportFuel
asserted claims of trademark infringement and unfair compe‐
tition in violation of Illinois law. See 815 Ill. Comp. Stat.
§§ 505/1, 510/1. Gatorade raised counterclaims for a cancella‐
tion of SportFuel’s trademark.
Gatorade moved to exclude SportFuel’s expert’s testi‐
mony and survey evidence concerning the likelihood of con‐
sumer confusion from Gatorade’s use of the slogan. Gatorade
also moved for summary judgment on two grounds. First, it
argued that SportFuel failed to provide evidence that allowed
a jury to find a likelihood of confusion—a necessary element
to each of SportFuel’s claims. Second, Gatorade argued that
the Lanham Act protected its use of “Sports Fuel” as a fair use.
4 No. 18‐3010
On June 14, 2018, the district court granted Gatorade’s mo‐
tion for summary judgment after finding that SportFuel failed
to produce evidence that demonstrated a factual dispute on
any of the three elements of Gatorade’s fair use defense. The
court also determined that because it found that Gatorade
successfully raised the Act’s fair use defense, it need not con‐
duct a risk of confusion analysis for SportFuel’s claims. Simi‐
larly, because the court determined that SportFuel’s claims
under Illinois law were subject to the same analysis as its fed‐
eral claims, it did not separately consider those claims. Sport‐
Fuel appeals.
II. ANALYSIS
We review the district court’s grant of summary judgment
de novo, viewing all facts in SportFuel’s favor. Georgia‐Pac.
Consumer Prods. LP v. Kimberly‐Clark Corp., 647 F.3d 723, 727
(7th Cir. 2011). A district court may award summary judg‐
ment when the evidence shows that “there is no genuine dis‐
pute as to any material fact and the movant is entitled to judg‐
ment as a matter of law.” Fed. R. Civ. P. 56(a).
The Trademark Act of 1946, commonly known as the Lan‐
ham Act, “federalized” the common law’s trademark protec‐
tions. CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 672 (7th
Cir. 2001). The Lanham Act allows those who employ trade or
service marks to register them for exclusive use in commerce.
KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543
U.S. 111, 117 (2004). A trademark holder’s right becomes “in‐
contestable” five years after initial registration with the PTO
if the holder meets certain conditions. Id.; 15 U.S.C. § 1065.
“The holder of a registered mark … has a civil action
against anyone employing an imitation of it in commerce
No. 18‐3010 5
when ‘such use is likely to cause confusion, or to cause mis‐
take, or to deceive.’” KP Permanent Make‐Up, 543 U.S. at 117
(quoting 15 U.S.C. § 1114(1)(a)). Additionally, the Act pro‐
vides trademark‐holders a cause of action against those who
make a false designation of origin for a mark. 15
U.S.C. § 1125(a). “To prevail on either claim, a plaintiff must
establish that (1) its mark is protectable and (2) the defend‐
ant’s use of the mark is likely to cause confusion among con‐
sumers.” CAE, Inc., 267 F.3d at 673–74.
However, the Lanham Act provides several affirmative
defenses to a plaintiff’s claims, including the “fair use” de‐
fense. See 15 U.S.C. § 1115(b). The fair use defense is available
against even incontestable trademarks, like SportFuel’s.
Sorensen v. WD‐40 Co., 792 F.3d 712, 722 (7th Cir. 2015). The
defense allows individuals to use otherwise trademarked lan‐
guage in a descriptive sense. See Packman v. Chi. Tribune Co.,
267 F.3d 628, 639 (7th Cir. 2001); Sunmark, Inc. v. Ocean Spray
Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995). “[A] de‐
fendant in a trademark infringement action may invoke the
fair use defense by demonstrating that the alleged infringe‐
ment, ‘is a use, otherwise than as a mark … which is descrip‐
tive of and used fairly and in good faith only to describe the
goods or services of such party.’” Sorensen, 792 F.3d at 722
(quoting 15 U.S.C. § 1115(b)(4)). In short, to raise the fair use
defense successfully, Gatorade must show that (1) it did not
use “Sports Fuel” as a trademark, (2) the use is descriptive of
its goods, and (3) it used the mark fairly and in good faith.
