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PepsiCo Beats ‘MTN Dew Rise’ Trademark Ban at Second Circuit (1)

July 22, 2022, 1:29 PMUpdated: July 22, 2022, 3:26 PM

PepsiCo Inc. convinced the Second Circuit to throw out a trademark injunction that would have prevented the soft drink maker from selling “MTN Dew Rise Energy” branded drinks

A New York federal judge had granted the injunction last November, finding that the Pepsi drinks—which launched in March 2021 with endorsements from NBA star Lebron James—would have likely caused confusion with the trademark used on canned nitro coffee sold by Rise Brewing Co.

But a three-judge panel for the US Court of Appeals for the Second Circuit vacated the order on Friday, ruling that Rise Brewing “has not shown that its RISE mark has achieved sufficient acquired strength to counterbalance the inherent weakness of its mark.”

The court said Rise Brewing’s mark should only receive a narrow scope of protection because of the “logical association between coffee” and the word Rise.

Pepsi also provided evidence of over 100 uses of the term “Rise” on coffee, tea, and bottled beverages, suggesting that many third parties in the drink market already recognize that “Rise” can “allude to increased energy, particularly in the morning hours,” the court found.

“If there was room for Plaintiff’s use of ‘Rise’ in the already crowded coffee field,” the court said, “there would also be room for Defendant’s, especially on a product that is distinct from coffee.”

The district court also incorrectly determined that the two trademarks appeared similar, the Second Circuit said. The MTN Dew and Rise coffee cans are different in “size, proportion, style, color, and artwork,” and without those similarities, the shared use of an ordinary word like “Rise” doesn’t cause confusion, according to the appeals court.

Rise Brewing sued in June 2021, alleging the new MTN Dew products had harmed the coffee company’s ability to raise money and caused customer confusion.

Pepsi and Rise Brewing, which uses the corporate name RiseandShine Corp., didn’t immediately respond to requests for comment.

Circuit Judge Pierre N. Leval wrote the opinion, joined by Denny Chin and Steven Menashi.

The case is RiseandShine Corp. v. PepsiCo Inc., 2d Cir., 21-2786, preliminary injunction vacated 7/22/22.

(Updated with additional details throughout.)

To contact the reporter on this story: Isaiah Poritz in Washington at iporitz@bloombergindustry.com

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com