{"id":111948,"date":"2019-08-07T07:15:23","date_gmt":"2019-08-07T11:15:23","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=111948"},"modified":"2019-08-06T18:13:42","modified_gmt":"2019-08-06T22:13:42","slug":"seventh-circuit-finds-gatorades-use-sports-fuel-slogan-constitutes-fair-use","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2019\/08\/07\/seventh-circuit-finds-gatorades-use-sports-fuel-slogan-constitutes-fair-use\/id=111948\/","title":{"rendered":"Seventh Circuit Finds Gatorade\u2019s Use of \u2018Sports Fuel\u2019 in Its Slogan Constitutes Fair Use"},"content":{"rendered":"

\u201cThe court found that Gatorade provided sufficient evidence of industry-wide use of the term \u2018sports fuel\u2019 to describe nutritional products. Gatorade\u2019s disclaimer of \u2018The Sports Fuel Company\u2019 from its trademark registration further supported the court\u2019s finding of fair use.\u201d<\/p>\n<\/div>\n

\"Gatorade<\/a>The United States Court of Appeals for the Seventh Circuit last week ruled<\/a> that well-known sports drink maker Gatorade’s use of the slogan, \u201c\u201cGatorade The Sports Fuel Company\u201d beginning in 2016 amounted to\u00a0 fair use under the Lanham Act and therefore did not violate SportFuel Inc.’s trademark rights.<\/p>\n

Fueling Up For a Fight<\/strong><\/h2>\n

SportFuel is a nutrition and wellness consulting company based in Chicago that holds two registered trademarks for \u201cSportFuel.\u201d Around 2013, Gatorade, a subsidiary of PepsiCo., began a rebranding effort that included public descriptions of its products as \u201csports fuels\u201d. Gatorade registered a trademark for \u201cGatorade The Sports Fuel Company\u201d in 2016 but disclaimed \u201cThe Sports Fuel Company\u201d due to the U.S. Patent and Trademark Office\u2019s (USPTO\u2019s) notice that the phrase was descriptive of its products. However, the company continued to use the slogan.<\/p>\n

SportFuel first sued Gatorade in August 2016, alleging trademark infringement and unfair competition under both the Lanham Act and Illinois law, and false designation of origin under the Lanham Act. Gatorade in part moved for summary judgment on the grounds that SportFuel had failed to provide evidence that allowed a jury to find a likelihood of confusion and that Gatorade\u2019s use of \u201cSports Fuel\u201d was a fair use under the Lanham Act.<\/p>\n

Finding Fair Use<\/strong><\/h2>\n

To raise the fair use defense successfully, Gatorade had to show that: (1) it did not use \u201cSports Fuel\u201d as a trademark, (2) the use was descriptive of its goods, and (3) it used the mark fairly and in good faith. The district court determined that Gatorade met all three prongs, and SportFuel appealed to the Seventh Circuit.<\/p>\n

In affirming the district court\u2019s grant of summary judgment for Gatorade, the Seventh Circuit pointed to the visual aids pictured below, explaining that Gatorade\u2019s use of the term \u201cSports Fuel\u201d was not as a source indicator. The decision, authored by Circuit Judge Michael Stephen Kanne, said:<\/p>\n

The products\u2019 individual packaging and displays feature Gatorade\u2019s house mark and G Bolt logo more prominently. Gatorade rarely uses the term \u201cSports Fuel\u201d directly on product packaging, except for where the company labeled a \u201cSports Fuel Drink\u201d with the term. Instead, it primarily features the slogan on in-store displays and other advertisements\u2014appearing almost as a subtitle to the housemark.<\/p><\/blockquote>\n

\"Gatorade

Visual aids used in the Seventh Circuit opinion.<\/p><\/div>\n

On the second fair use prong, the Seventh Circuit agreed with the district court that Gatorade\u2019s use of the slogan in question was descriptive, rather than suggestive. The court found that Gatorade provided sufficient evidence of industry-wide use of the term \u201csports fuel\u201d to describe nutritional products. \u00a0Gatorade\u2019s disclaimer of \u201cThe Sports Fuel Company\u201d from its trademark registration further supported the court\u2019s finding. \u201cThe fair use defense is available against even incontestable trademarks,\u201d said the court, further noting that the defense allows for use of otherwise trademarked language in a descriptive sense.<\/p>\n

Bad Faith Arguments Rejected<\/strong><\/h2>\n

Finally, the court was not convinced by SportFuel\u2019s arguments that Gatorade was using the \u201cSports Fuel\u201d slogan in bad faith. SportFuel claimed that factors including a disgruntled \u00a0employee the two companies had in common, a lack of evidence on Gatorade\u2019s part relating to its reasons for adopting the slogan, and evidence SportFuel claimed proved that Gatorade considered the slogan a trademark weighed in favor of a finding that Gatorade had acted in bad faith.<\/p>\n

The court disagreed on all points and maintained that Gatorade\u2019s use was merely descriptive, in good faith, and thus a fair use. \u201cGatorade\u2019s stated purpose in adopting the challenged slogan was to help the company better describe its business and the products it sells,\u201d concluded the court, adding:<\/p>\n

Gatorade produced evidence demonstrating that the company and its employees view themselves as producers of sports fuels. Moreover, Gatorade both specifically disclaimed exclusive use of the phrase \u201cThe Sports Fuel Company\u201d and prominently used its house mark and G Bolt logo in a manner distinct from the slogan.<\/p><\/blockquote>\n

PepsiCo was represented by Katten Intellectual Property partner Floyd Mandell<\/a> and associate Julia Mazur<\/a>.<\/p>\n

Image Source: Deposit Photos
\nPhotography ID: 54498203
\nCopyright: pixindy\u00a0<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

The United States Court of Appeals for the Seventh Circuit last week ruled that well-known sports drink maker Gatorade’s use of the slogan, \u201c\u201cGatorade The Sports Fuel Company\u201d beginning in 2016 amounted to\u00a0 fair use under the Lanham Act and therefore did not violate SportFuel Inc.’s trademark rights. SportFuel is a nutrition and wellness consulting company based in Chicago that holds two registered trademarks for \u201cSportFuel.\u201d Around 2013, Gatorade, a subsidiary of PepsiCo., began a rebranding effort that included public descriptions of its products as \u201csports fuels\u201d. Gatorade registered a trademark for \u201cGatorade The Sports Fuel Company\u201d in 2016 but disclaimed \u201cThe Sports Fuel Company\u201d due to the U.S. Patent and Trademark Office\u2019s (USPTO\u2019s) notice that the phrase was descriptive of its products. However, the company continued to use the slogan.<\/p>\n","protected":false},"author":76815,"featured_media":111950,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":"","_links_to":"","_links_to_target":""},"categories":[117,10539,7202,7203,228,3,38597,191],"tags":[353,51847,49,8454,292,14369,11209,51848,12,2309,51849,8727],"yst_prominent_words":[51841,51842,51835,51839,51836,51834,51840,51846,51831,51843,51832,51838,51837,51826,51827,51845,51830,51844,51828,51829],"acf":[],"_links":{"self":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/111948"}],"collection":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/users\/76815"}],"replies":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/comments?post=111948"}],"version-history":[{"count":0,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/111948\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media\/111950"}],"wp:attachment":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media?parent=111948"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/categories?post=111948"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/tags?post=111948"},{"taxonomy":"yst_prominent_words","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/yst_prominent_words?post=111948"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}