The saga over “fizzy” named hard seltzers Brizzy and Vizzy added another chapter in favor of Molson Coors with this 5th Circuit opinion upholding the lower court’s denial of an injunction to Brizzy-maker, Future Proof Brands, in its attempt to keep Molson’s Vizzy from competing under that name.
The 5th Circuit agreed with the lower court on much of the analysis including the fact that the sparkling alcoholic beverages don’t look alike and that neither was the first to market carbonated beverages with an “izzy” suffix:
Neither company was the first to have the inspiration to brand a carbonated product with a variant of “fizzy.” Other products include Malibu’s “FIZZY PINK LEMONADE,” Malibu’s “FIZZY MANGO” drink, “IZZE” sparkling juice, “FIZZY FOX” sparkling shrub, IGA’s “FIZZY” sparkling water, and Hubble’s “FIZZY JUICE” sparkling juice drink.
The cans are dissimilar in a variety of ways. First, they are shaped differently. Second, Brizzy cans have “solid and dark backgrounds” along with a “‘digital’ appearance with bubbles and the vague shapes of drinking glasses.” In contrast, Vizzy cans have “white backgrounds” and “pictures of fruit.” Third, the text on each is different. Brizzy cans include the flavor and the words “SELTZER COCKTAIL” in small text. Vizzy cans feature the words “HARD SELTZER,” the flavor, and the bolded phrase “With Antioxidant Vitamin C.”
In analyzing the matter, the Court noted that for an injunction, the first factor – a likelihood of success on the merits – was where the Brizzy case fell short and found it had to go no further than addressing how Future Proof failed in that regard.
First the Court found that Brizzy was not a strong mark. The 5th Circuit disagreed with the lower court that the “izzy” suffix made the name descriptive, but held that as a suggestive mark, it was comparatively as weak as a descriptive mark:
Although we disagree with the district court’s classification of BRIZZY as a descriptive mark, suggestive marks—like descriptive marks—are “comparatively weak.” Sun Banks, 651 F.2d at 315. Thus, even if the district court erred in making that initial classification, its ultimate conclusion that BRIZZY is weak was not necessarily erroneous.
Brizzy and Vizzy share the common “IZZY” root. Several third parties also brand their products with the “IZZY” root. Those include Malibu’s “FIZZY PINK LEMONADE,” Malibu’s “FIZZY MANGO” drink, “IZZE” sparkling juice, “BIZZY” coffee, “FIZZY FOX” sparkling shrub, IGA’s “FIZZY” sparkling water, and Hubble’s “FIZZY JUICE” sparkling drink. That third-party usage of the “IZZY” root tends to show that BRIZZY is weak. In fact, we recently concluded that a suggestive mark did not “enjoy strong standing in the market,” where the record showed six examples of third-party usage, which constituted “widespread third-party use.” Springboards to Educ., 912 F.3d at 815.
Because Future Proof has made the shared “IZZY” root the basis of its claim, it is likewise appropriate to analyze third-party usage of the “IZZY” root. Because BRIZZY is suggestive and there is significant evidence of third-party usage, the district court’s conclusion that BRIZZY is weak is not “clear error” as Future Proof suggests.
Second, the 5th Circuit held that the hard seltzers’ cans provided a context for analysis of their dissimilarities finding the district court properly considered the distinct cans a differences in packaging were grounds for finding differences as well as the differences between the prefixes “Br” and “V”:
First, Future Proof claims that the court shouldn’t have considered differences in product packaging. But to determine the similarity of two marks, we examine “whether, under the circumstances of use, the marks are similar enough that a reasonable person could believe the two products have a common origin or association.” Xtreme Lashes, 576 F.3d at 228. And it is well established that “[c]ourts consider marks in the context that a customer perceives them in the marketplace,” which can include “labels, packages, or . . . advertising material directed to the goods . . . .”
The district court correctly noted several differences in product packaging. Brizzy and Vizzy cans have different shapes. Moreover, Brizzy cans have “solid and dark backgrounds” with a “‘digital’ appearance with bubbles and the vague shapes of drinking glasses.” Vizzy cans, on the other hand, feature white backgrounds and pictures of fruit. Finally, the text surrounding each mark is different. Brizzy cans have the flavor and the words “seltzer cocktail” in small text. Conversely, Vizzy cans feature the words “hard seltzer,” the flavor, and the “bolded text ‘With Antioxidant Vitamin C.’”
Second, Future Proof claims that the court failed to consider aural similarities of the “B” and “V” consonants. That claim is baseless, because the court did consider the aural similarities of “B” and “V.” It is true that the aural similarities of two marks are relevant. … Here, the only difference between the two marks is the “Br” and “V” consonants. And the Court of Customs and Patent Appeals did conclude that “‘VEEP’ and ‘BEEP’” are similar marks, because “[t]he consonant sounds ‘B’ and ‘V’ are likely to be misunderstood by the listener, depending as they do on such variables as the diction of the speaker and the hearing acuity of the listener.” Krim-Ko Corp. (Krim-Ko Div., Nat. Sugar Ref. Co.) v. Coca-Cola Bottling Co. of N.Y., 390 F.2d 728, 731-32 (C.C.P.A. 1968). The court didn’t provide any citation to support that claim, and the court didn’t analyze BRIZZY’s “Br” sound. Future Proof thus overemphasizes Krim-Ko’s persuasive value, and, contrary to what Future Proof contends, Krim-Ko in no way “compels the conclusion” that BRIZZY and VIZZY are “confusingly similar . . . .” In any event, the district court concluded that the similarity of the “B” and “V” consonants “is relevant here.”
The 5th Circuit also that the fact that Molson may have been aware of the Brizzy mark at the time it launched Vizzy was insufficient to establish some form of bad intent:
Future Proof claims that Coors and its executives were “keenly aware” and had “constructive notice” of Brizzy at the time they began marketing Vizzy. “But mere awareness of the senior user’s mark does not establish . . . bad intent.” Streamline Prod., 851 F.3d at 456 (cleaned up). Instead, “[o]ur intent inquiry focuses on whether the defendant intended to derive benefits from the reputation of the plaintiff,” and we usually rely on evidence that a defendant “imitat[ed] . . . packaging material” or “adopt[ed] similar distribution methods.” Id. at 455, 456 (cleaned up). Future Proof provides no such evidence. Given its failure to provide evidence, Future Proof’s claims about Coors’s knowledge do not establish bad intent.
In addressing whether there was actual confusion based on a distributor’s misapprehension of the products and whether end-purchasers were swayed by confusion between the brands, the Court found a derth of evidence on the matter.
In the end, the 5th Circuit upheld the lower court’s denial of a preliminary injunction based on the same common-sense analysis of the evidence presented that led to the initial determination that there was no likelihood of success on the merits because there was little likelihood of confusion allowing the case to continue (however ill-advised that might be) at the trial court for a determination on the merits.