Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 1 of 24
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------------------------------------- X
`
`RISEANDSHINE CORPORATION d/b/a
`:
`RISE BREWING,
`:
`
`:
`:
`:
`:
`:
`:
`:
`:
`-------------------------------------------------------------
`X
`LORNA G. SCHOFIELD, District Judge:
`
`-against-
`
`PEPSICO, INC.,
`
`
`
`
`
`
`
`
`21 Civ. 6324 (LGS)
`
`AMENDED
`OPINION & ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`Defendant.
`
`
`
`Plaintiff RiseandShine Corporation d/b/a Rise Brewing (“Rise Brewing”) brings this
`
`trademark infringement action against Defendant PepsiCo, Inc. (“PepsiCo”). Plaintiff is the
`
`owner of certain registered “RISE” marks that it uses with its canned caffeine drinks. Plaintiff
`
`alleges that Defendant’s recently launched, canned caffeinated drink called “MTN DEW RISE
`
`ENERGY” infringes on Plaintiff’s marks. Plaintiff alleges that Defendant’s infringement is
`
`causing actual confusion in the market, has destroyed Plaintiff’s reputation and goodwill and has
`
`impeded Plaintiff’s ability to raise capital from outside investors. The First Amended Complaint
`
`alleges violations of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and New York trademark and
`
`competition law and asserts a claim of unjust enrichment. Plaintiff moves for a preliminary
`
`injunction to enjoin Defendant from using the RISE mark while this case proceeds. For the
`
`following reasons, Plaintiff’s motion for a preliminary injunction is granted.
`
`I.
`
`BACKGROUND
`
`Founded in 2014, Plaintiff sells ready-to-drink, canned coffee and tea-based beverages
`
`that are marketed and sold as RISE. Plaintiff displays its “RISE BREWING CO.” mark on each
`
`can, with RISE in large, red capital letters against a light background on the top third of the can,
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 2 of 24
`
`as shown in the image below, with the words “Brewing Co.” appearing in a much smaller font
`
`immediately below RISE. Plaintiff registered that mark with the U.S. Patent & Trademark
`
`Office (“PTO”) in November 2017, and also owns other RISE registered marks.
`
`In 2017, Plaintiff’s CEO, Grant Gyesky, met with members of Defendant’s Innovation
`
`team to discuss a potential partnership opportunity. Two more meetings between Plaintiff and
`
`Defendant followed, first on May 10, 2018, and again on January 24, 2019. Those discussions
`
`did not result in a business relationship.
`
`In January 2021, Plaintiff learned that Defendant intended to launch a fruit-flavored
`
`caffeinated canned beverage under the mark MTN DEW RISE ENERGY. Plaintiff’s counsel
`
`wrote Defendant’s counsel, asking Defendant to “abandon any intent” to use the mark “MTN
`
`DEW RISE ENERGY” due to potential confusion with Plaintiff’s products. The parties failed to
`
`reach agreement. Defendant’s product launched in March 2021. As shown below, the MTN
`
`DEW RISE ENERGY mark appears prominently in the top portion of the can, with the RISE
`
`portion of the logo in all-capital, brightly colored letters against a light background on the top
`
`third of the can, and MTN DEW in a smaller font immediately above RISE. This action
`
`followed.
`
`Plaintiff’s Product
`
`Defendant’s Product
`
`
`PROCEDURAL HISTORY & EVIDENTIARY HEARING
`
`II.
`
`
`
`Plaintiff commenced this action in the U.S. District Court for the Northern District of
`
`Illinois on June 15, 2021. Defendant moved to transfer the case to this Court on June 28, 2021.
`
`
`
`
`2
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 3 of 24
`
`Plaintiff moved for a preliminary injunction on June 29, 2021, with the following seven
`
`declarations in support of the motion:
`
`• Corey Guidi -- Plaintiff’s Area Sales Manager for Northern California, described
`placement of Plaintiff’s and Defendant’s products in Walmart, Safeway and
`Raley’s stores. Mr. Guidi stated that, “[i]n all of [his] international chain
`accounts, PepsiCo’s RISE is stocked on the same aisle as [Plaintiff’s] RISE
`products, so consumers encounter them as alternative caffeinated beverage
`options.”
