Cokato Copyright Attorney: The Law Blog of Thomas James

The United States Supreme Court has granted certiorari to review the decision in Riseandshine Corporation, dba Rise Brewing v. Pepsico, Inc., in which the Second Circuit Court of Appeals held that RISE, although suggestive, is weak as a matter of law. Other circuits have treated distinctiveness as a question of fact for a jury, not a judge, to determine. The Court presumably has granted certiorari to resolve the conflict in the circuits.

Rise Brewing v. Pepsico

The lawsuit

Riseandshine Corporation sells nitro-brewed coffee. It registered a trademark in the phrase RISE BREWING CO. for goods in IC 030, namely, coffee-based beverage products.

Subsequently, Pepsico, Inc. launched a canned energy drink under the mark MTN DEW RISE ENERGY. Riseandshine Corporation obatined a preliminary injunction prohibiting Pepsico from using the word RISE in connection with its beverages. The district court granted the injunction, finding that Riseandshine Corporation had established likelihood of success on the merits of a trademark infringement claim.

To reach this conclusion, the district court considered eight factors that courts have deemed relevant to likelihood of confusion. The strength of the mark is one of those factors. See Polaroid Corp. v. Polaroid Electronic Corp. The district court found that the strength of the mark favored the plaintiff.

Pepsico appealed.

The Second Circuit Reversal

The Second Circuit Court of Appeals reversed, holding that the district court erred as a matter of law in failing to rule that RISE, as a trademark for coffee beverages, is weak. Although it is a suggestive mark, the Court held it is not strongly distinctive.

The Petition for Certiorari

Riseandshine Corporation filed a petition for certiorari with the United States Surpeme Court. The primary contention made in the petition is that the Court of Appeals improperly treated the question whether a suggestive mark is inhernetly distinctive and “strong” as a question of law rather than a question of fact.

The issue is of practical importance because it can mean the difference between disposing of a lawsuit quickly with a pretrial motion for summary judgmnet vs. needing to wait for a jury (or a judge sitting without a jury) to make factual determinations following a trial.

The Five Categories of Distinctiveness

As I have explained elsewhere, there are five categories of distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic.

A fanciful mark is something that is completely made up. Xerox is an example.

An arbitrary mark is one which, although a real word, bears no logical relationship to the product or service. Apple, as a trademark for computers, is an example.

A suggestive mark is one that hints at but does not directly describe a quality or feature of a product or service.

A descriptive mark is one that directly describes a quality or feature of a product or service. It does not qualify for trademark protection unless it acquires secondary meaning as an identifier of the source of a product or service. That is to say, unlike fanciful, arbitrary, and suggestive trademarks, descriptive marks are not inherently distinctive. They can become protected as trademarks only if they acquire distinctiveness.

Generic marks identify an entire class of goods or services.

Fanciful, arbitrary and suggestive marks are considered inherently distinctive. A descriptive mark is disintctive only if additional facts exist that demonstrate that it has become known to consumers as a source-identifier. Generic marks are never distinctive.

Consumer Perception

Booking.com

Booking.com is an online travel reservation service. The USPTO intially denied its application for registration of the domain name as a trademark, deeming it a generic term. Booking.com secured review in the U.S. district court for the Eastern District of Virginia, where it introduced new evidence of consumer perception. The district court found that the consuming public does not perceive BOOKING.COM as a genus of services, but as a description of services available at the website. Having found it to be descriptive rather than generic, the court proceeded to find, additionally, that it had acquired secondary meaning as an identifier of a particular source of travel reservation services.

The Court of Appeals affirmed.

Justice Ginsburg, writing for the majority of the United States Supreme Court, also affirmed.

The USPTO argued to the Court that generic terms “are ineligible for trademark protection as a matter of law” – regardless of how consumers understand them. See USPTO Brief in No. 19-46. The Court rejected that contention, holding instead that the question whether a term is generic depends on its meaning to consumers.

Perceiving suggestiveness

In Booking.com, the court found that consumers did not perceive BOOKING.COM as a generic term for any online reservation service. Rather, consumers viewed it as an identifier of a particular provider of such a service. As Justice Ginsburg observed, “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service —to be a ‘Booking.com.'” USPTO v. Booking.com, 591 U.S. _, 140 S. Ct. 2298 (2020).

The question before the Court now is whether the same thing is true of suggestiveness. Does the question whether a term is suggestive (as distinguished from descriptive, for example) also depend on its meaning to consumers?

The Court in Booking.com applied a two-step inquiry: (1) First, do consumers perceive a particular word or string of characters as a generic term or a descriptive term? (2) If they view it as descriptive, has it acquired distinctiveness?

Applying this approach in the present case would yield a two-step inquiry something like this: (1) First, do consumers perceive a particular word or string of characters as descriptive or suggestive? (2) If they view it as suggestive, is it automatically distinctive as a matter of law, or is a further determination that consumers perceive it as an identifier of a particular source of a product or service that has the suggested quality or feature necessary?

This, then, is what the question formally presented for review (Is inherent distinctiveness a question of fact or law?) comes down to.

Conclusion

Because this case is a trademark infringement lawsuit rather than a dispute about registrability, the Court has a golden opportunity to explain whether and how distinctiveness analysis differs when considering its existence as a necessary element of a valid (registrable) trademark, on one hand, and when it is considered as just one of several factors to weigh and consider in a likelihood of confusion analysis. It also presents the Court with an opportunity to shed some light on the murky distinction between descriptiveness and suggestiveness. (See, e.g., The False Dichotomy Between Suggestive and Descriptive Trademarks.)