January 2004
(Issue No. 1: Decisions published Dec. 16-31)

Defendant's BACARDI O Rum Mark Does Not Infringe Plaintiff's GEORGI O Vodka Mark

Star Industries, Inc. v. Bacardi & Company Ltd. Corp., et al. (S.D.N.Y. Dec. 22, 2003) 2003 U.S. Dist. LEXIS 23411

Court Opinion

Case Snapshot:

Trademark Issues:	Trademark Infringement Design Marks
Case Overview:	Plaintiff claimed that Defendant's BACARDI O Rum mark infringes Plaintiff's GEORGI O Vodka mark.
Holding:	No trademark protection for "O" oval design: The "O" oval design element in Plaintiff's composite mark is not protectable as a separate stand-alone mark. No likelihood of confusion between the parties' composite marks: Defendant's BACARDI O mark does not infringe Plaintiff's GEORGI O mark.
The Dispute:	Plaintiff Defendant  It stretches credulity to believe that a sober consumer would go to a store, intending to purchase Georgi O vodka, and because of one graphic similarity on the label, purchase Bacardi's orange-flavored rum instead.   [p. 11] Plaintiff's mark: Plaintiff's GEORGI O mark for its orange flavored vodka is shown at right. The PTO rejected Plaintiff's application to register this composite mark on the basis that consumers would not recognize the oval that encircles the crest as the letter "O" in the "Georgi O" word mark, but rather a design element that simply surrounds the Georgi crest. The Examining Attorney concluded that consumers would read the word mark only as "Georgi", not "Georgi O". Defendants' BACARDI O marks: Defendant Bacardi's BACARDI O mark for its orange flavored rum is shown at right. Pursuant to a license agreement with Defendant Bacardi, Defendant Anheuser introduced an orange flavored malt beverage called Bacardi Silver O. The primary difference between the Bacardi "O" label on the rum bottle and the malt beverage bottle is that the latter product superscripts the number "3" after the "O."
Procedural Posture:	Bench trial
Ruling:	Judgment for defendant

Key Points:

Trademark Infringement

The "O" oval design element in Plaintiff's GEORGI O mark is not protectable as a separate trademark.

• The court initially determined that the "O" oval design element did not stand alone as a separate mark because:
  • It is part of the GEORGI O composite word + design mark, as it appears on Plaintiff's label.
  • Plaintiff has not attempted to promote or emphasize the "O" as a distinct and separate element, apart from the remainder of the GEORGI O label.

 [P]laintiff offers little evidence to demonstrate that its 'O' design would be recognized by ordinary consumers as a mark that is separate and distinct from the rest of the label. In view of the lack of evidence that Star has created a separate commercial impression in its 'O' design, I agree with defendants that plaintiff has failed to prove that its 'O' can alone function as a protectable mark.   [p. 8]

• The proper mark to compare to Defendant's mark is the composite GEORGI plus O design mark. The GEORGI word mark combined with the crest and the "O," together form a single unified design mark that must be analyzed in its entirety for infringement purposes.

Even if severed from the composite mark and considered separately, Plaintiff's "O" oval design would not be entitled to trademark protection.

• The court also found that even if it were considered as a separate mark, Plaintiff's "O" oval design would not be entitled to trademark protection, because:
  • Non-distinctive common geometric shape: The "O" oval design would be seen by consumers simply as a geometric shape, not a mark. Most common geometric shapes are regarded as not being inherently distinctive. The court rejected Defendant's argument that the orange border and gold outer trim of its "O" make it so distinctive as to negate the primary impression on consumers that the "O" is simply a geometric shape.
    • The court deferred to the PTO's refusal to register based on its determination that the "O" oval design would be seen by consumers simply as a geometric shape.
  • Letter "O" is descriptive: Even if seen as the letter "O" it would be descriptive of the orange flavoring of the vodka, requiring Plaintiff to prove secondary meaning.
• No proof of secondary meaning in "O" design:

 The evidence offered by the plaintiff to support a finding of secondary meaning fails to demonstrate that the public identifies its 'O' as indicative of the source.... Since Star has failed to prove that its asserted mark is valid, and therefore, a protectable mark, its Lanham Act claim must fail.   [pp. 27-28]