`
`• Grant Gyesky -- CEO and Co-Founder of Rise Brewing, described the company’s
`founding, trademarks and products, including the company’s target market and
`current distribution. Mr. Gyesky also described communications between the
`parties in 2017, as well as Plaintiff’s efforts to contact Defendant regarding the
`launch of its RISE drink between January and April 2021.
`
`• Melissa Kalimov -- Plaintiff's COO, described an incident on April 30, 2021,
`when an industry contact was confused by an in-store promotional display for
`Defendant’s product and asked her, “I see coffee on here and Rise. Is this new?”
`
`• Nia Kaye -- Plaintiff’s Regional Sales Manager for the Southeast, described an
`incident on May 20, 2021, when she visited a Publix grocery store in Florida and
`asked the manager on duty to check if there was more “RISE” in the backroom
`because there was not much of Plaintiff’s product on the shelves. In response, the
`manager asked if she meant “Mountain Dew RISE.”
`
`• Jarrett McGovern -- co-founder and current Chief Creative Officer of Rise
`Brewing, described the circumstances leading up to and including the May 2018
`and January 2019 meetings with Defendant’s Innovation team, and provided
`related emails from before and after those meetings.
`
`• Rachel Ratliff -- Plaintiff’s Senior Regional Sales Manager for the Midwest,
`described an incident on March 3, 2021, when a Mariano’s grocery store
`employee texted her, saying that Rise Energy had been selected for a promotional
`opportunity only to learn later that the promotion was not for Plaintiff’s product
`but instead for “a new line of energy drinks by Pepsi called RISE.”
`
`• Emily Welch -- one of the outside lawyers representing Plaintiff, provided
`information and documents from the PTO regarding Plaintiff’s various trademark
`applications and registrations, as well as copies of articles, press releases and
`tweets regarding Defendant’s product and its launch.
`
`Defendant opposed and sought a stay of Plaintiff’s preliminary injunction motion
`
`pending a decision on Defendant’s motion to transfer. Plaintiff opposed any stay and, on July 8,
`
`
`
`
`3
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 4 of 24
`
`2021, filed a cross-motion for expedited discovery and briefing for its preliminary injunction
`
`motion. On July 22, 2021, the District Court in Illinois granted Defendant’s motion to transfer.
`
`Following the transfer to this Court, on July 26, 2021, Plaintiff filed an amended
`
`complaint (the “Complaint”) and renewed its motion for a preliminary injunction (the “Motion”).
`
`A hearing was scheduled for August 13, 2021, following Defendant’s response. Defendant filed
`
`its answer on August 9, 2021, and its opposition to the Motion the next day, with the following
`
`five declarations:
`
`• Fabiola Torres -- Chief Marketing Officer, Senior Vice President of Energy
`Category at PepsiCo, described the development, launch and marketing of MTN
`DEW RISE ENERGY, including selection of the mark.
`
`• Kathryn Walker -- Vice President of Commercial Planning for Energy, a division
`within PepsiCo, described retailers’ marketing of Defendant’s product, the extent
`of Defendant’s sales of its product, and harm to PepsiCo if an injunction were
`entered.
`
`• Philip Johnson -- a retained expert who conducted a consumer survey to measure
`reverse confusion between the parties’ respective products and prepared a written
`report dated August 9, 2021.
`
`• Melissa Pittaoulis -- a retained expert who conducted a survey to evaluate the
`likelihood of forward consumer confusion between the parties’ respective
`products and prepared a written report dated August 9, 2021.
`
`• Emily Pyclik -- one of the outside lawyers representing Defendant, provided
`information and documents from the PTO regarding various trademark
`applications and registrations of non-parties incorporating the word “RISE” or
`variants in connection with goods and services, and related information;
`Plaintiff’s May 24, 2016, Office Action Response regarding its application to
`register RISE COFFEE CO. & Design; a side-by-side photo of the parties’
`respective products; and correspondence between the parties.
