9th Circuit upholds ruling in favor of Jim Beam over lipstick trademark against Johnny Love Vodka

We covered the lipstick trademark oral arguments back in January – you can read about them here. Briefly, Johnny Love Vodka maker JL Beverage Co. sued Jim Beam over the “Pucker” flavor vodkas where both used lipstick kiss marks on their vodka based alcoholic beverages. Jim Beam beat the suit and received a determination that the marks were different enough that they did not infringe on the Johnny Love mark. Johnny Love appealed raising several issues – most importantly, the district court’s determination as to the likelihood of consumer confusion.

The 9th Circuit opinion maintains the win that Jim Beam received at the district court level. Holding that the marks must be considered in their entirety as they appear in the marketplace, the Court delineates a series of distinctions between the two bottles and the companies’ use ranging from color to location of the marks to the shape of the bottles – basically, a reiteration and good case to point to (if it were not unpublished) showing that the totality of circumstances in an alleged infringement action doesn’t end at placement/color but – when creatively argued – extends to everything about the presentation of the mark.

Another interesting point from this vodka trademark infringement action involves the notion of assuming intent in the context of a forward confusion / reverse confusion claim. The 9th Circuit upheld the point of law that simple knowledge of another’s mark is not enough to show the type of intent required to meet the standards under those causes of action and found that more would be required to create an inference of bad faith – including that the marks be found similar. 

I’m guessing this case isn’t going any further.