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CytoSport, Inc. v. Vital Pharmaceuticals

May 6, 2009

CYTOSPORT, INC. PLAINTIFF,
v.
VITAL PHARMACEUTICALS, INC., DEFENDANT.



The opinion of the court was delivered by: Frank C. Damrell, Jr. United States District Judge

MEMORANDUM AND ORDER

Plaintiff CytoSport, Inc. ("plaintiff" or "CS") brings this action against Vital Pharmaceuticals, Inc. ("defendant" or "VPX") for trademark and trade dress infringement, unfair competition and false advertising under federal and state law. (Second Am. Compl., filed Mar. 19, 2009.) This matter is before the court on plaintiff's motion for preliminary injunction, enjoining VPX from marketing, selling, advertising or promoting a liquid protein-based nutritional supplement using the name MUSCLE POWER(r) or any other trademark confusingly similar to plaintiff's MUSCLE MILK(r) trademark. Plaintiff also seeks to enjoin VPX, in conjunction with these activities, from using a trade dress that is confusingly similar to the trade dress associated with MUSCLE MILK. VPX opposes the motion, arguing its registered MUSCLE POWER(r) trademark does not infringe plaintiff's MUSCLE MILK(r) trademark, which is a weak, descriptive mark, and VPX's MUSCLE POWER trade dress does not infringe plaintiff's MUSCLE MILK trade dress since the two trade dresses have numerous, specific differences in both color and layout, and VPX has been using its dress trade consistently across all its product lines for almost ten years.

The court heard oral argument on the motion on May 1, 2009. By this order, it now renders its decision on the motion. For the reasons set forth below, plaintiff's motion for preliminary injunction is GRANTED. Plaintiff has demonstrated a reasonable likelihood of success in demonstrating that defendant's use of its MUSCLE POWER(r) trademark and trade dress infringes plaintiff's MUSCLE MILK(r) trademark and trade dress, that plaintiff is likely to sustain irreparable harm to its reputation and customer goodwill absent preliminary relief, the balance of equities tips in plaintiff's favor in light of its longstanding reputation in the community and use of the MUSCLE MILK(r) trademark, and the public is served by issuance of the requested injunction which seeks to avoid customer confusion in the marketplace and permits plaintiff to control its products' reputation.

BACKGROUND

This is a trademark and trade dress infringement action in which plaintiff seeks to enjoin defendant from further marketing and selling a nutritional supplement beverage due to defendant's alleged infringement of plaintiff's trademark and trade dress. Plaintiff is in the business of manufacturing and marketing various nutritional and dietary supplement products. (Pl.'s Mem. of P. & A. in Supp. of PI Motion ["PI"], filed March 2, 2009, ¶ 1; Declaration of Roberta White ["White Decl."], filed March 13, 2009, ¶ 4.) In addition to a powdered nutritional supplement designed to be mixed in beverages, plaintiff offers a premixed, ready-to-drink ("RTD") liquid protein product sold in connection with the MUSCLE MILK(r) trademark. (PI, ¶ 2.) Plaintiff distributes its MUSCLE MILK(r) products through specialty health and nutrition stores, grocery chains, convenience stores, and warehouse outlet stores, and plaintiff maintains its RTD nutritional product is the best-selling RTD nutritional beverage on the market. (Id. at ¶¶ 3-4; White Decl., ¶ 7.) Plaintiff holds three trademark rights to the mark MUSCLE MILK(r), including (1) use of the mark in connection with "powdered nutritional supplement[s] containing milk derived ingredients for adding to food and drink," (2) use of the mark in connection with "meal replacement drinks; meal replacement and dietary supplement drink mixes; protein based, nutrient-dense meal replacement bars; and pre-mixed nutritionally fortified beverages," and (3) use of the mark in connection with "nutritional supplements." (PI, ¶¶ 5-7.)

Defendant was founded over fifteen years ago and is also in the business of manufacturing and marketing various nutritional and dietary supplement products. (Declaration of John Owoc ["Owoc Decl."], filed under seal April 16, 2009, ¶ 3.) Similar to many companies in the nutritional supplement market, defendant produces and sells an RTD nutritional product. (Id. at ¶¶ 4-5.) Both plaintiff's and defendant's products are sold in liquid form, are used as nutritional supplements, and promote themselves as lactose free and capable of producing lean muscle. (PI, ¶¶ 25-26.) Defendant asserts it designed its RTD product as the most nutritious on the market and has gone to great lengths to distinguish its formula from that of its competitors. (Owoc Decl., ¶¶ 6-7.)

Defendant designated its RTD nutritional product MUSCLE POWER, which was approved and registered in December 2008 without objection by the Patent and Trademark Office ("PTO") and without opposition by third parties. (Id. at ¶ 9.) Defendant had to disclaim any rights to the word "Muscle," as defendant asserts there are currently forty-two nutritional supplement products, as well as eleven nutritional supplement companies, that employ the word "Muscle" in their name. (Id. at ¶ 10.)