`
`Upon receipt of Defendant’s submissions, Plaintiff was ordered to file a reply, and the
`
`hearing was adjourned to September 9, 2021. On August 25, 2021, Plaintiff filed a reply with
`
`declarations from Allison Schmidt, Alex Tanev, Leon Kaplan, and Holly Hawkins Saporito. On
`
`August 26, 2021, Plaintiff filed a letter motion for leave to file these additional declarations,
`
`
`
`
`4
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 5 of 24
`
`which the Court denied on August 27, 2021. On September 9, 2021, the Court heard oral
`
`argument on the Motion.
`
`Following oral argument, on September 17, 2021, Defendant filed a motion for an
`
`evidentiary hearing, claiming that Plaintiff had made arguments without evidentiary support and
`
`relied on the declarations filed with Plaintiff’s reply. Defendant asked for “the chance to
`
`demonstrate why these declarations do not support [Plaintiff’s] claims” and present evidence to
`
`assist in fashioning any injunction. The Court granted Defendant’s request on September 21,
`
`2021. On September 27, 2021, the parties filed a joint letter apprising the Court of the names of
`
`any witnesses to be called and the proposed topics to be discussed. In that letter, Defendant
`
`objected to Plaintiff’s calling Allison Schmidt, Steve Salzinger or Leon Kaplan as witnesses at
`
`the hearing, which the Court overruled on September 28, 2021. On September 29, 2021,
`
`Defendant filed a motion for reconsideration or, in the alternative, asked to supplement its
`
`witness list to “respond to Plaintiff’s new witnesses.” Plaintiff responded the next day,
`
`countering that Defendant renewed its request for an evidentiary hearing specifically to have the
`
`opportunity “to cross-examine witnesses on the issues it alleged were raised for the first time at
`
`the [September 9, 2021], hearing,” including Plaintiff’s difficulties securing investments, newly
`
`obtained actual confusion evidence and Dr. Kaplan’s expert report. Plaintiff also objected to
`
`Defendant’s request to supplement its witness list. On September 30, 2021, the Court denied
`
`Defendant’s motion for reconsideration and granted Defendant’s motion to supplement its
`
`witness list.
`
`Due to the COVID-19 pandemic, the evidentiary hearing was held via video conference
`
`on October 8, 2021. Plaintiff offered credible evidence on incidents of actual confusion, the
`
`
`
`
`5
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 6 of 24
`
`likelihood of confusion and irreparable harm. Specifically, Plaintiff called four lay witnesses
`
`and one expert witness:
`
`• Grant Gyesky testified about the history and current status of Plaintiff’s business
`and trademarks; past dealings with Defendant; Plaintiff’s financial position; actual
`confusion in the marketplace and the harm that Defendant’s product has caused
`Plaintiff.
`
`• Steve Salzinger is a professional investor in early-stage companies. Mr. Salzinger
`testified that, although he has participated in six of seven rounds of Plaintiff’s
`financing, he has decided to withhold further investment in the company due to
`the marketing and sale of Defendant’s product and the resulting consumer
`confusion.
`
`• Rachel Ratliff testified about the sale of Plaintiff’s products, product placement in
`stores and actual confusion in the marketplace between the parties’ respective
`products. Ms. Ratliff also testified about the March 3, 2021, incident involving a
`Mariano’s assistant store manager who mistakenly informed Ms. Ratliff that
`Plaintiff had been chosen for a promotion -- when the promotion was for
`Defendant’s product.
`
`• Allison Schmidt is one of Plaintiff’s brand ambassadors. Ms. Schmidt testified
`about instances of confusion in product ordering, product placements in stores,
`Plaintiff’s proposed sponsorship of certain athletic events, and at regular
`consumer tastings in the Cincinnati area. Ms. Schmidt described confusion in
`stores and at product tastings as the “norm . . . not the exception at this point” and
`that she is regularly asked if Plaintiff’s product is the new coffee version of
`Mountain Dew. Ms. Schmidt’s declaration, which had been filed with Plaintiff’s
`reply, also was admitted into evidence at the hearing.
