RISE for nitro-brewed canned coffee against MTN DEW RISE for energy drink. 2d Circuit held that District Court made a significant error in holding that RISE was inherently string and had acquired strength.

Text of Second Circuit decision in RiseandShine v Pepsi:

riseandshine v pepsi 2d cir re RISE

BBK Tobacco & Foods LLP, Plaintiff, v. Central Coast Agriculture Incorporated, et al., Defendants, No. CV-19-05216-PHX-MTL (07/19/2022)

Defendant’s motion for summary judgment granted. Def. uses RAW GARDEN for cannabis extracts, plaintiff sells tobacco and rolling paper under the RAW mark.

Comprehensive discussion of admissibility of testimony from various types of experts, including discussion of SQUIRT v EVEREADY surveys.

Comprehensive discussion of Ninth Circuit Sleekcraft factors.

“In the instant case, five factors favor CCA, including the weighty similarity of the marks, strength of the mark, and evidence of actual confusion factors. One factor, the degree of care exercised by consumers, is neutral, while only two factors, the proximity of the parties’ goods and marketing channels used, favor BBK. See Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005) (concluding that “[t]he distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion” where only two factors weighed in plaintiff’s favor); see also M2 Software, 421 F.3d at 1081–83, 1085 (affirming grant of summary judgment when strength of the mark, similarity of the mark, and proximity of the goods factors all favored plaintiff because the others favored defendant). Given the obvious and significant differences between the parties’ marks, the absence of actual confusion, and the low net confusion rates generated by the parties’ surveys, the Court concludes that no reasonable jury could find for BBK on the likelihood of confusion issue. See Cohn, 281 F.3d at 842 (affirming grant of summary judgment where plaintiff’s “evidence fail[ed] to create a genuine issue that confusion is probable, not simply a possibility”); see also Brookfield Commc’ns, 174 F.3d at 1054 (“Where the two marks are entirely dissimilar, there is no likelihood of confusion.”); Collins v. U.S. Dep’t of Veterans Affs., 497 F. Supp. 3d 885, 900 (S.D. Cal. 2020) (“Plaintiffs have failed to demonstrate a triable issue of material fact as to a necessary element of their trademark infringement claims.”).”

Text of decision in BBK v Central Coast Agriculture: D Arizona SJ RAW GARDEN 2_19-cv-05216-MTL_443_PRIMARY DOCUMENT

MATTEL, INC. v. WWW.FISHER-PRICE.ONLINE, No. 1:2021cv09608 (S.D.N.Y. 2022) (Liman, J.)

Mattel wins default judgment over unknown Chinese cyber-squatter/counterfeiter.

Personal jurisdiction established through attempt at trap-buy.

TRO had been entered against financial institution, permanent asset freeze entered against institutions in active cooperation with defendant’s operation of the website.

Text of decision in Mattel v Fisher-Price.Online: mattel fisher price online default sdny

Russett v. Kellogg Sales Company, No. 7:2021cv08572 – Document 19 (S.D.N.Y. 2022)

Motion to Dismiss all causes, including N.Y. G.B.L. §§ 349 and 350 and related state torts granted:

“The photograph of the fresh half strawberry on the Product’s front label must be viewed in context. No reasonable consumer would see the entire product label, reading the words “Pop-Tarts Whole Grain Frosted Strawberry” alongside a frosted strawberry pop-tart with sprinkles, and reasonably expect that fresh strawberries would be the sole ingredient in the Product.”

Text of decision in Russett v. Kellogg Sales Company:

russett v kellogg sdny MtD strawberry pop tart

From the decision: Defendants’ Motion to Dismiss Plaintiff’s Complaint. filed by BET Productions IV, LLC, ViacomCBS Inc., Black Entertainment Television LLC. For the foregoing reasons, Defendant s’ motion to dismiss is GRANTED IN PART and DENIED IN PART. Plaintiff has adequately stated a claim for copyright infringement and may thus pursue discovery on this claim. Plaintiff has not, however, stated a claim for breach of implied contract. Additionally, the Court dismisses Plaintiff’s quantum meruit and unjust enrichment claims as preempted by federal law. Defendants are directed to file an answer to the Complaint on or before July 11, 2022.

Text of decision in Walkie Check v Viacom, 1:2021cv01214:

walkie check v viacom copyright 12b6 house party

SDNY: Judge Rakoff applies Rogers test to METABIRKIN NFTs. Plaintiff sufficiently pled that use of BIRKINS mark in relation to digital images of MetaBirkins likely clears “artistic relevance” prong. However, Hermes sufficiently pled that defendant’s use may have been explicitly misleading. For example, defendant had referred to the reputation of the BIRKINS mark and his desire to create a metaverse equivalent.

metabirkins decision mtd


Plaintiff and Defendant manufacture microphones (pictured above, plaintiff’s on the left). Plaintiff define its trades dress as:

(1) two vertical bars on either side of the microphone with two circular enclosures near the top and bottom, (2) a small portion of the microphone’s mesh protruding above the top circular enclosure, and (3) a threaded adapter with rounded hinges and a tapered bottom containing the microphone’s cord port.

Court finds that plaintiff didn’t show secondary meaning and denies prelim. I am a little puzzled by this discussion, however, after the court notes that plaintiff failed to submit a survey:

“Instead, Audio-Technica repeatedly and emphatically points to writings by online reviewers and commentators that Audio-Technica argues demonstrate a likelihood of confusion. However, these writings support the opposite conclusion at least as much as they support Audio-Technica’s desired conclusion, if not more so. The online reviewers and commentators variously observe that the BX2020 is a “knockoff” or a “clone” of the AT2020 and that it was an “absolutely shameless” copy. (Mot. 8–11.) These reviews indicate that writers and readers understand very well that the AT2020 and the BX2020 are manufactured by different producers, supporting the absence of confusion. See JL Beverage Co. v. Beam, Inc., 899 F. Supp. 2d 991, 1005 (D. Nev. 2012) (finding evidence of consumers noting the goods look alike showed a lack of confusion, as consumers understood the goods were distinct products). No reviewer was under the impression that the two microphones came from the same manufacturer; instead, they were all well aware that the microphones were made by two different manufacturers, and one of the purposes of the reviews was to describe the differences between the two microphones. For these reasons, the online reviews do not demonstrate a likelihood of confusion. ”

First, some of these online reviews might constitute evidence of secondary meaning. Also, an online reviewer, who is knowingly discussing defendant’s product, does not represent a consumer encountering these products in the marketplace.
Text of Audio Technica v Music Tribe, CD Call May 5 2022: