Two Recent Trademark Cases

The Supreme Court takes a trademark case: RiseandShine Corp. v. PepsiCo., Inc., No. 24-1016 (U.S. 2026) (granting Cert.).

Is the strength of a trademark an issue of fact,, a jury issue, or an issue of law for the judge? The Second Circuit is the only appellate court to hold the issue as one of law. RiseandShine Corp. v. PepsiCo., Inc., 41 F.4th 112 (2d Cir. 2022) (attached). The marks were MTN DEW RISE Energy Pepsi’s canned energy drink and Rise and Shine’s RISE nitro-brewed coffee. The court of appeals reviewed the grant of a preliminary injunction against Pepsi.

The Second Circuit uses an eight-factor likelihood of confusion test from Polaroid Corp. v. Polarad Electr. Corp., 287 F.2d 492 (2d Cir. 1961)(attached). The court held, “In considering the first factor, the strength of the plaintiff’s mark, the district court found that it slightly favored Plaintiff. We disagree.” 41 F.4th at 120. The court continued, “This mistake constituted legal error. While this Court has said, at times, that the classification of a mark is a factual matter, we have also stated that there is an undeniable legal element in the determination of how much strength a given mark commands.” RiseandShine, 41 F.4th at 121.

Turning to the Ninth Cir., in Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025(9th Cir. 2010) (attached), the trademark was DELICIOUS for clothing and DELICIOUS for footwear.  The court reversed and remanded a grant of summary judgment (Judge Real) for Victoria’s Secret.

The opinion discusses the eight factors from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979) that courts in this circuit use to determine likelihood of confusion. After discussing the potential factual issues, the court ruled, “Whatever its ultimate force, this evidence is sufficient to make the relative commercial strength of the DELICIOUS mark a question for the jury.”

Michael D. Harris, a partner at SoCal IP Law Group LLP, will lead the discussion.