Pom Wonderful received an early New Year’s present from the Ninth Circuit last Tuesday. A lower court had denied Pom Wonderful’s motion to enjoin the company doing business as Pur Beverages from using “pŏm” on its pomegranate-flavored energy drinks because of a likelihood of confusion with its POM® mark.

The Ninth Circuit found that the district court abused its discretion by finding that Pom Wonderful was not likely to prevail on its lawsuit.

The district court had focused on the visual dissimilarities (e.g., thicker font, prominence on label size and capitalization) of the marks and found that this factor weighed in favor of Pur Beverage in analyzing whether there was a likelihood of confusion. Disagreeing, the Ninth Circuit explained that the POM® was registered as a standard character mark. Pom Wonderful v. Hubbard No. 14-55253 at 10 (9th Cir. Dec. 30, 2014). This means that it is not limited to any particular rendition of the mark. Id. It could be in UPPERCASE LETTERS (POM), lowercase letters (pom), use sỹmbổls (pổm), ANY FONT (POM)  or any other distinguishing characteristic. The Ninth Circuit explained that “each mark is comprised of the same three letters,” same order, and with a stylized or symbol as the second letter (e.g., heart shaped or with a breve over it). Id. at 16-17. Further the marks are both “uniformly cased (i.e., they are either all uppercase or all lowercase).” Id. at 17.

The district court also incorrectly found that the marketing channel convergence, actual confusion, and Pur Beverage’s intent to use and product expansion factors weighed against Pom Wonderful. Id. at 19-25. The Ninth Circuit found that these factors also weighed in favor of Pom Wonderful. Id.

An injunction has not been imposed against Pur Beverage yet. The Ninth Circuit remanded the case for the district court to examine whether Pom Wonderful could establish the other factors to obtain an injunction (e.g., likely to suffer irreparable harm in absence of preliminary injunction; balance of equities weighs in its favor and that an injunction is in the public’s interest). It is likely that the district court will impose a preliminary injunction. A good way for Pom Wonderful to begin the new year. Pur Beverages should likely start looking for a new name.