RiseandShine Corporation v. PepsiCo, Inc.

21-2786
RiseandShine Corporation v. PepsiCo, Inc.
1
UNITED STATES COURT OF APPEALS 1
FOR THE SECOND CIRCUIT 2
3
August Term, 2021 4
5
(Argued: June 1, 2022 Decided: July 22, 2022) 6
7
Docket No. 21-2786 8
9
10
_____________________________________ 11
12
RISEANDSHINE CORPORATION, DBA Rise Brewing, 13
14
Plaintiff-Appellee, 15
16
v. 17
18
PEPSICO, INC., 19
20
Defendant-Appellant, 21
22
23
_____________________________________ 24
25
Before: 26
27
LEVAL, CHIN, and MENASHI, Circuit Judges. 28
29
In a trademark dispute under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and 30
New York law, Defendant-Appellant PepsiCo, Inc., which sold a canned energy 31
drink under the mark “MTN DEW RISE,” appeals from a preliminary injunction 32
imposed by the United States District Court for the Southern District of New 33
York (Schofield, J.), at the instance of Plaintiff-Appellee RiseandShine 34
Corporation, which sells a canned coffee drink under the name “RISE.” Because 35
we find that the district court erred assessing the strength of Plaintiff’s mark and 36
the similarity of the products, we VACATE the preliminary injunction. 37
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PAUL TANCK , Alston & Bird LLP, New 1
York, NY (Kirk T. Bradley, Alston & Bird 2
LLP, Charlotte, NC; Jason D. Rosenberg, 3
Holly H. Saporito, Alston & Bird LLP, 4
Atlanta, GA, on the brief), for Plaintiff- 5
Appellee. 6
7
D ALE M. CENDALI , Kirkland & Ellis LLP, 8
New York, NY (Luke Ali Budiardjo, 9
Kirkland & Ellis LLP, New York, NY, Julie 10
M.K. Siegal, Kirkland & Ellis LLP, 11
Washington, D.C.; Macey Reasoner Stokes, 12
Christopher E. Tutunjian, Baker Botts LLP, 13
Houston, TX, on the brief), for Defendant- 14
Appellant. 15
16
17
18
19
LEVAL, Circuit Judge: 20
In a trademark dispute under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), 21
and New York’s law of trademark and unfair competition, PepsiCo, Inc., the 22
Defendant, which marketed a canned energy drink under the mark “MTN DEW 23
RISE ENERGY,” appeals from a preliminary injunction imposed on it by the 24
United States District Court for the Southern District of New York (Lorna 25
Schofield, J.) at the instance of the Plaintiff, RiseandShine Corporation, d/b/a Rise 26
Brewing (“Rise Brewing”), which sells nitro-brewed canned coffee (and also 27
canned tea) under the name RISE. It is undisputed that Plaintiff began using the 28

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RISE mark prior to Defendant’s use of its mark. The district court concluded that 1
Defendant’s conduct in using RISE caused a likelihood of confusion and that 2
Plaintiff was likely to succeed on the merits. 3
We find that the grant of a preliminary injunction was premised on two 4
significant errors. We therefore vacate the preliminary injunction. 5
6
BACKGROUND 7
Founded in 2014, Plaintiff launched its first cans of nitro-brewed coffee in 8
2016. It now sells these canned beverages nationwide in major stores, such as 9
Walmart, Publix, and Kroger. Plaintiff uses “RISE” as a mark referring to its 10
product and has registered “RISE BREWING CO.” as a word mark, Reg. No. 11
5,168,377, and its RISE BREWING CO. logo as a design mark, Reg. No. 5,333,635, 12
shown below. 13
14

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Plaintiff displays this design mark on every can. The mark consists of the 1
word “RISE” in large, red, regular capital letters in simple, unadorned, sans-serif 2
font on a horizontal line, set against a light background with thin yellow lines 3
radiating from the word “RISE,” mimicking rays of sunshine. The words 4
“Brewing Co.” appear below “RISE” in a much smaller, similar, simple font on a 5
horizontal line. [A-212]. This design takes up approximately the top third of the 6
7-ounce can, as shown below. The lower part of the can is in a uniform color, 7
with “NITRO COLD BREW COFFEE” in the same simple typeface on a 8
horizontal line. 9
10
In January 2021, Plaintiff learned that Defendant planned to launch a fruit- 11
flavored canned energy drink under the mark MTN DEW RISE ENERGY. 12
Plaintiff sent a demand letter, asking Defendant to “abandon any intent to use 13
the RISE mark, or any confusingly similar RISE mark, in connection with any 14

