RiseandShine Corporation v. PepsiCo, Inc., No. 21-2786 (2d Cir. 2022)

In a trademark dispute under the Lanham Act, 15 U.S.C. sections 1114, 1125(a), and New York’s law of trademark and unfair competition, PepsiCo, Inc., the Defendant, which marketed a canned energy drink under the mark “MTN DEW RISE ENERGY,” appealed from a preliminary injunction imposed on it by the district court at the instance of the Plaintiff, RiseandShine Corporation, d/b/a Rise Brewing (“Rise Brewing”), which sells nitro-brewed canned coffee (and also canned tea) under the name RISE. It is undisputed that Plaintiff began using the RISE mark prior to Defendant’s use of its mark. The district court concluded that  Defendant’s conduct in using RISE caused a likelihood of confusion and that  Plaintiff was likely to succeed on the merits.
 
The Second Circuit vacated the preliminary injunction, finding that the grant of a preliminary injunction was premised on two significant errors. The court wrote that the district court granted Plaintiff a preliminary injunction based in part on the conclusion that Plaintiff was likely to succeed on the merits. This rested in substantial part on the court’s conclusion that Plaintiff’s mark was strong—both in inherent and acquired strength—as well as its determination that the two products were “confusingly similar.” To the extent that Defendant’s use of its marks caused any likelihood of confusion, this was because Plaintiff chose a weak mark in a crowded field. For this reason, the balance of hardships did not favor Plaintiff. Plaintiff did not demonstrate a likelihood of success on the merits.