PepsiCo Enjoined from Using POLAR SHOCK Mark on Slushes

by Thomas Long, Legal Editor, CCH Trademark Law Guide

A soft drink bottler (Polar Corp.) that sold bottled water, soda, and other soft drinks under the brand POLAR was entitled to a preliminary injunction barring competitor PepsiCo from using a family of marks based on the phrase POLAR SHOCK in connection with a line of noncarbonated, nonalcoholic, frozen, flavored slush beverages, the federal district court in Boston has ruled. Polar Corp. owned federal registrations for the marks POLAR (stylized word mark), POLAR PURE, and POLAR (plus wave design); common-law rights to the term POLAR for soft drinks; and state trademark registrations for POLAR for soft drinks in 15 states.

Polar Corp. was likely to succeed on the merits of its claim that PepsiCo’s POLAR SHOCK marks would cause consumer confusion, the court said. PepsiCo did not dispute the similarity of the parties’ respective word marks. Although PepsiCo contended that the parties’ different logos distinguished the marks, the POLAR and POLAR SHOCK brand names were used to identify the parties’ products separately from their respective logos. PepiCo’s incorporation of the entire POLAR mark as the first word in its own mark rendered the marks confusingly similar, in the court’s view.

In addition, the parties’ logos were similar enough that a substantial number of consumers could reasonably believe that POLAR SHOCK was sponsored by or associated with the POLAR brand. Both logos used similar colors, shapes, and typefaces.

The parties’ products were sufficiently similar that consumers could reasonably believe that the products came from the same source, the court said. Although PepsiCo’s slush products were different in look and feel from Polar Corp.’s drinks, consumers could reasonably conclude that Polar Corp. also produced slush drinks along with its other soft drink products. The parties’ channels of trade –grocery stores, convenience stores, and entertainment venues –overlapped.

The likelihood that consumers will be confused as to the source or sponsorship of the POLAR SHOCK beverages provided a basis for a finding of irreparable harm in the absence of preliminary injunctive relief. Although PepsiCo asserted that an injunction would cause it to incur $1 million in rebranding costs, as well as substantial lost sales, the likely harm to Polar Corp. from loss of control over its brand outweighed the harm to PepsiCo, the court decided.

Polar Corp., D Mass., ¶61,802.