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canned or caffeinated beverage.” App’x at 356. Defendant’s counsel sent a reply, 1
stating that they did not see “any merit” to Plaintiff’s claims. App’x at 368. The 2
parties were unable to arrive at a resolution. 3
In March 2021, Defendant launched its MTN DEW RISE ENERGY product. 4
MTN DEW RISE ENERGY came in a variety of sweet, fruity flavors, such as 5
Pomegranate Blue Burst, Tropical Sunrise, and Strawberry Melon Spark. The 16- 6
ounce cans were sold in over 170,000 retailers across the country, including 7
convenience stores, gas stations, and drug stores. 8
Defendant’s packaging, as depicted below, features a variety of bright 9
colors corresponding to its various flavors. The word “RISE” appears on the top 10
third of the cans in a large, stylized jagged font in ornate letters displayed in an 11
arc, followed by the word “ENERGY” running vertically up its side in a much 12
smaller font. The MTN DEW house mark, consisting of the words “MTN DEW,” 13
slants diagonally toward the upper right above the word “RISE.” Below “RISE” 14
is a stylized lion logo composed of geometric shards. 15

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1
Plaintiff brought this suit in the U.S. District Court for the Northern 2
District of Illinois. On motion of Defendant, the suit was transferred to the U.S. 3
District Court for the Southern District of New York. Plaintiff moved for, and the 4
district court granted, a preliminary injunction, enjoining Defendant from using 5
or displaying the challenged mark in the market, pending trial. 6
DISCUSSION 7
I. Preliminary Injunction 8
A party seeking a preliminary injunction must show “(1) irreparable harm; 9
(2) either a likelihood of success on the merits or both serious questions on the 10
merits and a balance of hardships decidedly favoring the moving party; and (3) 11
that a preliminary injunction is in the public interest.” N. Am. Soccer League, LLC 12
v. United States Soccer Fed’n, Inc., 883 F.3d 32, 37 (2d Cir. 2018). Where a mark 13
warrants protection under the Lanham Act, “both the likelihood of success on 14
the merits and the potential for irreparable harm in the absence of preliminary 15

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relief may be demonstrated by a showing that a significant number of consumers 1
are likely to be misled or confused as to the source of the products in question.” 2
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir. 1992). 3
4
II. Likelihood of Confusion 5
To prevail in a federal trademark infringement claim, a plaintiff “must 6
demonstrate that . . . the defendant’s actions are likely to cause confusion with 7
[that] mark.” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) 8
(internal quotation marks omitted). Here, Plaintiff argues that Defendant’s use of 9
the word “Rise” created a likelihood of reverse confusion. Reverse confusion 10
occurs when consumers “believe, erroneously, that the goods marketed by the 11
prior user are produced by the subsequent user.” Lang v. Ret. Living Pub. Co., 949 12
F.2d 576, 583 (2d Cir. 1991). 13
Plaintiff contends that Defendant’s use of the word “Rise” was likely to 14
result in consumers mistakenly concluding that Plaintiff’s coffee drink was a 15
Mountain Dew product, thus creating consumer confusion in the marketplace. 16
To evaluate claims of consumer confusion, this court employs the eight factors 17
set out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961): 18

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“[T]he strength of [the plaintiff’s] mark, the degree of similarity between the two 1
marks, the proximity of the products, the likelihood that the [plaintiff] will 2
bridge the gap, actual confusion, and the reciprocal of defendant’s good faith in 3
adopting its own mark, the quality of defendant’s product, and the sophistication 4
of the buyers.” Id. at 495. 5
In general, this court reviews the grant of a preliminary injunction for an 6
abuse of discretion. Bristol-Myers Squibb, 973 F.2d at 1038. “Applying legal 7
standards incorrectly or relying upon clearly erroneous findings of fact may 8
constitute an abuse of discretion.” Id. Where “the determination of whether one 9
of the Polaroid factors favors one party or another involves a legal judgment— 10
which it often does—we must review that determination de novo.” Tiffany & Co., 11
971 F.3d at 86. 12
Having considered these eight factors, the district court found that Plaintiff 13
had met its burden of showing a sufficient likelihood of success on the merits to 14
warrant a preliminary injunction. We disagree and find that the district court 15
erred in its evaluation of what is often the most important factor—the strength of 16
Plaintiff’s mark—as well as in its finding of similarity in the appearance of the 17
products. 18

