Last year, Rise Brewing Co. – which sells nitro-brewed canned coffee with ‘Rise’ branding on its cans - challenged PepsiCo’s use of the word on Mtn Dew Rise Energy, with a district court granting an injunction.
But a ruling from judges of the US Court of Appeals for the Second Circuit say that ‘rise’ is a common word used with both coffee and energy drinks to convey the concept of energy; and that the can and trademark designs were sufficiently different.
Judge: ‘The plaintiff chose a weak mark in a crowded field’
Founded in 2014, New York headquartered Rise Brewing has been selling canned coffee since 2016 with listings including Walmart, Publix and Kroger. It has invested more than $17.5m in its 'Rise' marketing.
In 2021, however, PepsiCo launched Mtn Dew Rise Energy in more than 170,000 retailers in the US.
Following the legal challenge from Rise Brewing Co., a preliminary injunction was granted by a district court after it deemed the branding of the two beverages could be confused, saying that Rise had met its burden of showing a sufficient likelihood of success.
In response, PepsiCo changed the name of Mtn Dew Rise Energy to Mtn Dew Energy in November.
But the new ruling on Friday from the Second Circuit said the mark ‘Rise’ was ‘inherently weak and commands a narrow scope of protection’ given that a number of drinks use the word to allude to increased energy (in its defense, PepsiCo presented more than 100 uses of the word in connection with coffee, tea, bottled beverages, energy drinks, soft drinks, drinkable health supplements, yogurt and granola).
The court added that Rise Brewing Co had not provided sufficient evidence to prove its mark had ‘achieved sufficient acquired strength to counterbalance the inherent weakness of its mark’.
While the district court had found that the two designs were ‘confusingly similar’, the Second Circuit disagreed completely: saying this was a ‘clear error… the only notable similarity is the shared use of the term “Rise” in large bold letters’.
It added that the two cans are different in size, proportion, style, color, and artwork.
