Trademark dispute brews between kombucha producers. GOOD OMEN v. MOBTOWN

When a company uses a symbol to distinguish its products from other products in the marketplace, that symbol is considered a trademark. In the United States using a trademark automatically grants the trademark user some exclusive rights to the trademark. A trademark user can further strengthen it’s right to the trademark by registering the trademark with the United States Patent and Trademark Office, but registration is not required. Trademark law in the United States grants a trademark user the right to exclude other people from using the trademark on similar products. When someone other than the trademark user sells products that bear the trademark, that is considered trademark infringement. Trademark infringement is the unauthorized use of a trademark on products in a manner that is likely to cause confusion, deception, or mistake about the source of the products. A trademark user can stop trademark infringement by filing a lawsuit.

When a trademark is copied and placed on products, it is relatively easy to prove that consumers were confused by the counterfeit trademark. But when the trademark is not copied exactly that makes it more difficult to prove that consumers were confused about the source of a product.

When presented with a trademark infringement case a court will apply the Polaroid factors. These factors are derived from a Court of Appeals for the Second Circuit decision, so courts in other circuits can have slightly different factors, but most circuits follow a similar model. Briefly, the Polaroid factors look at: 1. Strength of the senior user’s mark, 2. Similarity of the marks, 3. Similarity of the products or services, 4. Likelihood that the senior user will sell the same products as the Junior user, 5. The junior user’s intent in adopting the mark, 6. Evidence of actual confusion, 7. Sophistication of the buyers, 8. Quality of the junior user’s products or services, and 9. related products and services.

When an application to register a trademark is filed, the USPTO performs a search to if the application seeking registration is confusingly similar to a trademark which is already registered. If a similar trademark is already registered, the applicant will have to explain how their application is not confusingly similar or the application will be denied. In most cases the USPTO is good at preventing confusingly similar trademarks from being registered, however sometimes things slip through.

GOOD OMEN BOTTLING, LLC v. MOBTOWN FERMENTATION LLC, 19-cv-03545 (D.C.MD 2019) illustrates a dispute between two registered trademarks which are used on similar products. The plaintiff in this case is the owner of federal trademark Registration No. 4918257 for the trademark WILD TONIC for use with kombucha, filed July 7, 2015 and registered March 15, 2016. The plaintiff claims to have used the trademark as early as May 2, 2015 to brand kombucha products. The plaintiff also owns Registration No. 4842234 for the mark WILD TONIC for use with “vitamin fortified beverages; nutritional supplements in the nature of probiotic drinks; dietary supplemental health drinks in the nature of vitamin and mineral beverages,” filed June 16, 2014 and registered October 27, 2014.

The defendant is the owner of federal trademark Registration No. 5101617 for the mark WILD KOMBUCHA, filed September 28, 2015 and registered on the Principal Register on December 13, 2016 in Class 30 for kombucha tea. The defendant claims actual use as of February 1, 2015.

During the trademark application process the USPTO cited the WILD TONIC mark as a basis of a refusal to register the defendant’s trademark. The defendant responded by saying that TONIC connoted a “medicinal” beverage because of the term “tonic.” The USPTO was persuaded enough by the defendant’s response to allow WILD KOMBUCHA to be registered.

The plaintiff was not persuaded because it is well known that kombucha is a probiotic drink, and filed a complaint alleging trademark infringement in late 2019. The plaintiff claims that the prominent use of WILD in the defendant’s trademark, on similar products, makes WILD KOMBUCHA confusingly similar to WILD TONIC. The plaintiff claims that it has priority to the use of WILD on probiotic drinks because of the 4842234 registration.

The plaintiff makes a persuasive argument as to why the defendant’s use of WILD could cause consumer confusion. It will be up to the defendant to convince the court, like they did the USPTO, why consumers would not get confused between two different brands of kombucha that both prominently use WILD in their trademarks.

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