`
`• Leon Kaplan, Plaintiff’s expert witness, testified briefly to rebut Defendant’s
`survey experts and their respective reports. Mr. Kaplan’s rebuttal report also was
`admitted into evidence at the hearing.
`
`In response, Defendant relied on the previously filed report of its survey expert and called
`
`three lay witnesses:
`
`• Jim Lee, Chief Strategy and Transformation Officer and SVP, PepsiCo Beverages
`North America, testified about different product categories within the industry
`and the absence of any effect on Plaintiff from the launch and sales of
`Defendant’s product. Mr. Lee testified that Defendant’s product had been
`developed independently and that his team had “never looked” at Plaintiff
`because of Defendant’s twenty-five-year joint venture with Starbucks.
`
`
`
`
`6
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 7 of 24
`
`• Greg Lyons, Chief Marketing Officer, PepsiCo Beverages North America,
`testified about the circumstances leading to the development of Defendant’s
`product. Mr. Lyons testified that the company had been interested in getting into
`the energy drink segment following the company’s acquisition of Rockstar and
`chose the name “Rise” for its product because it connotes “morning” and also had
`“an emotional meaning” that encourages consumers to “g[e]t their day started
`right.” In addition, Mr. Lyons testified on the harm to Defendant if a preliminary
`injunction were issued.
`
`• Bryan Santee, Vice President Sales -- National Accounts, PepsiCo Beverages
`North America, testified about the distribution and marketing of Defendant’s
`product, including placement in stores. In addition, Mr. Santee testified about the
`harm Defendant would suffer if the Motion were granted, including the timeline
`and cost associated with changing product packaging.
`
`Following the evidentiary hearing, on October 11, 2021, the parties filed several exhibits
`
`admitted into evidence at the hearing.1 The same day, Defendant also objected to “one-sided
`
`record supplementation” at the hearing and requested three weeks of “targeted, expedited
`
`discovery” on issues related to store layouts, investor concerns, internet search results and
`
`Ms. Schmidt’s testimony on instances of actual confusion. Plaintiff responded on October 14,
`
`2021. The objections were overruled and the application for discovery on the preliminary
`
`injunction motion denied.
`
`III. LEGAL STANDARD
`
`Plaintiff seeks an order preliminarily enjoining Defendant from continuing to
`
`manufacture or sell its infringing RISE products. “A party seeking a preliminary injunction must
`
`show (1) irreparable harm; (2) either a likelihood of success on the merits or both serious
`
`questions on the merits and a balance of hardships decidedly favoring the moving party; and
`
`
`
` 1
`
` Immediately after the evidentiary hearing, on October 8, 2021, Defendant filed a motion
`requesting the Court to take judicial notice of the complaint filed in RiseandShine Corp. v.
`Hendricks, No. 21 Civ. 232 (W.D.N.C. Aug. 1, 2021). The Court has reviewed that complaint
`and, to the extent relevant, considers it alongside the parties’ other submissions.
`
`
`
`
`7
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 8 of 24
`
`(3) that a preliminary injunction is in the public interest.” N. Am. Soccer League, LLC v. U.S.
`
`Soccer Fed’n, Inc., 883 F.3d 32, 37 (2d Cir. 2018) (citing New York ex rel. Schneiderman v.
`
`Actavis PLC, 787 F.3d 638, 650 (2d Cir. 2015)).2 The Second Circuit has consistently applied
`
`this standard in trademark cases.3 See, e.g., Woodstock Ventures, LC v. Woodstock Roots LLC,
`
`837 F. App’x 837, 838 (2d Cir. 2021) (summary order); Benihana, Inc. v. Benihana of Tokyo,
`
`LLC, 784 F.3d 887, 895 (2d Cir. 2015); Christian Louboutin S.A. v. Yves Saint Laurent Am.
`
`Holdings, Inc., 696 F.3d 206, 215 (2d Cir. 2012).
