PepsiCo. Inc. recently convinced the U.S. Court of Appeals for the Second Circuit to throw out a preliminary injunction granted by a New York federal judge last fall that prevented PepsiCo from using MTN DEW RISE ENERGY on its canned energy drinks.[1]
In March 2021, PepsiCo launched MTN DEW RISE ENERGY featuring cans with a variety of bright colors corresponding to the flavors offered as shown below.
Source: Op. at p. 6
Rise Brewing, which sells nitro-brewed canned coffee and tea under the mark RISE, was concerned that PepsiCo’s product would lead consumers to believe that Rise Brewing’s products were Mountain Dew Products and filed suit with the U.S. District Court for the Southern District of New York. Rise Brewing’s products prominently feature its registered RISE BREWING CO. logo.
Source: Op. at p. 4
The district judge found that PepsiCo’s use of the mark was likely to cause consumer confusion with Rise Brewing’s canned products and granted a preliminary injunction against PepsiCo.
However, the Second Circuit vacated the order last week, ruling that the district judge failed to see that Rise Brewing’s mark is inherently weak because there is a strong logical association between “rise” and “coffee.” According to the Court, “rise” suggests waking up and is also associated with the morning, a time when many individuals rely on coffee and caffeine for energy to start their day. The Court noted that “rise” may also refer to energy itself and people may expect their energy to “rise” after drinking caffeinated beverages. Therefore, the Court held that the RISE mark only deserves a narrow scope of protection.
Additionally, PepsiCo presented over 100 uses of the term “rise” on other beverage and food containers to show extensive use of mark by third parties in the same way—to allude to increased energy in the morning. The Court held that if there was room for Rise Brewing’s RISE mark to peacefully coexist in an already crowded field, then there is also room for PepsiCo’s MTN DEW RISE ENERGY mark, especially on a product distinct from coffee.
The Court also noted that the visual representation of the marks are not confusingly similar. The only notable similarity is the shared use of “rise” in large bold letters, which is not enough to render the two uses confusingly similar. The cans for both products also differ in size, proportion, style, color, and artwork, making the overall appearance of the cans very dissimilar, according to the Court.
To the extent that PepsiCo’s use of MTN DEW RISE ENERGY caused any likelihood of confusion, the Court held this was because Rise Brewing chose a weak mark in a crowded field and overturned the grant of the preliminary injunction.
[1] RiseandShine Co. v. Pepsi Co., Inc., No. 21-2786 (2d Cir. July 22, 2022).