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A. Strength of the Mark 1
In considering the first factor, the strength of the plaintiff’s mark, the 2
district court found that it slightly favored Plaintiff. RiseandShine Corp. v. PepsiCo, 3
Inc., 2021 WL 5173862, at *7 (S.D.N.Y. Nov. 4, 2021). We disagree. The district 4
court failed to recognize the inherent weakness of Plaintiff’s mark. Its 5
determination that this factor favored Plaintiff was affected by that failure, as 6
was its ultimate conclusion that Plaintiff was likely to succeed on the merits. 7
“[T]he strength of a mark depends ultimately on its distinctiveness, or its 8
‘origin-indicating’ quality, in the eyes of the purchasing public.” McGregor– 9
Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131–32 (2d Cir. 1979), superseded on 10
other grounds by Fed. R. Civ. P. 52(a). The strength of a trademark is assessed 11
based on either or both of two components: (1) the degree to which it is 12
inherently distinctive; and (2) the degree to which it has achieved public 13
recognition in the marketplace, sometimes called acquired strength. W.W.W. 14
Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993). 15
We turn first to inherent strength. Inherent strength or weakness of a mark 16
is frequently an important factor because strong marks command a wider scope 17
of protection than weak marks. The trademark law allows every marketer to 18

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identify itself as a product’s source by use of a distinctive mark, which will allow 1
the public to recognize it as the source of the product, rewarding the marketer if 2
it has earned a good public reputation and punishing it if the public’s prior 3
experience has been disappointing. In this manner, the trademark law serves the 4
purposes of both marketers and the consuming public. So long as marketers 5
select words or signs that have no logical relationship to the products or services 6
on which they are used, there will never be a shortage of marks. Trademark law 7
favors the use of marks that are arbitrary or fanciful in relation to the products 8
on which they are used. This is because such distinctive marks make it easier for 9
the public to avoid confusion and because allowing the owner a broad 10
exclusivity for such a mark detracts little from free expression, as other marketers 11
of similar products have no justified interest in using such words to identify their 12
products. See discussion at Pierre N. Leval, Trademark: Champion of Free Speech, 13
27 C OLUM. J.L. & ARTS 187, 194 (2004). In contrast, trademark law offers a much 14
narrower scope of protection to marketers who seek to bar others from using 15
words that describe or suggest the products or the virtues of their products. See 16
Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 147-48 (2d Cir. 2003) (“[A]s a matter 17
of policy, the trademark law accords broader protection to marks that serve 18

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exclusively as identifiers and lesser protection where a grant of exclusiveness 1
would tend to diminish the access of others to the full range of discourse relating 2
to their goods.”). 3
To describe different degrees of inherent distinctiveness, the trademark 4
law utilizes four categories. In order of ascending strength, they are: (1) generic, 5
(2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. 6
A generic mark is a common name, such as automobile or aspirin, that 7
identifies a kind of product. Gruner + Jahr USA Pub., a Div. of Gruner + Jahr 8
Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993). A mark 9
that consists of a generic identifier of the product receives no protection from the 10
law of trademark, even if the mark has acquired public recognition as identifying 11
the source of the product. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 12
4, 9 (2d Cir. 1976). Neither prior use, nor public recognition as a source identifier 13
can justify denying others the right to refer to their product as what it is. 14
One rung above the unprotectable generic marks are descriptive marks. 15
These are marks that “tell[] something about a product, its qualities, ingredients 16
or characteristics.” Gruner, 991 F.2d at 1076. Descriptive marks are presumptively 17
unprotectable, but can acquire a degree of protection if they have acquired 18