Sorensen, 792 F.3d at 722; Packman, 267 F.3d at 639. The district
court determined that Gatorade met all three prongs.
On appeal, SportFuel challenges the district court’s con‐
clusions on all three prongs of the fair use defense. We review
6 No. 18‐3010
each prong in turn. However, because we conclude that Ga‐
torade successfully raised a fair use defense against Sport‐
Fuel’s claims, we do not consider whether Gatorade’s use of
the slogan presented a risk of confusion to SportFuel’s mark.
A. Gatorade Did Not Use “Sports Fuel” As a Trademark.
SportFuel claims that the district court erred in finding
that Gatorade did not use the term “Sports Fuel” as a trade‐
mark. SportFuel supports its argument with three factors: Ga‐
torade uses the slogan as an “attention getting symbol,” it
placed a trademark indication after the slogan, and it sought
to trademark the slogan.
Words or phrases function as trademarks “when [they are]
used by a source of a product to identify itself to the public as
the source of its product and to create in the public conscious‐
ness an awareness of the uniqueness of the source and of its
products.” Sorensen, 792 F.3d at 722–23 (quoting Sands, Taylor
& Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953 (7th Cir.
1992)). Product packaging can include more than one source
indicator. Sorensen, 792 F.3d at 723. We look to multiple factors
in how a defendant employs a challenged term or phrase to
determine whether it serves as a source indicator and there‐
fore is used as a trademark. Our decision in Quaker Oats is
particularly helpful to illustrate this point.
As here, Quaker Oats involved a suit over Gatorade’s use
of a slogan in an advertising campaign. 978 F.2d at 953–54.
That campaign used the trademarked phrase “Thirst Aid” in
No. 18‐3010 7
the slogan “Gatorade is THIRST AID.”1 Id. There, the district
court determined that although Gatorade used its house mark
in addition to the slogan, the term “Thirst Aid” also served as
a source indicator. Id. at 953. The district court emphasized
that Gatorade featured the term “Thirst Aid” prominently on
its product packaging—even more prominently than the Ga‐
torade house mark. Gatorade appealed summary judgment in
the plaintiff’s favor, arguing that it used the term “Thirst Aid”
descriptively and not as a trademark. Id.
We affirmed and explained that although Gatorade used
“Thirst Aid” in tandem with its house mark, it used the term
as an “attention‐getting symbol.” Id. at 954. We observed that
the “Gatorade is Thirst Aid” phrase employed a rhyming
play‐on‐words and that Gatorade featured the slogan in
larger, more noticeable font than the house mark. Id. We con‐
sequently determined that Gatorade’s use of the slogan
would likely lead consumers to associate the terms “Thirst
Aid” and “Gatorade,” and that such a use of “Thirst Aid” was
meant to help consumers identify the source of the product.
Id. These factors supported the district court’s conclusion that
Gatorade used the phrase as a trademark. Id.
In this case, however, the record does not support the no‐
tion that Gatorade used the term “Sports Fuel” as a source in‐
dicator. Because visuals help considerably in trademark cases,
we include the following photographs included in the parties’
briefs of Gatorade’s use of the slogan:
1 Although the full slogan declared, “Gatorade is THIRST AID for
That Deep Down Body Thirst,” Gatorade’s advertisements and the ensu‐
ing litigation focused on the first portion. 978 F.2d at 950.
8 No. 18‐3010
No. 18‐3010 9
As in Quaker Oats, here Gatorade used the term “Sports
Fuel” in conjunction with its house mark. But the similarities
end there. The products’ individual packaging and displays
feature Gatorade’s house mark and G Bolt logo more promi‐
nently. Gatorade rarely uses the term “Sports Fuel” directly
on product packaging, except for where the company labeled
a “Sports Fuel Drink” with the term. Instead, it primarily fea‐
tures the slogan on in‐store displays and other advertise‐
ments—appearing almost as a subtitle to the house mark. Ad‐
ditionally, the “Sports Fuel” slogan lacks the catchy, rhyming
play‐on‐words at issue in Quaker Oats. Nothing about Ga‐
torade’s use in this context suggests that consumers would
view “Sports Fuel” as a source indicator.
