(CN) - Pom Wonderful deserves another chance to show that a similarly named energy drink may confuse consumers, the 9th Circuit ruled Tuesday.
The underlying complaint that Pom Wonderful filed against Pur Beverages and owner Robert Hubbard last year in Los Angeles is typical of other actions the company has taken over the last 12 years to jealously guard its trademark.
Like Pom Wonderful, which has sold some 190 million bottles of pomegranate juice since 2002, with yearly sales of more than $60 million, Pur calls its pomegranate-flavored energy drink "pom."
Though the 9th Circuit revived Pom Wonderful's bid for an injunction Tuesday, Hubbard, the CEO of Pur, vowed that the company's trademark "bullying" is coming to an end.
"It's preposterous and it's going to stop with this lawsuit," Hubbard said in an email.
"Mark my words: I will be the company that makes Pom Wonderful lose their trademark 'POM,'" Hubbard added. "It will then allow the consumer packaged goods industry to use the properly used, and widely known term 'pom' to describe it's pomegranate flavored products, without the threat of a bully company suing every person or company that utters those three letters in sequence."
Though U.S. District Judge Margaret Morrow had refused to grant Pom Wonderful a preliminary injunction based on Pom's inability to demonstrate a "likelihood of consumer confusion," the three-judge appellate panel called it incorrect on Tuesday for the lower court to say "that the similarity of marks, marketing channel convergence, actual confusion, defendant's intent, and product expansion factors weighed against Pom Wonderful."
"When these errors are corrected and the totality of the facts is considered, it is clear that Pom Wonderful is likely to demonstrate a likelihood of consumer confusion," according to the appellate ruling by Judge David Ebel, who sat on the panel in Pasadena by designation from the 10th Circuit.
"Pur's beverage not only bears a mark that is visually, aurally, and semantically similar to Pom Wonderful's commercially strong 'POM' mark - which Pom Wonderful has used exclusively since 2002 - but also is designed for the same use and sold to the same general class of consumers as Pom Wonderful's juice beverages at a price point where consumer discernment is weak," Ebel added.
Finding the court's denial of the preliminary injunction "tainted" by the error as to Pom Wonderful's likelihood of success, the appeals panel remanded the case to Los Angeles for further consideration of whether Pom Wonderful would suffer irreparable harm absent the injunction, and whether the move is in the public interest.
Pom Wonderful's attorney, Joseph Klapach, applauded the court for "recognizing the extremely broad rights associated with Pom's nationally known character mark."
"This is an important ruling that will protect trademark owners and consumers alike," Klapach added.
For Pur CEO Hubbard, however, a trial will show that "there simply isn't" confusion.
"Because they will not be able to provide evidence, simply because there is none, they will not obtain the injunction, nor will they succeed on their claims of infringement at trial," Hubbard said in an email.
Hubbard added that the litigation will invalidate Pom Wonderful's "previously inconstestable" standard word trademark of "POM."
"They will lose their registration of the mark under the theory of genericness," Hubbard said in an email.
The market is booming with products that widely use the term pom to describe pomegranate flavoring, Hubbard said.
"The term has now become generic, and thus, not deserving of Federal Trademark Registration," his email continues.
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