Since at least November 2004, plaintiff's RTD nutritional product has been sold in packaging manufactured and designed by Tetra Pak in an octagonal shape. (PI, ¶ 8.) Its Tetra Pak RTD nutritional product is generally sold in seventeen fluid ounce servings and retails from between $3.00 and $5.00. (Id.) Plaintiff's RTD nutritional product is also sold in an hourglass-shaped plastic bottle in fourteen fluid ounce servings and retails from between $3.00 and $5.00. (Id. at ¶ 9.)

Plaintiff has used a consistent look and feel in the promotion and sale of all of its MUSCLE MILK(r) products, including its MUSCLE MILK(r) RTD nutritional product, MUSCLE MILK(r) powder, MUSCLE MILK(r) Light, MUSCLE MILK(r) Pudding, and MUSCLE MILK(r) Bars, which plaintiff asserts has resulted in significant trade dress rights associated with the MUSCLE MILK(r) mark. (Id. at ¶ 10; White Decl., ¶ 14.) As a result of its consistent and exclusive use of its trade dress for MUSCLE MILK(r) products, plaintiff contends its customers have come to recognize plaintiff's trade dress as a source identifier of Muscle Milk products. (PI, ¶ 11; Declaration of Jerry Reda ["Reda Decl."], filed March 13, 2009, ¶ 6.)

Over the course of the last several years, plaintiff has spent well over $100 million dollars promoting the MUSCLE MILK(r) brand in general, including tens of millions of dollars specifically promoting its RTD nutritional product. (PI, ¶ 14; White Decl., ¶ 23.) Plaintiff promotes and advertises its products through a variety of channels, including over the Internet, through magazines and trade publications, at trade shows, sporting events, bodybuilding competitions, retail store promotional displays and other media outlets. (PI, ¶ 16; White Decl., ¶ 24.) Further, plaintiff's MUSCLE MILK(r) product is endorsed by a wide variety of well-known athletes, including Jerry Rice. (PI, ¶ 17.) Typical consumers of MUSCLE MILK products include bodybuilders, athletes, and others generally interested in physical fitness, health, and nutrition. (Id. at ¶ 18.)

Plaintiff's trade dress for its Tetra Pak RTD nutritional product contains a number of distinctive components, including:

(1) the package is visually divided into three sections: top, middle, and bottom; (2) on the middle portion of the package, the word MUSCLE is prominently displayed above the word MILK in capital letters in a bold, block-letter, white font on a dark background; (3) on the lower portion of the package there is a colored swirl that reflects the flavor of the liquid in the package; (4) on the top portion of the package the flavor of the product is identified; and (5) on the side of the package, the words MUSCLE MILK are printed in bold, block-letter font and oriented from top to bottom. (Id. at ¶ 12; White Decl., ¶ 22.) Plaintiff's RTD nutritional product manufactured in the hourglass-shaped plastic bottle contains all of the above elements, as well as two more identifying features: (1) on the front of the hourglass bottle, the words MUSCLE MILK are tapered in the shape of the hourglass; and (2) the hourglass bottle includes a rippled design in the plastic of the bottle. (PI, ¶ 13; White Decl., ¶ 22.)

Defendant's RTD nutritional product is also sold in Tetra Pak packaging designed in an octagonal shape. (Owoc Decl., ¶ 12.) However, defendant notes that many of its competitors in the nutritional supplement industry manufacture their RTD products in the Tetra Pak packaging. (Id. at ¶ 11.) Defendant contends that companies do not choose the Tetra Pak packaging simply to copy one another, but because few types of packaging have been approved for RTD nutritional products by the Food and Drug Administration ("FDA"). (Id. at ¶¶ 11-12.) The pre-approved packaging choices for RTD nutritional products include a plastic "snowman" bottle, a plastic "milk-shaped" bottle, the Tetra Pak package, and aluminum cans. (Id. at ¶ 12.) Due to market conditions, defendant could not manufacture its RTD product in the "snowman" or "milk-shaped" plastic bottles, and due to defendant's dislike of aluminum cans, it decided to use the Tetra Pak package. (Id.) Presently, defendant only uses the Tetra Pak package for its MUSCLE POWER(r) RTD nutritional product. (Id.)

Since 1999, defendant asserts it has spent tens of millions of dollars advertising its nutritional supplement products with its trade dress. (Id. at ¶ 16.) However, defendant maintains that the Tetra Pak package does not leave many creative options as to the placement of graphics, product name, company logo, etc. (Id. at ¶ 20.) While there is only a three-inch horizontal space in which to display the entire logo on the Tetra Pak packaging, defendant has made a point to use the same trade dress on its RTD nutritional product as it uses on its other supplement products. (Id. at ¶¶ 20-21.) Specifically, defendant's RTD nutritional product contains a cobalt blue label and packaging; the words MUSCLE POWER in bold, white block letters, which are outlined in red with a black offset drop shadow around that outline; a splash, which is colored to depict the flavor of the liquid; the product name MUSCLE POWER on the side of the package in block lettering; and the amount of protein contained in the package written in bold, white block letters. (Id. at ¶ 23.)