SportFuel emphasizes that Gatorade employed a “TM”
symbol with the slogan and obtained a trademark for the slo‐
gan. But these facts fail to support SportFuel’s desired conclu‐
sion. The slogan notably included Gatorade’s trademark‐pro‐
tected house mark. Additionally, Gatorade specifically dis‐
claimed exclusive use of the phrase “The Sports Fuel Com‐
pany” in its trademark application for “Gatorade The Sports
Fuel Company.” Sunmark, 64 F.3d at 1059 (noting that Ocean
Spray disclaimed exclusive use of a contested, descriptive
phrase). During the application process for Gatorade’s slogan,
10 No. 18‐3010
the PTO specifically advised Gatorade that it viewed the term
“Sports Fuel” as descriptive and therefore inappropriate for
trademark use. And as the district court pointed out, Ga‐
torade’s chief marketing officer stated in his deposition that
he viewed the whole phrase—including the protected house
mark—as a trademark.
Thus, even construing the record in SportFuel’s favor on
summary judgment, insufficient evidence supports Sport‐
Fuel’s claim. Accordingly, we do not believe the district court
erred in determining that Gatorade never employed the term
“Sports Fuel” as a trademark in its “Gatorade The Sports Fuel
Company” slogan.
B. Gatorade Used “Sports Fuel” Descriptively.
The district court also found that Gatorade used “Sports
Fuel” descriptively, rather than suggestively, and therefore
not as a trademark. SportFuel maintains that the district court
erred in this determination. We review the district court’s
classification de novo. Quaker Oats, 978 F.2d at 952. “Inherent
distinctiveness is a question of fact, and summary judgment
is appropriate only if, reading the record in [SportFuel’s] fa‐
vor, no reasonable factfinder could decide for it.” Uncommon,
LLC v. Spigen, Inc., 926 F.3d 409, 420 (7th Cir. 2019).
Trademark law awards trademark protection to various
categories of words, terms, and phrases if consumers rely on
those marks to identify and distinguish one company’s goods
or services from those of others. Platinum Home Mort. Corp. v.
Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998).
“Marks are classified into five categories of increasing distinc‐
tiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbi‐
trary, and (5) fanciful.” Id. Generally, trademark law does not
No. 18‐3010 11
allow sellers to register marks for terms that are generic or
descriptive of products or services. Custom Vehicles, Inc. v. For‐
est River, Inc., 476 F.3d 481, 483 (7th Cir. 2007). We previously
explained that this rule prevents sellers from branding their
product with a name or term that the public uses to identify
the category of items. Id. An exception to this general rule is
that “[d]escriptive terms … are protectable as a trademark if
they have developed secondary meaning.” Sorensen, 792 F.3d
at 723. But a descriptive term only acquires a secondary mean‐
ing after most consumers think of the term as the name of the
product instead of as descriptive of the product. Packman, 267
F.3d at 639.
Conversely, the law affords automatic protection to sug‐
gestive, arbitrary, and fanciful terms, which are inherently
distinctive. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992); Platinum Home Mortg., 149 F.3d at 727. We recently
noted that “[t]he line between descriptiveness and sugges‐
tiveness can be difficult to draw.” Uncommon, 926 F.3d at 421.
“A mark is descriptive when ‘it describes the product cat‐
egory to which the brand belongs.’” Id. (quoting Custom Vehi‐
cles, 476 F.3d at 483. Descriptive phrases refer to a characteris‐
tic of the product. Quaker Oats, 978 F.2d at 953. But they need
not be common phrases. Id.
