In RiseandShine Corporation v. PepsiCo, Inc., No. 24-1016, the United States Supreme Court will decide a circuit split over whether the inherent strength of a trademark is a question of fact for a jury or a question of law for a judge. However, the Court's answer may have a narrower practical effect than the question suggests.
Inherent strength (i.e., where a mark falls on the spectrum of distinctiveness) is one component of one likelihood of confusion factor, and is not often the case-dispositive determination, especially compared to similarity of the marks and similarity of the goods and services. Obtaining a determination that a mark is highly distinctive nonetheless has value, as stronger marks generally receive a broader scope of protection.
The issue is also relevant in reverse-confusion cases. Although some circuits modify the strength analysis in that context to account for the junior user’s greater commercial strength, the inherent strength of the senior user’s mark remains important. Ultimately, regardless of how the Court rules, the summary judgment standard remains the same, and courts will continue to evaluate likelihood of confusion based on the record as a whole. But what the Court says about inherent strength, and not only whether it labels the inquiry as factual or legal, may have consequences beyond the question presented.
A cold brew, an energy drink, and a circuit split
Rise Brewing sells canned nitro-brewed coffee nationwide under registered RISE marks. In 2021, PepsiCo launched MTN DEW RISE ENERGY, a caffeinated energy drink that also featured the word RISE prominently on its cans. Rise Brewing sued for trademark infringement in the Southern District of New York, alleging a likelihood of consumer confusion.
The district court granted a preliminary injunction after applying the Second Circuit’s eight-factor Polaroid test from Polaroid Corp. v. Polarad Electronics Corp., finding the RISE marks suggestive and inherently distinctive, with strength, similarity, product proximity, and actual consumer confusion all favoring Rise Brewing.
The Second Circuit vacated the injunction in 2022, holding that the district court committed “legal error” by failing to recognize the inherent weakness of the RISE marks. Reviewing the issue de novo, the Second Circuit concluded that RISE had “strong logical associations” with coffee and therefore was conceptually weak as a matter of law. On remand, and after further proceedings, the district court treated that determination as binding, ultimately entered summary judgment for PepsiCo, and the Second Circuit affirmed.
Question of fact or law: Key implications
The Court will decide whether a trademark’s inherent strength is a question of fact or of law in a likelihood-of-confusion analysis under 15 U.S.C. § 1114. Trademark strength is one factor in that analysis and has two components:
- Conceptual (or inherent) strength: Reflects where a mark falls on the distinctiveness spectrum
- Commercial (or acquired) strength: Reflects a mark’s recognition in the marketplace
The parties generally agree that commercial strength presents a factual inquiry. The dispute before the Court concerns inherent strength. The Second Circuit treats that inquiry as a question of law, in contrast to decisions from other circuits that treat it as a question of fact.
The distinction can have consequences beyond who ultimately decides the issue. Although findings made in preliminary injunction proceedings do not ordinarily bind the Court at later stages, on remand the district court treated the Second Circuit’s determination that RISE was inherently weak as binding because the appellate court characterized it as a conclusion of law.
The arguments and the amicus landscape
In its merits brief, Rise Brewing relies on Hana Financial, Inc. v. Hana Bank, where the Court held that a trademark inquiry operating “from the perspective of an ordinary purchaser or consumer” falls “comfortably within the ken of a jury,” and on United States Patent and Trademark Office v. Booking.com B.V., where the Court held that a mark’s character “depends on whether consumers in fact perceive” it as distinctive. In its brief opposing certiorari, PepsiCo argued that the Second Circuit treats the initial classification of a mark as factual and that the disagreement concerns the further analysis of how much strength a suggestive mark commands, which PepsiCo characterized as involving a “legal element.”
The amici divide over the characterization of the inquiry. The Office of the Solicitor General describes inherent strength as a mixed question in which the factual component predominates. The American Intellectual Property Law Association supports treating inherent strength as a factual matter. At the same time, the International Trademark Association argues that mark strength should be decided by the jury when the record does not permit resolution as a matter of law. By contrast, a group of trademark scholars argues that the inquiry is not purely one of adjudicative fact, because aspects of the multifactor analysis involve normative judgments. The Intellectual Property Owners Association contends that the legal component predominates.
Practical takeaways
The case raises several practical considerations, including:
- The continued availability of summary judgment. Treating inherent strength as a factual question does not mean that every dispute over a mark’s inherent strength must be tried by a jury. Rise Brewing acknowledges that summary judgment remains appropriate where no reasonable jury could reach a different conclusion on the record. The Office of the Solicitor General emphasizes that characterizing inherent strength as predominantly factual does not prevent a court from resolving the likelihood of confusion as a matter of law where no genuine dispute of material fact requires trial.
Inherent strength does not operate in isolation. It is one component of the strength factor, which is one part of the multifactor likelihood-of-confusion analysis. A factual dispute over inherent strength will not necessarily be material to the ultimate confusion determination. Depending on the record, other factors, including the similarity of the marks and the relatedness of the parties’ goods or services, may permit a court to resolve likelihood of confusion without a trial even where inherent strength is disputed.
- Survey evidence may gain traction as a means to gauge inherent strength. A ruling that inherent strength is factual may affect how parties develop the record. Survey evidence may gain traction as a means to gauging inherent strength, as litigants place greater emphasis on evidence bearing on what the mark conveys to consumers and about the product or service. However, evidence of marketplace recognition traditionally bears on acquired or commercial strength, a separate component of the strength inquiry. A decision treating inherent strength as factual may not necessarily make surveys, experts, or extensive consumer-perception discovery necessary in every trademark case. Parties may focus more closely on what evidence bears on inherent strength and whether the record presents a genuine dispute of material fact for trial.
- The significance of the Court’s reasoning beyond the holding. The Court could resolve the question presented without altering the broader likelihood-of-confusion framework. Still, its reasoning could provide guidance on the role of inherent strength within that analysis, including in reverse-confusion cases such as RiseandShine, where some circuits modify the traditional strength analysis. The Court also could address more broadly which aspects of the confusion factors are factual, legal, or mixed.
Conclusion
Regardless of the outcome, the Court’s decision may have a more limited practical effect than the question presented suggests. Inherent strength remains one component of the multifactor likelihood-of-confusion analysis, and existing summary judgment principles continue to apply.
The decision’s broader significance may instead lie in what the Court says about the role of trademark strength – including in reverse-confusion cases – and the factual or legal nature of the likelihood-of-confusion inquiry more generally.
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