Beverage makers battle over WAVE as a trademark. OCEAN SPRAY v. WEDGE WATER

A trademark is something that a seller uses to brand goods to tell consumers that the trademark owner is the seller of the products. Traditionally a trademark is though of as a word, short phrase or symbol. However, anything that serves the purpose of telling consumers who produced a product can be eligible for trademark protection. A trademark can be registered in the United States by filing an application with the United States Patent and Trademark Office. Registration of a trademark is not required to begin using the trademark, but registration strengthens the rights associated with the trademark.

In the United States the first person to use a trademark to brand products is considered the senior user and has priority to the trademark. Subsequent users of the same, or similar, trademark are referred to as junior users. If a junior user brands products with a trademark in a way that causes consumers to be confused about who produced a product that can be considered trademark infringement. A senior user of a trademark can sue a junior user for trademark infringement. A plaintiff in a trademark infringement lawsuit can request an injunction to stop the infringing activity and also get monetary damages for trademark infringement which has occurred.

Trademark owners must jealously guard their trademarks or risk loosing their right to the trademark. If other people use a trademark and the trademark owner does not object the public may stop associating the trademark with products from the trademark owner. For this reason trademark owners frequently enforce their rights when there is the slightest whiff of trademark infringement. However, a whiff of infringement is not enough to support a cause of action.

OCEAN SPRAY CRANBERRIES, Inc. v. WEDGE WATER, LLC, 1:21-cv-10669 (D.C.MA 2021) is an example of a case where a trademark user may have gotten a little over zealous.

Plaintiff in this case is an international distributor and manufacturer beverages. Best known for its cranberry juice products, Plaintiff has a portfolio of different drinks including fruit flavored carbonated soda. Plaintiff introduced a line of sodas marketed as OCEAN SPRAY WAVE around 2013. An example of Plaintiff’s product is reproduced above.

Defendant markets and distributes a line of lightly caffeinated, sparkling fruit juices. Defendant was established in 2016 and attempted to register WAVE as a trademark with the USPTO in 2018. That application was abandoned in 2019 because the USPTO found the trademark was already registered to someone else. Defendant then filed an intent to use trademark application in 2017 for NEW WAVE which matured into U.S. Federal Trademark Registration No. 5571632 on September 26, 2018. Some time after that Defendant sent Plaintiff a cease and desist letter claiming that Plaintiff’s product infringed on Defendant’s trademark.

Plaintiff responded by suing Defendant for a declaratory judgement of non-infringement and a petition to cancel the ‘632 trademark registration. In its complaint the Plaintiff notes that several other companies are using the word WAVE to brand different varieties of soda. Plaintiff alleges that the specimens submitted by Plaintiff to the USPTO to perfect the trademark registration were fraudulent. Plaintiff notes that the specimen looks like a CAD drawing of a soda can rather than an actual physical product being used in commerce. An example of the specimen submitted to the USPTO is reproduced above on the right.

This case is a perfect example of why an experienced trademark attorney should be involved at the start of a branding process. A trademark attorney could have counseled the Defendant to choose a different brand name or at least to not pick a fight with the senior user of a trademark.

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