Suggestive marks, on the other hand, do not “directly and
immediately describe an aspect of the goods,” rather they “re‐
quire[] an observer or listener to use imagination and percep‐
tion to determine the nature of the goods.” Uncommon, 926
F.3d at 421 (quotations omitted). However, just because a
phrase is unfamiliar and “requires a hearer to think about its
meaning” does not necessarily mean it is suggestive. Quaker
Oats, 978 F.2d at 953. Courts look to a variety of factors to
12 No. 18‐3010
distinguish between descriptive and suggestive terminology,
but we find two factors particularly helpful in this instance.2
“First, we can look to how, and how often, the relevant market
uses the word [or phrase] in question.” Uncommon, 926 F.3d
at 421. Second, we employ the “imagination test,” where we
ask whether the word or phrase imparts information about
the product or service directly or rather requires “some oper‐
ation of the imagination to connect it with the goods.” Id. at
422 (quoting Platinum Home Mortg., 149 F.3d at 727). Both fac‐
tors lead us to characterize the slogan here as descriptive.
First, producers of nutritional products for athletes regu‐
larly invoke the “Sports Fuel” terminology to describe the
products they sell. Gatorade provided numerous examples of
this widespread industry use to the district court, including,
for example, Twin Laboratories’ “SPORT FUEL” and Trident
Sports’ “SPORTS FUEL.” Similarly, the PTO recognized this
point when it processed Gatorade’s trademark application
stating, “[a]s SPORTS FUEL is commonly used in reference to
sports nutrition, consumers encountering the wording THE
SPORTS FUEL COMPANY in the proposed mark would
readily understand it to mean that the goods are provided by
a company that provides sports nutrition.” This widespread
industry use, coupled with Gatorade’s disclaimer of exclusive
use of “The Sports Fuel Company,” supports Gatorade’s ar‐
gument it used “Sports Fuel” descriptively.
2
Courts also occasionally find dictionary definitions and third‐party
patent registrations probative of whether a term or phrase is descriptive.
See Uncommon, 926 F.3d at 422‐23.
No. 18‐3010 13
Second, SportFuel argues that Gatorade’s use of “Sports
Fuel” is suggestive—and not descriptive—of Gatorade’s
products because the term requires a mental leap to deduce
that the company is really selling athletic nutrition products.
To support this notion, SportFuel also points out that Ga‐
torade’s consumers, by and large, are not high‐performance
athletes. We find these arguments unpersuasive. The use of
“Sports Fuel” in “Gatorade The Sports Fuel Company” clearly
describes the category of goods that Gatorade produces. It re‐
quires no imaginative leap to understand that a company sell‐
ing “Sports Fuel” is selling a variety of food products de‐
signed for athletes. That non‐athletes regularly consume Ga‐
torade’s products has no bearing whether the term is descrip‐
tive. Just as the pervasive use of yoga pants and other active‐
wear as casual clothing does not change the athletic charac‐
teristics of those products, the fact that Gatorade sells more
sports drinks to average joes who limit their rigorous exercise
to lawn mowing does not change the athletic characteristics
of Gatorade’s products.
We conclude that Gatorade’s slogan uses “Sports Fuel” in
a descriptive sense.
C. Gatorade Uses “Sports Fuel” Fairly and in Good Faith.
A party raising a fair use defense “must show that it used
the plaintiff’s mark fairly and in good faith.” Sorensen, 792
F.3d at 725. Courts determine defendants’ good faith by look‐
ing to their subjective purpose in using a slogan. Packman, 267
F.3d at 642. As an initial matter, we note that although the dis‐
trict court’s analysis implicitly confirmed that Gatorade used
“Sport Fuel” in good faith, it never stated its conclusion ex‐
plicitly. Nonetheless, as we explain, we believe Gatorade pro‐
duced sufficient evidence to show that it descriptively used
14 No. 18‐3010
the term “Sports Fuel” in its slogan fairly and in good faith.
SportFuel insisted during summary judgment that the evi‐
dence, construed in its favor, demonstrated that Gatorade
acted unfairly and in bad faith by using its slogan. But the dis‐
trict court rejected SportFuel’s argument and explained why
SportFuel failed to show that Gatorade acted in bad faith.