`
`IV. DISCUSSION
`
`Plaintiff is entitled to a preliminary injunction because Plaintiff has demonstrated
`
`irreparable harm, a likelihood of success on the merits of the federal trademark claim and that the
`
`public interest weighs in favor of granting the injunction.
`
`
`
` 2
`
` The Second Circuit has articulated two versions of this standard. Compare N. Am. Soccer
`League, LLC v. U.S. Soccer Fed’n, Inc., 883 F.3d 32, 37 (2d Cir. 2018) (three-factor test), with
`Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015) (four-factor test
`weighing balance of hardships separately from merits issues). Any difference between these
`standards is immaterial here because Plaintiff has demonstrated that the balance of hardships tips
`in its favor.
`3 “Courts refer to preliminary injunctions as prohibitory or mandatory. Prohibitory injunctions
`maintain the status quo pending resolution of the case; mandatory injunctions alter it.” N. Am.
`Soccer League, LLC, 883 F.3d at 36. “Because mandatory injunctions disrupt the status quo,”
`they are subject to “a heightened legal standard by showing a clear or substantial likelihood of
`success on the merits.” Id. at 37 (internal quotation marks omitted). In deciding whether a
`preliminary injunction is mandatory or prohibitory, the Second Circuit has defined “status quo”
`as “the last actual, peaceable uncontested status which preceded the pending controversy.” Id.
`(internal quotation marks omitted). Because Plaintiff seeks to restore the status quo prior to
`Defendant’s alleged infringement, the heightened standard for mandatory injunctions does not
`apply. See Two Hands IP LLC v. Two Hands Am., Inc., No. 21 Civ. 3855, 2021 WL 4437975, at
`*2 n.2 (S.D.N.Y. Sept. 28, 2021) (“[T]he plaintiff seeks to halt the alleged infringement of its
`marks. Such an injunction is generally considered to be prohibitory, rather than mandatory.”
`(citing Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 114 (2d Cir. 2006))).
`Even if the heightened standard applies here, it is satisfied because Plaintiff has shown, not only
`a likelihood of success on the merits as discussed in the text, but also a clear or substantial
`likelihood of success on the merits.
`
`
`
`
`8
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 9 of 24
`
`A.
`
`Likelihood of Success on the Merits
`
`Plaintiff has shown a likelihood of success on the two elements of a federal trademark
`
`claim -- (1) that Plaintiff “has a valid mark that is entitled to protection” and (2) that “the
`
`defendant’s ‘actions are likely to cause confusion with [that] mark.’” Tiffany & Co. v. Costco
`
`Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) (alteration in original) (quoting Sports Auth.,
`
`Inc. v. Prime Hosp. Corp., 89 F.3d 955, 960 (2d Cir. 1996)).
`
`
`
`Protectability of the Marks
`
`The mark central to this case, depicted here, (the “Mark”) was registered in November
`
`2017 (Reg. No. 5,333,635).
`
`
`
`Because it is registered, the Mark is presumptively valid subject to any legal or equitable
`
`defense. 15 U.S.C. § 1115(a). Defendant does not contest the validity of Plaintiff’s various
`
`registered RISE marks. Plaintiff is thus likely to prevail on the first element of its federal
`
`trademark claim -- showing the validity and protectability of its Mark.
`
`
`
`Likelihood of Confusion
`
`To prevail on the second element of a federal trademark infringement claim, a plaintiff
`
`“must demonstrate that . . . the defendant’s ‘actions are likely to cause confusion with [that]
`
`mark.’” Tiffany, 971 F.3d at 84 (quoting Sports Auth., Inc., 89 F.3d at 960). But the “mere
`
`
`
`
`9
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 10 of 24
`
`possibility” of confusion is not enough; rather, a plaintiff must prove “a probability of confusion
`
`. . . affecting numerous ordinary prudent purchasers.” Id. (quoting Star Indus., Inc. v. Bacardi &
`
`Co. Ltd., 412 F.3d 373, 383 (2d Cir. 2005)).