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secondary meaning, i.e. an acquired public recognition as a mark identifying the 1
source. Id. 2
Suggestive marks occupy the next higher rung. Suggestive marks suggest 3
(rather than directly describe) the product on which they are employed, or its 4
attributes, sometimes requiring imagination to grasp the linkage. Id. They are the 5
weakest marks that are protectable without need to show acquired secondary 6
meaning. They receive a narrower scope of protection than the protection 7
accorded to arbitrary or fanciful marks—those at the top of the ladder. Id. at 1075 8
Arbitrary and fanciful marks – i.e., those that make no logical reference to 9
the product or service on which they are used, such as Google for a search 10
engine, Kodak for cameras, or Quilted Giraffe for a restaurant, receive the 11
strongest protection. Id. This is because other marketers of the same products or 12
services have no justification or cognizable interest in using the same terms in 13
referring to their own market offerings. 14
The district court determined that Plaintiff’s mark was “suggestive,” 15
noting that the word “Rise” “evokes images of morning, which ‘suggest[s] a 16
quality or qualities of the product through the use of imagination, thought, and 17
perception.’” RiseandShine, 2021 WL 5173862, at *7 (quoting Star Indus., Inc. v. 18

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Bacardi & Co., 412 F.3d 373, 385 (2d Cir. 2005)). We find no error in the district 1
court’s determination that Rise Brewing’s mark is “suggestive.” But labeling a 2
mark as “suggestive” is not the end of the inquiry. See Lang, 949 F.2d at 581 3
(“[S]uggestiveness is not necessarily dispositive of the issue of the strength of 4
the mark.”). 5
“[A] finding of suggestiveness does not guarantee a determination that the 6
mark is a strong one.” W.W.W. Pharm. Co., 984 F.2d at 572. Because suggestive 7
marks, by their nature, seek to suggest the qualities of the product, it can be 8
difficult to distinguish weak suggestive marks from descriptive ones. Like 9
descriptive marks, instead of focusing on the favored goal of source 10
identification, suggestive marks aim to secure the exclusive right to an 11
advertising message that is built into the trademark. See Leval, Trademark: 12
Champion of Free Speech at 193. The district court failed to note that the strong 13
logical associations between “Rise” and coffee represent weakness and place the 14
mark at the low end of the spectrum of suggestive marks. See, e.g., Star Indus., 412 15
F.3d at 385 (“Star’s mark is suggestive, but just barely.”). 16
This mistake constituted legal error. While this Court has said, at times, 17
that the classification of a mark is a factual matter, Bristol-Myers Squibb, 973 F.2d 18

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at 1039-40, we have also stated that there is an undeniable legal element in the 1
determination of how much strength a given mark commands, Patsy’s Brand, Inc. 2
v. I.O.B. Realty, Inc., 317 F.3d 209, 216 (2d Cir. 2003) (“[T]here is a considerable 3
component of law in the determination whether a mark has the degree of 4
strength necessary to weigh in favor of the party claiming 5
infringement.”), abrogated on other grounds by 4 Pillar Dynasty LLC v. New York & 6
Co., Inc., 933 F.3d 202 (2d Cir. 2019).1 7
In its ordinary usage, “Rise” suggests waking up and “rising” from bed. 8
Rising is generally associated with the morning, a time when many crave a cup 9
of coffee, relying on its caffeine to jumpstart their energy for the day. The 10
intended and achieved reference of the RISE mark is illustrated by Plaintiff’s 11
company name—RiseandShine—something that a morning cup of coffee helps 12
1 If a marketer chose “Toothpaste” as a mark for a toothpaste and sought to prevent other toothpaste
makers from use of the word “toothpaste,” the factfinder would not have discretion to find that the
plaintiff’s mark was anything other than generic and unprotected. By the same token, if the marketer took
the mark “Green Hippopotamus” for its toothpaste, factfinders would not be at liberty to find that such a
mark was anything other than arbitrary or fanciful, belonging in the highest rung entitled to the strongest
protection. Between descriptive and suggestive marks, there may be some room for difference of opinion;
nonetheless, the discretion allowed to a factfinder in finding inherent strength is minimal at best. See
Cross Com. Media, Inc. v. Collective, Inc., 841 F.3d 155, 162 (2d Cir. 2016) (holding that the district court’s
classifying of a mark as descriptive as opposed to suggestive was clear error and error as a matter of law).
If the toothpaste mark was “Pure White” or “Fresh Breath,” the descriptive or suggestive relationship of
such marks to the product are so clear that it would be error for the factfinder to place such marks in
either the highest (arbitrary or fanciful) category or the lowest generic category.