On appeal, SportFuel challenges the district court’s con‐
clusion for three reasons. First, SportFuel claims that evidence
produced during discovery justified inferring bad faith on
Gatorade’s part. Second, the district court purportedly erred
in concluding that Gatorade used “Sports Fuel” fairly given
the risk that reverse confusion posed to SportFuel. Third, Ga‐
torade uses “Sports Fuel” in a trademark manner, beyond de‐
scribing its goods or services.
1. SportFuel Provides Insufficient Evidence of Gatorade’s Bad
Faith.
SportFuel alleges that the district court erred because it
never properly considered evidence of Gatorade’s bad faith.
It provides four main examples to support this argument.
First, it argues that Gatorade was aware of SportFuel’s mark
by virtue of Gatorade’s previous working relationship with
Julie Burns. Second, it suggests that Gatorade’s continued use
of “Sports Fuel” after SportFuel filed suit betrays its bad faith.
Third, SportFuel points to a dearth of evidence concerning
Gatorade’s adoption of its new slogan. Fourth, SportFuel al‐
ludes to a falling out between Gatorade and Burns, suggesting
that Gatorade adopted the new slogan to settle an old score.
SportFuel alleges that Gatorade’s bad faith is demon‐
strated by the fact that it began to use “Sports Fuel” even
though it knew of SportFuel’s mark. But the defendant’s
No. 18‐3010 15
“mere knowledge” of the plaintiff’s mark, without other evi‐
dence of subjective bad faith, is insufficient. Sorensen, 792 F.3d
at 725. Accordingly, “[t]o survive summary judgment, a
plaintiff must point to something more that suggests subjec‐
tive bad faith.” Id. Therefore, without other, substantial evi‐
dence, this factor provides no support for the claim that Ga‐
torade used “Sports Fuel” in bad faith.
SportFuel also points to Gatorade’s continued use of
“Sports Fuel,” even after SportFuel filed this suit. But “it is
lawful to use a mark that does not infringe some other; inten‐
tional infringement creates problems, but [a defendant’s] in‐
tentional use of a mark that [it] had every right to use is not
itself a ground on which to draw an adverse inference.” M‐F‐
G Corp. v. EMRA Corp., 817 F.2d 410, 412 (7th Cir. 1987). Ga‐
torade believed it had every right to use “Sports Fuel” in a
descriptive sense, so its continued use after SportFuel filed
suit also fails to justify an inference of bad faith.
Third, SportFuel suggests that Gatorade failed to produce
evidence in discovery that must have existed. Specifically, Ga‐
torade’s production included no documentation related to its
approval of the slogan “Gatorade The Sports Fuel Company.”
SportFuel argues that a company as large as Gatorade cer‐
tainly required high‐level approval before adopting a nation‐
wide rebranding campaign. And presumably Gatorade
would possess documentation of that approval. Yet, “[s]pecu‐
lation will not suffice” to defeat summary judgment. Borcky v.
Maytag Corp., 248 F.3d 691, 695 (7th Cir. 2001); Amadio v. Ford
Motor Co., 238 F.3d 919, 927 (7th Cir. 2001) (“It is well‐settled
that speculation may not be used to manufacture a genuine
issue of fact.”); Gorbitz v. Corvilla, Inc., 196 F.3d 879, 882 (7th
Cir.1999). SportFuel’s argument relies on the assumption that
16 No. 18‐3010
something must have existed. But the time to pursue this idea
was during discovery. SportFuel did not, and it cannot now
avoid summary judgment with assumption or speculation.
The record neither provides evidence to support the claim
that Gatorade adopted the slogan in bad faith, nor indicates
that Gatorade purposefully failed to produce such evidence.
Fourth, SportFuel suggests that Gatorade’s adoption of
the slogan relates to a falling out between Burns and Ga‐
torade. The problem with this claim—much like the last argu‐
ment—is that SportFuel provides no relevant evidence as sup‐
port. It relies on Burns’s deposition testimony, where she
stated that her relationship with Gatorade ended after she re‐
fused to endorse one of Gatorade’s new sugary sports bar
products. However, Burns’s relationship with Gatorade
ended more than a decade before the alleged infringement be‐
gan. And the idea that a new slogan for a nation‐wide re‐
branding campaign and stale antipathy towards Burns are
connected is facially incredible when otherwise unsupported
by the record.