`
`Plaintiff brings this infringement action under a “reverse confusion” theory. “Reverse
`
`confusion” exists where a junior user “selects a trademark that is likely to cause consumers to
`
`believe, erroneously, that the goods marketed by the [senior] user are produced by the [junior]
`
`user.” Lang v. Ret. Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991); accord Banff, Ltd. v.
`
`Federated Dep’t Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988). “The reverse confusion theory
`
`protects the mark of a [senior] user from being overwhelmed by a [junior] user, typically where
`
`the [junior] user is larger and better known and consumers might conclude that the senior user is
`
`the infringer.” LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 666
`
`(S.D.N.Y. 2016) (internal quotation marks omitted).
`
`In determining whether there is a likelihood of reverse confusion, courts in the Second
`
`Circuit apply the eight-factor balancing test set forth in Polaroid Corp. v. Polarad Elecs. Corp.,
`
`287 F.2d 492 (2d Cir. 1961) (“Polaroid”). They are:
`
`(1) the strength of the trademark; (2) the degree of similarity between the
`plaintiff’s mark and the defendant’s allegedly imitative use; (3) the proximity of
`the products and their competitiveness with each other; (4) the likelihood that the
`plaintiff will “bridge the gap” by developing a product for sale in the defendant’s
`market; (5) evidence of actual consumer confusion; (6) evidence that the
`defendant adopted the imitative term in bad faith; (7) the respective quality of the
`products; and (8) the sophistication of the relevant population of consumers.
`
`Tiffany & Co., 971 F.3d at 84-85 (citing Polaroid, 287 F.2d at 495; Starbucks Corp. v. Wolf’s
`
`Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009)). Six of these factors -- the strength of the
`
`mark, the similarity of defendant’s mark to plaintiff’s; the proximity of the products sold under
`
`defendant’s mark to those under plaintiff’s; where the products are different, the likelihood that
`
`plaintiff will bridge the gap; the existence of actual confusion; and the sophistication of
`
`10
`
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 11 of 24
`
`consumers -- directly relate to the likelihood of confusion. Virgin Enters. Ltd. v. Nawab, 335
`
`F.3d 141, 146-47 (2d Cir. 2003). The other two -- good faith and the quality of defendant’s
`
`products -- are more pertinent to other issues, such as harm to plaintiff’s reputation and choice of
`
`remedy. Id. at 147.
`
`The principal question in this case is whether Defendant’s use of the term “RISE” on its
`
`caffeinated drink is likely to cause confusion with Plaintiff’s Mark. Plaintiff has shown that it is
`
`likely to prevail on that question particularly because of the similarity between the two marks,
`
`the proximity of Defendant’s area of commerce to Plaintiff’s and the credible testimony at the
`
`October 8, 2021, hearing from Mr. Gyesky, Ms. Ratliff and Ms. Schmidt on instances of actual
`
`confusion.
`
`
`
`Strength of the Mark (Factor 1)
`
`The first factor is strength of the mark. Plaintiff primarily relies on the word “RISE” in
`
`the Mark to establish confusion. As explained below, this factor tilts slightly in Plaintiff’s favor.
`
`“The first pertinence of the strength of a mark has to do with likelihood of public
`
`confusion. The more unusual and distinctive a particular mark, the more likely the consumer
`
`will assume, upon seeing it essentially replicated, that the newly observed user is the same as, or
`
`affiliated with, the originally observed user.” Guthrie Healthcare Sys. v. ContextMedia, Inc.,
`
`826 F.3d 27, 41 (2d Cir. 2016); see also Star Indus., Inc., 412 F.3d at 384 (“The strength of a
`
`mark is determined by its tendency to uniquely identify the source of the product.”). A mark’s
`
`“strength” is “crucial to the likelihood of confusion analysis” in a reverse confusion case because
`
`a plaintiff’s well-known association with the claimed mark “makes it much more likely that
`
`consumers will assume wrongly that [the plaintiff] is somehow associated with [the defendant’s
`
`
`
`
`11
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 12 of 24
`
`product] or has authorized the use of its mark.” Lois Sportswear, U.S.A., Inc. v. Levi Strauss &
`
`Co., 799 F.2d 867, 873 (2d Cir. 1986); accord LVL XIII Brands, Inc., 209 F. Supp. 3d at 668.
