MUSCLE POWER for Protein Drink Infringed MUSCLE MILK

by Thomas Long, Legal Editor, CCH Trademark Law Guide

   A nutritional and dietary supplement manufacturer was entitled to a preliminary injunction barring a competitor from marketing, selling, advertising, or promoting a liquid protein-based nutritional supplement using the name MUSCLE POWER or any other trademark that was confusingly similar to the complaining supplement maker's MUSCLE MILK trademark, the federal district court in Sacramento has ruled. The competitor was also enjoined from using trade dress that was confusingly similar to the trade dress associated with the MUSCLE MILK product.

Likelihood of Confusion

   The similarity between the MUSCLE MILK trademark and the MUSCLE POWER trademark weighed heavily in favor of a determination that confusion between the marks was likely. Both marks conveyed a similar commercial connotation, the court said.

   It was not pertinent to the likelihood of confusion inquiry that the complaining supplement maker had been required by the Patent and Trademark Office to disclaim the term "muscle" for one of its registration applications for the MUSCLE MILK mark. A disclaimed component of a registered mark is still part of the mark, and the mark must be considered in its entirety, according to the court. Moreover, the specific registration that pertained to the ready-to-drink supplement product at issue did not have a disclaimer.

   The similarities between the marks were accentuated by the competitor's near-identical incorporation of the complaining supplement maker's trade dress into its own product, including the arrangement of design elements on the label; the use of bold, white, block lettering for the word MUSCLE on a dark background; the depiction of a swirled liquid with a color that indicated the flavor of the product; and the shape of the packaging.

   The MUSCLE MILK trademark was suggestive and, therefore, inherently distinctive, the court said. MUSCLE MILK did not describe a quality or characteristic of the underlying liquid-protein supplement product. The product was not "milk" as that term is used in the dairy industry; the product was, in fact, lactose-free. The term "muscle" was used in such a variety of ways that a consumer would not automatically conclude that the product was a nutritional product. The mark required imagination on the part of the consumer to guess the underlying goods associated with the mark. Therefore, the mark was conceptually strong.

   There was evidence that the competitor intentionally adopted the MUSCLE POWER mark because of its similarity to the supplement maker's MUSCLE MILK trademark. In addition, there was evidence of actual confusion. Customers who had purchased the competitor's product had made complaints to the complaining supplement maker. Beverage distributors and retail store owners had expressed confusion as to the source of the MUSCLE POWER product. A consumer survey found that approximately 52 percent of survey respondents thought the products were made by the same company or were made by affiliated companies.

Preliminary Injunction

   The complaining supplement maker would be irreparably harmed in the absence of injunctive relief because the competitor's infringement would prevent the supplement maker from controlling the reputation of its highly recognizable and valuable MUSCLE MILK brand. It would be extremely difficult for the supplement maker to maintain and restore goodwill among consumers if the competitor's products were allowed to remain on the market. Some consumers had already been confused by the competitor's infringing mark and trade dress.

   Harm to the complaining supplement maker would be more substantial to that sustained by the competitor as a result of having to pull and dispose of current inventory and to seek FDA approval for new product labeling. There was a strong public interest in preventing confusion, the court said.

Cytosport, Inc., ED Cal., ¶61,441; ¶61,442.

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