We accordingly find none of these factors significant
enough—individually or in the aggregate—to create an infer‐
ence of Gatorade’s bad faith.
2. The Risk of Reverse Confusion Does Not Demonstrate Ga‐
torade’s Bad Faith.
Second, SportFuel claims that the district court conducted
an insufficient analysis of Gatorade’s intent in using “Sports
Fuel” because its alleged infringement creates reverse confu‐
sion. “Reverse confusion occurs when a large junior user sat‐
urates the market with a trademark similar or identical to that
of a smaller, senior user. In such a case, the junior user does
No. 18‐3010 17
not seek to profit from the good will associated with the sen‐
ior user’s mark.” Quaker Oats, 978 F.2d at 957. We previously
explained that reverse confusion nonetheless harms the sen‐
ior user because “[t]he public comes to assume that the senior
user’s products are really the junior user’s or that the former
has become somehow connected to the latter.” Id. (quoting
Ameritech, Inc. v. Am. Info. Tech. Corp., 811 F.2d 960, 964 (6th
Cir. 1987)). As a result, “the senior user loses the value of the
trademark—its product identity, corporate identity, control
over its goodwill and reputation, and ability to move into new
markets.” Id. In this case, the alleged reverse confusion would
occur when Gatorade used its house mark alongside the term
“Sports Fuel,” which would effectively coopt SportFuel’s
trademark and confuse consumers by leading them to believe
the companies were related.
We cannot agree that the district court erred because it de‐
clined to examine Gatorade’s intent in using “Sports Fuel.” In
Quaker Oats, we explained that intent is largely irrelevant in
reverse confusion cases because “the defendant by definition
is not palming off or otherwise attempting to create confusion
as to the source of his product.” Id. at 961 (emphasis in origi‐
nal); but see Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927,
937 (9th Cir. 2017) (applying the Ninth Circuit’s test that ana‐
lyzes intent).
But even if it were appropriate to examine Gatorade’s in‐
tent in using “Sports Fuel” in its slogan, SportFuel’s argument
would fail. Gatorade provided evidence showing that it
adopted the slogan to reflect its various types of sports fuel
products. At the same time, SportFuel neither provides nor
identifies substantive evidence to support the notion that Ga‐
torade adopted its slogan in any spirit other than good faith.
18 No. 18‐3010
3. Gatorade Uses “Sports Fuel” Descriptively.
SportFuel lastly urges that Gatorade views the slogan as a
trademark and therefore used “Sports Fuel” unfairly and in
bad faith. As mentioned above, SportFuel supports this argu‐
ment by pointing out that Gatorade adorns its slogan with a
“TM.” SportFuel also relies on testimony by Gatorade’s chief
marketing officer, in which he stated that he viewed the entire
slogan, “Gatorade The Sports Fuel Company” as a trademark.
For the reasons mentioned earlier in this opinion, we believe
Gatorade employed the term “Sports Fuel” descriptively and
not as a trademark. We therefore do not accept that Gatorade
used the slogan unfairly or in bad faith.
Further, it is clear from the record that Gatorade provided
sufficient evidence that it used the term “Sports Fuel” fairly
and in good faith. Gatorade’s stated purpose in adopting the
challenged slogan was to help the company better describe its
business and the products it sells. Nothing in the record actu‐
ally contradicts this purpose. Gatorade produced evidence
demonstrating that the company and its employees view
themselves as producers of sports fuels. Moreover, Gatorade
both specifically disclaimed exclusive use of the phrase “The
Sports Fuel Company” and prominently used its house mark
and G Bolt logo in a manner distinct from the slogan.
III. CONCLUSION
For the foregoing reasons, the judgment of the district
court is AFFIRMED.