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us to do. The proposition that one isn’t fully awake until one has had one’s 1
morning coffee is a cliché. 2
The word “Rise” may also refer directly to energy itself; after consuming 3
caffeine, one’s energy levels can be expected to “rise.” The trademark law does 4
not favor giving one marketer an exclusive right to prevent others from using 5
such valuable marketing terms in their own marketing campaigns. When a mark 6
so clearly evokes the claimed virtues of the product it references, that mark, 7
although perhaps muscular as a marketing tool, is weak under the trademark 8
law. See Star Indus., 412 F.3d at 385; see also Procter & Gamble Co. v. Johnson & 9
Johnson Inc., 485 F. Supp. 1185, 1196-97 (S.D.N.Y. 1979) (finding that a word used 10
as a mark “to convey, through that word’s primary meaning, a quality of the 11
product or of a promised consumer reaction to its use,” “lack[ed] originality and 12
uniqueness.”), aff'd, 636 F.2d 1203 (2d Cir. 1980). The close associations between 13
the word “Rise” and coffee constituted a weakness of the mark under the 14
trademark law, which reduced, rather than advanced, Plaintiff’s likelihood of 15
success on the merits. Because the word “Rise” is so tightly linked with the 16
perceived virtues of coffee, the mark is inherently weak and commands a narrow 17
scope of protection. 18

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Although the suggestive category is higher than the descriptive category 1
because a descriptive association between mark and product is more direct than 2
a suggestive association, it does not necessarily follow that every suggestive 3
mark is stronger than every descriptive mark. If the suggestion conveyed by a 4
suggestive mark conjures up an essential or important aspect of the product, 5
while the description conveyed by a descriptive mark refers to a relatively trivial 6
or insignificant aspect of the product, the particular suggestive mark could be 7
deemed weaker than the descriptive. Coffee’s capacity to wake one up and lift 8
one’s energy, which is what the “RISE” mark suggests, is such an important part 9
of the perceived virtue of coffee in the eyes of the consuming public as to render 10
this suggestive mark decidedly weak. 11
A survey of the use of the term “Rise” in the beverage market further 12
underlines the weakness of the mark. Extensive third-party usage of a mark in 13
related products generally weighs against a finding that a trademark is strong. 14
See, e.g., Lang, 949 F.2d at 581. “[I]n a ‘crowded’ field of similar marks, each 15
member of the crowd, is relatively ‘weak’ in its ability to prevent use by others in 16
a crowd.” J. THOMAS MCC ARTHY , MCC ARTHY ON TRADEMARKS AND UNFAIR 17
C OMPETITION § 11:85, at 11-163 (4th ed. 2001). This is especially true where both 18

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the plaintiff’s product and the other products use the word to signify the same 1
ordinary meaning. See, e.g., Plus Prod. v. Plus Disc. Foods, Inc., 722 F.2d 999, 1005 2
(2d Cir. 1983); Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 3
1998). 4
Although, as the district court points out, Plaintiff appears to have been 5
“the exclusive user of the principal term ‘RISE’ to identify a single-serving, 6
canned caffeinated beverage,” RiseandShine, 2021 WL 5173862, at *7, there were 7
already a number of marks using “Rise” on coffee drinks and other similar 8
products when Plaintiff began to use its mark. Defendant presented evidence of 9
over 100 uses of the term “Rise” in connection with coffee, tea, bottled beverages, 10
energy drinks, soft drinks, drinkable health supplements, cafes, yogurts, and 11
granolas. App’x at 334-345. Many of these products use “Rise” in the same way 12
as Plaintiff does—to allude to increased energy, particularly in the morning 13
hours. 14
Plaintiff itself acknowledged this crowded field in its application to the 15
United States Patent and Trademark Office (“PTO”). It initially attempted to 16
register the mark “RISE COFFEE CO.” but was rejected by the PTO on the basis 17
that there was a likelihood of confusion between “RISE COFFEE CO.” and prior 18

