CHICAGO (CN) - Consumers may confuse a flavor of Wrigley's "5" sugar-free gum called "Swerve," with a non-sugar sweetener, also named "Swerve," a federal judge ruled.
Swerve IP owns a trademark on the word "Swerve," the name of its all-natural non-sugar sweetener. Swerve sweetener is used in the manufacture of diet pralines and other foods, but hopes to expand into more mainstream products, including chewing gum.
"Swerve" is also a flavor of Wrigley's popular sugar-free "5" brand of chewing gum, so named because it changes flavor when chewed.
After Wrigley found out about the Swerve trademark, it sought declaratory judgment on its use of the name. Swerve IP moved for a preliminary injunction.
U.S. District Judge Harry Leinenweber found that the "Swerve" mark is entitled to protection and that Wrigley's use of the mark may confuse consumers.
"'Reverse confusion' protects senior mark holders from the risk of losing 'the value of the trademark - its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets' if the public comes to assume that its product is that of, or connected with, the junior user," the judge explained.
Leinenweber found that "other manufacturers, and even Wrigley in the 1980s, have co-branded gum and candy products with sweeteners. Accordingly, the public may well believe that Swerve sweetener has somehow become affiliated with sugar-free Swerve gum. Furthermore, Wrigley's own evidence tacitly acknowledges that the customer groups may overlap."
In addition, both Swerve IP and Wrigley sell their products on Amazon, and "the Court notes that online stores operate in part through keyword searches, which seems to increase the likelihood that customers will encounter the products and promotional materials together," the judge said.
While the court found a significant amount of evidence favored Swerve's motion for a preliminary injunction, Wrigley claimed it would sustain more than $2 million in losses if the court issued an injunction against its use of the name "Swerve." "Accordingly, the Court finds that the question of Wrigley's likely harm, and therefore the balancing of the harms to the respective parties (and the public), and setting the amount of any necessary bond, requires a hearing," Leinenweber concluded.
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