`
`The strength of a trademark “is analyzed based on two components: (1) the degree to
`
`which [the mark] is inherently distinctive; and (2) the degree to which it is distinctive in the
`
`marketplace.” Car-Freshner Corp. v. Am. Covers, LLC, 980 F.3d 314, 329 (2d Cir. 2020)
`
`(internal quotation marks omitted). Inherent distinctiveness is assessed using four categories of
`
`marks that indicate increasing distinctiveness and protectability: (1) generic; (2) descriptive; (3)
`
`suggestive; and (4) arbitrary or fanciful. See id.; accord Two Hands IP LLC v. Two Hands Am.,
`
`Inc., No. 21 Civ. 3855, 2021 WL 4437975, at *6 (S.D.N.Y. Sept. 28, 2021). A descriptive mark
`
`is “one that tells something about a product, its qualities, ingredients or characteristics.” Gruner
`
`+ Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d
`
`1072, 1076 (2d Cir. 1993). A suggestive mark suggests the product, though it may take
`
`imagination to grasp its nature. Id. An arbitrary mark has an actual dictionary meaning, but that
`
`meaning does not describe the product, and a fanciful mark is a made-up name. See id. at 1075-
`
`76.
`
`Plaintiff’s Mark is suggestive because the word “RISE” is “not directly descriptive,” but
`
`evokes images of morning, which “suggest[s] a quality or qualities of the product through the use
`
`of imagination, thought and perception.” Star Indus., Inc., 412 F.3d at 385 (internal citation and
`
`quotation marks omitted). Suggestive marks are considered inherently distinctive. Id.
`
`“However, suggestive marks are not necessarily distinct in the marketplace.” Two Hands
`
`IP LLC, 2021 WL 4437975, at *7. Market distinctiveness “is determined by analyzing six
`
`factors: advertising expenditures, consumer studies linking the mark to a source, unsolicited
`
`media coverage of the product, sales success, attempts to plagiarize the mark, and the length and
`
`
`
`
`12
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 13 of 24
`
`exclusivity of the mark’s use.” Car-Freshner Corp., 980 F.3d at 329 (citing Centaur Commc'ns,
`
`Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1222 (2d Cir. 1987)).
`
`Taken together, these factors tilt slightly in favor of Plaintiff. This assessment takes into
`
`consideration the procedural posture and present inquiry -- i.e., whether Plaintiff has shown a
`
`sufficient likelihood of future success on the merits to warrant injunctive relief now. Plaintiff’s
`
`CEO testified that the company was founded in 2014, has invested more than $17.5 million in
`
`promoting its “RISE” marks, and has received a number of awards for its products, including
`
`winning “Best New Product” in 2017 from BevNet for its nitro cold brew coffee; “Beverage
`
`Innovation of the Year” in 2018 from Beverage Industry magazine; “2018 NEXTY Best New
`
`Organic Beverage Award” from New Hope Network; and “Best Canned Coffee” in 2019 from
`
`People Magazine for its canned nitro cold brew product. At this early stage of the litigation,
`
`Plaintiff has not provided any consumer studies linking “RISE” to its business or any evidence of
`
`attempts to plagiarize its marks. As for exclusivity, Plaintiff appears to have been the exclusive
`
`user of the principal term “RISE” to identify a single-serving, canned caffeinated beverage (until
`
`the launch of Defendant’s product), although there are other commercial uses of the term “RISE”
`
`among morning beverages.4
`
`Defendant counters that Plaintiff acknowledged the generic nature of the “RISE” mark
`
`before the PTO in 2015, writing “[t]he records of the Patent and Trademark Office demonstrate
`
`that many entities have used the word ‘Rise’ in relation to the Applicant’s goods, making it
`
`
`
` 4
`
` Defendant filed a motion asking this Court to take judicial notice of a case currently pending in
`the Western District of North Carolina involving Plaintiff and the alleged producers of a canned,
`caffeinated beverage called “RIZE.” The parties in that case appear to dispute when the “RIZE”
`drink became available for sale and whether it is still on the market. Complaint, RiseandShine
`Corp. v. Hendricks, No. 21 Civ. 232 (W.D.N.C. Aug. 1, 2021).