• Advertising and sales insufficient: No evidence was introduced to show that Plaintiff's advertising created a separate commercial impression made by the "O" design alone. Plaintiff did not begin consumer advertising until after Defendant introduced its BACARDI O rum. Plaintiff's sales figures were relatively small and did not support its claim that secondary meaning attached to its "O" mark before BACARDI O's 2001 release.
• No evidence of plagiarism: Although Bacardi's use of gold detailing in its "O" is on first blush suspicious, as it turns out, Bacardi had used similar detailing on its other flavored-vodkas, before the advent of the GEORGI O product.
• No evidence of bad faith based on Defendant's search and delay in filing trademark application:
  • Plaintiff's pending trademark application was not disclosed in the search report because the search company narrowed the search results, and thus, the failure to uncover Plaintiff's application does not appear to arise from the Defendant's bad faith effort to remain uninformed of the allegedly infringed mark.
  • Although the 9 month delay between Defendant's search and the filing of its trademark application "raises some concern, again, the delay, without more, is gossamer, and fails to demonstrate that the defendant acted in bad faith." [p. 26]
• Duration of use not substantial or exclusive:
  • Plaintiff began using the "O" mark in 1996, and thus has not used the mark for any substantial length of time.
  • Plaintiff's use of the "O" was not exclusive. Other orange flavored vodkas, like Stoli O, had been on the market before Plaintiff's and are identified with an O.

No likelihood of confusion: GEORGI O vodka mark vs. BACARDI O rum mark.

 While the 'O' on plaintiff's and defendants' products are similar, which increases the likelihood of confusion, the other elements of the label, where the products are displayed, and the fact that one is rum an the other vodka, sufficiently distinguish the products to prevent consumer confusion.   [pp. 9-10]

• In comparing the parties respective marks in their entireties, the court found no likelihood of confusion:
  • Despite the competitive proximity of the goods, the presence of the names GEORGI and BACARDI printed on the front of the bottles in large and clear lettering easily reduces any likelihood of confusion.
  • Consumers are sophisticated enough to distinguish between vodka and rum, and will not confuse the parties' respective vodka and rum products.
  • GEORGI O vodka and the BACARDI 0<3> malt beverage are not sold in the same stores in New York, where the vast majority of GEORGI O vodka is sold, because New York state law prohibits the retail sale of malt beverages and liquor in the same store.
  • Other brands of vodka used an "O" to indicate orange-flavor prior to Plaintiff.
  • Plaintiff did not present any confusion survey evidence. Defendants' surveys were flawed, but do add some weight to the evidence that actual confusion is absent.

Analysis

Bottom line: the presence of the parties' different word marks GEORGI and BACARDI minimizes likelihood of confusion, even though both composite marks have a similar design element.

• Simply because two composite marks have similar design elements, likelihood of confusion can often be avoided if the words in the marks are very different and the design element is a simple, common shape such as the "O" in this case.
• This is the core of the court's finding of no likelihood of confusion.

Critique of the likelihood of confusion analysis:

• The remainder of the court's likelihood of confusion analysis seems forced, and result-oriented. The true and correct basis for finding no likelihood of confusion seems to be the different appearance of the marks, discussed above. But the court seems to "shoe horn" the remaining likelihood of confusion factors into finding no likelihood of confusion. This was not necessary in light of the different appearance of the marks.
• First, even if vodka and malt beverages are not sold in the same stores in New York, they are still sold to the same consumers. If they are otherwise confused that the products come from the same source, it wouldn't matter that these products are sold in different stores because of state alcohol laws.
• Second, the fact that consumers would not confuse rum for vodka is besides the point. The question is whether consumers would consumers would think these highly related products come from the same source, not necessarily that consumers would confuse one product for the other.

"O no!" – "O" designs used in other alcoholic beverage marks.

• It seems that "O" designs are fairly commonly used in marks for alcoholic beverages. This was one of the factors that undercut the infringement claims in this case, which rested on both marks having an "O" design in common.
• For example, in addition to STOLI O vodka and the other third-party uses mentioned in the decision, consider the FOSTER'S beer label below: