In a complaint* filed in Illinois, Talking Rain accuses Klarbrunn Inc of trademark infringement, false designation of origin, and unfair competition, and alleges that Klarbrunn has “mimicked Talking Rain’s federally registered, incontestable trademarks ICE and SPARKLING ICE.”
According to Talking Rain, confusion arising from similarities between the names, packaging designs, product colors and flavors, and retail display cases, is adversely impacting its sales, and is destroying “goodwill that Talking Rain has spent years cultivating in its Sparkling Ice brand,” adds the lawsuit.
“There is a high likelihood that consumers will mistakenly believe that Klarbrunn’s ICE product is actually the SPARKLING ICE product or mistakenly believe that Klarbrunn’s product comes from, is sponsored or licensed by, or is associated or affiliated with, Talking Rain, the maker of SPARKLING ICE beverages.”
While Klarbrunn has registered the mark KLARBRUNN VITA ICE, adds the complaint, “Its ICE products do not prominently feature KLARBRUNN and VITA. Rather, Klarbrunn effectively uses ICE as a stand-alone mark.”
Talking Rain has sent multiple letters to Klarbrunn “since at least 2013, when Talking Rain notified Klarbrunn of its infringing conduct,” adds the lawsuit, which argues that Talking Rain is entitled to injunctive relief, recovery of Klarbrunn’s profits, actual damages, enhanced profits, damages, costs, and attorneys’ fees.
This is not the first time that Talking Rain has taken legal action alleging infringement of its trademarks; in 2015 it sued DS Services of America Inc - alleging that its Sparkletts Ice product was "virtually indistinguishable" from Sparkling Ice - with that case due to go to trial in March 2017.
Attorney: 'These cases, if they go that far, become a battle of the experts'
So what do legal experts make of the lawsuit?
Joel Rothman, a partner at Schneider Rothman Intellectual Property Law Group (which is not involved with this case), told FoodNavigator-USA that the factors courts use to decide such cases are often referred to as the 'Polaroid factors' because they come from a case involving the Polaroid company (Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961):
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one another;
(4) evidence that the senior user may 'bridge the gap' by developing a product for sale in the market of the alleged infringer’s product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.
He added: "Sparkling Ice does a great job tailoring its allegations in the complaint to these factors. You can go down paragraph by paragraph and find allegations that speak to each factor above (except #4 which does not apply).
"These cases, if they go that far, become a 'battle of the experts,' with each side offering a financial or economic expert to testify as to their point of view with the judge or jury deciding which expert they believe."
How distinctive is the word 'ice'?
Kevin Bell, principal at law firm Porzio, Bromberg & Newman PC, told FoodNavigator-USA: "Talking Rain may have a reasonable argument against Klarbrunn. The 'ICE' and 'SPARKLING ICE' trademarks have been used since the early 1990’s and Talking Rain alleges they are reasonably well-known. Klarbrunn may run into problems given the trade dress and packaging they have chosen and the emphasis on the word 'ice' as a separate part of their labeling."
He added: "Where Talking Rain may run into issues surrounds the question of whether the word 'ice' is distinctive enough to identify the source of the goods in the beverage industry. There are many other companies that use the term 'ice' for non-alcoholic beverages.
"Several companies also have registrations that include the word 'ice' for various types of beverages showing that the field is crowded with similar marks. Additionally, anyone making 'ice tea' is allowed the term as well to describe their product. This will be an argument most-likely raised by Klarbrunn in its response to Talking Rain's allegations."
As for loss of good will and damages, he said: "Experts will be needed on both sides to show what percentage of sales/profits are likely to have resulted from confusing names and/or packaging. Moreover, Talking Rain admits that it first notified Klarbrunn of its alleged infringement as early as 2013, but has not pursued a legal remedy until 2016. This will certainly be a strong defense [against] Talking Rain's demand for a preliminary injunction and could also weaken its damages argument.
"Attacking the strength of Talking Rain's marks, defending against the 'likelihood of confusion' allegations and arguing the delay in time in pursuing action for the alleged infringement will most-likely be Klarbrunn's strongest defenses."
Klarbrunn has not responded to requests for comment.
*The case is Talking Rain Beverage Company, Inc. v. Klarbrunn, Inc, 1:16-cv-05084 filed in the northern district of Illinois, eastern division.