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registrations that also used the word “Rise” for coffee, such as “Rise Up Coffee 1
Roasters” and “Rise Up Organic Coffee.” Plaintiff objected to the PTO’s 2
determination, arguing that the presence of multiple marks using the word 3
“Rise” indicated the mark’s weakness: “[M]any entities have used the word 4
‘Rise’ in relation to the Applicant’s goods, making it unlikely that consumers 5
would give significant weight to this term in ascertaining the source of such 6
goods.” App’x at 349. Plaintiff further elaborated, “The fact that there are 7
multiple Rise-formulated coffee marks owned by different registrants peacefully 8
coexisting without confusion shows that there is room for another Rise- 9
formulated mark….” Id. After Plaintiff modified its application to register “RISE 10
BREWING CO.” rather than “RISE COFFEE CO.,” the PTO agreed to register the 11
mark. 12
Now, having registered its trademark, Plaintiff argues that there is no such 13
room for multiple “Rise” marks to coexist peacefully, even outside the coffee 14
sector. That is not persuasive. If there was room for Plaintiff’s use of “Rise” in the 15
already crowded coffee field, there would also be room for Defendant’s, 16
especially on a product that is distinct from coffee.2 Trademark law does not 17
2 The district court discounted the weight of the statements Plaintiff made to the PTO on the basis that
“courts do not bind parties to their statements made or positions taken in ex parte application

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offer robust protection to those who demand the exclusive right to use words 1
that describe or suggest a product or its virtues. Given the inherent weakness of 2
“Rise” for coffee, the first factor does not favor Plaintiff. 3
Finally, as a factor supporting acquired strength in Plaintiff’s mark, the 4
district court noted that Plaintiff “ha[d] invested more than $17.5 million in 5
promoting its ‘RISE’ marks.” RiseandShine, 2021 WL 5173862, at *7. The holders of 6
senior marks that are not inherently strong but have achieved a measure of 7
consumer recognition through longevity of use or through publicity often 8
reasonably point to that acquired public recognition as fostering a likelihood that 9
customers will believe, to the senior user’s detriment, that a product sold by an 10
allegedly infringing junior user under a similar mark came from the plaintiff. 11
Defendant argues, however, that where a plaintiff claims it will be the victim of 12
reverse confusion—in that consumers will believe that its product comes from 13
the junior user—a plaintiff’s showing of acquired strength of its mark does not 14
support its claim. 15
proceedings in front of the PTO.” RiseandShine, 2021 WL 5173862, at *7 (quoting Alpha Media Grp., Inc. v.
Corad Healthcare, Inc., No. 13 Civ. 5438, 2013 WL 5912227, at *3 (S.D.N.Y. Nov. 4, 2013)). In our view the
question is not whether Plaintiff is bound by its previous position. If the RISE mark for coffee was
sufficiently weak for the PTO to allow Plaintiff to enter as a new user in spite of numerous prior users, it
is also sufficiently weak to now allow Defendant as still another user.

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We see some merit in Defendant’s argument. Just as, in cases of forward 1
confusion, increased consumer awareness of a plaintiff as the source of the 2
plaintiff’s products bearing its mark tends to increase the likelihood that 3
consumers will believe that another product bearing a confusingly similar mark 4
also comes from the plaintiff, in cases of reverse confusion that same consumer 5
awareness of a plaintiff as the source of its products bearing its mark tends to 6
diminish the likelihood that consumers, on seeing another product bearing a 7
similar mark, will believe that the plaintiff’s products come from the source of 8
the other product. On the other hand, where, as here, the junior user is a much 9
larger company, consumers might believe that the senior user’s success in 10
promoting its brand had led the larger junior user to acquire the senior. 11
We are aware of no court decisions on the question, and we need not 12
resolve it for this case. Notwithstanding Plaintiff’s expenditure of $17.5 million in 13
publicity, Plaintiff has not shown that its RISE mark has achieved sufficient 14
acquired strength to counterbalance the inherent weakness of its mark. 15
Although we “generally do not treat any one Polaroid factor as dispositive 16
in the likelihood of confusion inquiry,” Nabisco, Inc. v. Warner-Lambert Co., 220 17
F.3d 43, 46 (2d Cir. 2000), “the evaluation of the Polaroid factors is not a 18

