Last week, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in Future Proof Brands, LLC v. Molson Coors Bev. Co., No. 20-50323 (Dec. 3, 2020), affirming the district court’s refusal to grant a preliminary injunction.
Future Proof sells hard seltzer products under its registered trademark BRIZZY. Coors began offering its own hard seltzer products under the brand VIZZY, which it asserted was an amalgamation of the product’s “two most prominent attributes: Vitamin C and fizzy.” Future Proof sued Coors for trademark infringement and moved for a preliminary injunction. The district court denied the motion, and Future Proof appealed.
The Fifth Circuit affirmed, agreeing with the district court that Future Proof failed to satisfy the first factor of the preliminary injunction test—substantial likelihood of success on the merits. The Court explained that the determination of likelihood of success in a trademark infringement case requires consideration of the eight “digits of confusion”: (1) the type of mark infringed, (2) the similarity of 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.
The Court analyzed the district court’s determination that digits 1, 2, 6, 7, and 8 favored denial of the injunction. As to the type of mark, the Court disagreed with the district court’s classification of the BRIZZY mark as “descriptive,” but concluded that as a “suggestive” mark BRIZZY is nevertheless “comparatively weak.” The Court further noted the significant third party usage of other “-IZZY” marks supported the district court’s conclusion that BRIZZY is a weak mark. The Court also agreed with the district court’s conclusion on lack of similarity, emphasizing the visual differences in product packaging. The Court further concluded that (1) mere awareness of another mark does not prove bad intent, and Future Proof had not presented evidence that Coors sought to derive benefit from the reputation of the BRIZZY mark; (2) while wholesalers could be considered consumers for purposes of confusion, one instance of a “fleeting mix-up” that ultimately did not sway the purchase decision does not amount to actual confusion; and (3) Future Proof’s evidence on the degree of care exercised by potential purchasers, consisting only of reference to its low price, was insufficient.