`
`
`
`
`13
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 14 of 24
`
`unlikely that consumers would give significant weight to this term in ascertaining the source of
`
`such goods.” “In general, courts do not bind parties to their statements made or positions taken
`
`in ex parte application proceedings in front of the PTO.” Alpha Media Grp., Inc. v. Corad
`
`Healthcare, Inc., No. 13 Civ. 5438, 2013 WL 5912227, at *3 (S.D.N.Y. Nov. 4, 2013) (noting, at
`
`most, such statements can be “considered as evidence, albeit not conclusive evidence, of the
`
`truth of the assertions”). Defendant’s argument also is undercut by testimony from its own
`
`witness, Mr. Lyons, who testified that Defendant chose to name its product “RISE” following
`
`surveys that found the term had “an emotional meaning” that appealed to consumers. In
`
`addition, the Mark consists of more than the word “RISE” taken alone and out of context, but
`
`includes “the stylized logo of that name including the unusual form and shape of the letters
`
`comprising the word.” Gruner + Jahr USA Publ’g Div. of Gruner + Jahr Printing & Publ’g
`
`Co., 991 F.2d at 1077-78 (“In analyzing the strength of the mark for likelihood of confusion
`
`purposes, we observe again that the actual trademark registration in this case protects not the
`
`name or the word “parents,” but rather the stylized logo of that name including the unusual form
`
`and shape of the letters comprising the word.”). Accordingly, this factor tilts slightly in
`
`Plaintiff’s favor.
`
`
`
`Similarity of the Marks (Factor 2)
`
`The second factor is the similarity of the marks. This inquiry involves looking at “how
`
`[the marks] are presented in the marketplace.” Sports Auth., Inc., 89 F.3d at 962. “In assessing
`
`similarity, courts look to the overall impression created by the logos and the context in which
`
`they are found and consider the totality of factors that could cause confusion among prospective
`
`purchasers.” Gruner + Jahr USA Publ’g, a Div. of Gruner + Jahr Printing & Publ’g Co., 991
`
`F.2d at 1078; accord Flushing Bank v. Green Dot Corp., 138 F. Supp. 3d 561, 587 (S.D.N.Y.
`
`
`
`
`14
`
`

`

`Case 1:21-cv-06324-LGS Document 149 Filed 11/04/21 Page 15 of 24
`
`2015) (“In evaluating similarity, a court looks at how a mark as a whole sounds, looks and feels -
`
`- reviewing the size of a mark, design of a logo, the typeface, how a word sounds when
`
`spoken.”).
`
`Here, the two marks are confusingly similar in appearance. Both highlight the single
`
`word “RISE.” See Virgin Enters. Ltd., 335 F.3d at 149 (reversing district court’s denial of
`
`preliminary injunction where plaintiff’s and defendants’ marks “ both consisted of the same
`
`word, ‘virgin’”). On both of the parties’ respective products, “RISE” is printed on a beverage
`
`can, in large typeface, in all-capital letters, in a bright color against a light background and is the
`
`dominant feature occupying the top third of the can. The other terms, the parties’ respective
`
`house marks -- i.e., “Brewing Co.” and “Mtn. Dew” -- appear in much smaller lettering. See
`
`Flushing Bank, 138 F. Supp. 3d at 587 (“Factors which courts consider in this regard include
`
`mode of presentation, typeface, inclusion of additional words, dress colors, and associated tie-
`
`ins, such as a mascot.”).
`
`Defendant argues that the appearance of the parties’ products that bear the marks are not
`
`confusingly similar because the cans themselves are different sizes, the logos are in different
`
`fonts and Defendant’s use of the house mark “MTN DEW” mitigates against any conf