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mechanical process where the party with the greatest number of factors 1
weighing in its favor wins,” Paddington Corp. v. Attiki Importers & Distributors, 2
Inc., 996 F.2d 577, 584 (2d Cir. 1993) (internal quotation marks omitted). Weak 3
marks are entitled to only an “extremely narrow scope” of protection, “unless a 4
convincing combination of other Polaroid factors militates strongly in favor of 5
likelihood of confusion.” Plus Prod., 722 F.2d at 1006 (2d Cir. 1983). No such 6
circumstances exist here. 7
B. Similarity of the Marks 8
The district court further found that the general appearance of Defendant’s 9
mark and trade dress on its canned energy drink was “confusingly similar” to 10
Plaintiff’s cans. RiseandShine, 2021 WL 5173862, at *8. We believe that finding was 11
clear error. The district court noted that, on both of the parties’ products, the 12
word “RISE” was printed in “large typeface, in all-capital letters, in a bright color 13
against a light background and [was] the dominant feature occupying the top 14
third of the can.” Id. While these observations are accurate, they are so general 15
that they likely also describe many other products in the canned beverage 16
market. 17

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RiseandShine Corporation v. PepsiCo, Inc.
22
The only notable similarity is the shared use of the term “Rise” in large 1
bold letters. However, as explained above, the word “Rise” in this context is not 2
distinctive. Therefore, without more striking visual similarities, the shared use of 3
this ordinary word, used to signify a virtue of the product, is not enough to 4
render the two products “confusingly similar.” See, e.g., Nabisco, 220 F.3d at 47 5
(holding that the shared use of the word “Ice” was unlikely to cause confusion 6
given the differences in the overall appearance of the products). Nor is there 7
anything distinctive about the use of large bold letters to present a drink’s brand 8
name. 9
Comparing the two products, the differences appear far more notable than 10
the similarities. The two cans are different in size, proportion, style, color, and 11
artwork. Even the word “RISE” is presented in very different manners. On 12
Plaintiff’s can, it appears in a simple sans-serif font—its “R” and “S” evenly 13
curved. Defendant’s can, in contrast, uses an angular and jagged font. 14
Furthermore, while “RISE” on Plaintiff’s can is written on a horizontal line, the 15
letters on Defendant’s can are arranged in an arc. 16
Beyond the presentations of the shared word, the overall appearances of 17
the cans are very dissimilar. Plaintiff’s seven-ounce can is less than half the size 18

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21-2786
RiseandShine Corporation v. PepsiCo, Inc.
23
of Defendant’s sixteen-ounce can. Plaintiff’s can features warm or neutral colors, 1
in stark contrast to the bright, bold colors of Defendant’s cans. The word “RISE” 2
on Defendant’s can is partially covered at the top by Defendant’s prominently 3
displayed house mark, “MTN DEW.” And perhaps most plainly, while the lower 4
half of Plaintiff’s can shows simple, regular, white writing against a calm, 5
uniform background, the lower half of Defendant’s can depicts a large, stylized 6
lion’s head, composed of jagged shards that complement the can’s angular font. 7
There is little about the appearance of the two cans that would suggest to a 8
consumer that they come from the same source. 9
The district court granted Plaintiff a preliminary injunction based in part 10
on the conclusion that Plaintiff was likely to succeed on the merits. This rested in 11
substantial part on the court’s conclusion that Plaintiff’s mark was strong—both 12
in inherent and acquired strength—as well as its determination that the two 13
products were “confusingly similar.” To the extent that Defendant’s use of its 14
marks caused any likelihood of confusion, this was because Plaintiff chose a 15
weak mark in a crowded field. For this reason, the balance of hardships did not 16
favor Plaintiff. Plaintiff did not demonstrate a likelihood of success on the merits, 17
and we must overturn the grant of the preliminary injunction. 18

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21-2786
RiseandShine Corporation v. PepsiCo, Inc.
24
1
CONCLUSION 2
For the foregoing reasons, the grant of the preliminary injunction is 3
VACATED. 4

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