Intellectual Property Law

Ninth Circuit Reverses Dismissal of Jarritos' Trademark Infringement Claim

By Michael Atkins

Mexican soda maker Jarritos, Inc., sued the owners of San Francisco’s Los Jarritos restaurant for trademark infringement. 

As STL readers may recall, the Northern District of California dismissed the plaintiff’s claims on summary judgment in 2007. The court found “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff's favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.'” 

Jarritos appealed, and on Aug. 14, the Ninth Circuit reversed. In summary, it found the district court failed to analyze all of the Sleekcraft factors and give the benefit of the doubt to Los Jarritos as the nonmoving party. 

“Among the factors identified in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) to guide the likelihood-of-confusion analysis, similarity of the marks is a ‘critical question.’ The district court erred in concluding that, considering the other words on the Restaurant’s sign and possibly different colors used for the logo, the court ‘cannot say the two marks are similar’. The Restaurant had conceded the similarity of the marks (and acknowledged that concession in the argument before us), so the court erred by treating similarity as a disputed issue. In any event, as the Restaurant’s concession indicated, a reasonable jury could certainly find the marks similar, given the similarity in name and logo; similarity, not identity, is required for this Sleekcraft factor.

“The district court also erred in its analysis of the relatedness of Jarritos’ and the Restaurant’s goods and services. The proximity or relatedness of the parties’ goods matters ‘because the more closely related the goods are, the more likely consumers will be confused by similar marks.’ In considering whether goods are related, we look to whether the goods are complementary, whether they are offered to similar customers, and whether they are similar in use and function. The record indicates that Jarritos sodas were sold at the Restaurant, so it is clear that the parties’ ‘products are sold to the same class of purchasers.’ As the court was obligated to draw inferences in favor of Jarritos, the nonmoving party, it was error to conclude that the relatedness factor did not weigh against summary judgment.

“The district court also erred in concluding that Jarritos ‘does not point to any evidence to demonstrate the strength of its mark.’ Jarritos produced the cover of a magazine entitled ‘Mexico’s Greatest Brands’ that prominently portrayed Jarritos’s logo on the cover. The Jane Magazine excerpt also suggests public recognition of the brand.”

The case cite is Jarritos, Inc. v. Reyes, 2009 WL 2487066, No. 07-16083 (9th Cir. Aug. 14, 2009).

Full post as published by Seattle Trademark Lawyer on August 20, 2009 (boomark / email).