Plaintiff contends that defendant's RTD nutritional product contains a number of components that are strikingly similar to plaintiff's product, including (1) the package is visually divided into three sections: top, middle, and bottom; (2) on the middle portion of the package, the word MUSCLE is prominently displayed above the word POWER in capital letters in bold, block-letter, white font on a dark background; (3) on the lower portion of the package there is a colored swirl that reflects the color and flavor of the liquid in the package; (4) on the top portion of the package the flavor of the product is identified; and (5) on the side of the package, the words MUSCLE POWER are printed in bold, block-letter font and oriented from top to bottom. (PI, ¶ 29.) Further, plaintiff emphasizes that although defendant previously labeled many of its various supplement products with vertical writing, defendant departed from this practice and employed horizontal block lettering, similar to plaintiff, for its RTD nutritional product. (Bettilyon Declaration ["Bettilyon Decl."], filed under seal April 27, 2009, Exhibit T.) Moreover, plaintiff alleges that although there are numerous design options a company can employ in the design of their Tetra Pak package, defendant chose to use the same basic design as plaintiff for their RTD nutritional product. (Id. at Exs. H-I; White Decl., Ex. I.)

However, defendant asserts that product names, throughout all industries, are commonly printed in block letter font in a dark or light color against a contrasting background, which makes the product name prominent and easy to read. (Owoc Decl., ¶ 24.) Likewise, defendant contends that it is common in the nutritional supplement industry to use a color to reflect the flavor of the product and to print the product name on the side of the package in bold, block letter font. (Id. at ¶¶ 25-26.)

Plaintiff's and defendant's RTD products are sold to an identical class of consumers and through similar channels of trade, including over the Internet, through gyms, and through health and convenience stores. (PI, ¶ 33.) In many instances, plaintiff's and defendant's RTD products are likely displayed side-by-side on the Internet and on store shelves. (Id. at ¶ 34.)

Due to the similarity of defendant's RTD product, plaintiff indicates that customers have contacted plaintiff with questions and comments evidencing customer confusion in the marketplace. (Id. at ¶ 35; Declaration of Christopher Maun ["Maun Decl."], filed March 13, 2009, ¶¶ 3-6.) For example, one customer contacted plaintiff to complain that he did not like the new formula for plaintiff's RTD product; however, the customer had actually purchased defendant's RTD product and mistaken it for plaintiff's product. (PI, ¶ 36; Maun Decl., ¶¶ 3-6.) Plaintiff also explains that Jerry Reda, an experienced beverage distributor, believed that defendant's RTD product was manufactured by plaintiff. (PI, ¶¶ 37-39; Reda Decl., ¶ 6.) Additionally, plaintiff emphasizes that during a recent beverage trade show, several owners of 7-Eleven stores expressed confusion regarding the origin and source of the MUSCLE POWER product. (Bettilyon Decl., Ex. C [White Dep.] at 28:19-25.) Plaintiff also asserts that one of its employees encountered a customer in a 7-Eleven store who confused defendant's product with that of plaintiff's. (Bettilyon Decl., Ex. D [Blair Decl.] at ¶¶ 4-19.) Finally, plaintiff submits an email it received from a customer, complaining that defendant's packaging is confusingly similar to plaintiff's and expressing that he found the taste of MUSCLE POWER's product "horrible." (Pl.'s Not. of After-Acquired Evid., filed Apr. 30, 2009.) Moreover, plaintiff commissioned a customer survey which concluded that one in four individuals were at risk of being confused between plaintiff's and defendant's RTD products. (PI, ¶¶ 40-43; Declaration of Hal Poret ["Poret Decl."], filed March 13, 2009.)

Defendant contends, to the contrary, that customers of RTD nutritional products are health and fitness enthusiasts willing to pay premium amounts for a healthy drink, and thus are able to distinguish between plaintiff's and defendant's products. (Owoc Decl., ¶¶ 29-30.) Further, defendant asserts that due to circumstances regarding distribution of plaintiff's and defendant's RTD nutritional products, customers are unlikely to be confused between the two products. (Id. at ¶¶ 32-37.) Defendant explains that RTD nutritional products are distributed through one of three means: (1) through direct store delivery ("DSD") to convenience stores, gas stations, grocery stores, and other mass accounts; (2) to "specialty" retailers such as gyms and health clubs that purchase through "specialty" wholesalers, and (3) directly to "specialty" vitamin chain retail health stores, such as GNC and Vitamin Shoppe, which purchase directly from the manufacturer. (Id. at ¶ 32.) Nearly 75% of defendant's Tetra Pak RTD nutritional product is sold through DSD distributors. (Id. at ¶ 33.) However, defendant alleges that plaintiff's Tetra Pak RTD nutritional product is sold predominantly to specialty wholesalers and retailers, while plaintiff's RTD nutritional product manufactured in plastic bottles is sold predominantly via DSD distribution. (Id. at ¶ 34.) As a result, defendant contends that confusion is unlikely to result, as its Tetra Pak product is most often offered for sale next to plaintiff's plastic bottle product. (Id. at ¶¶ 35-37.) Plaintiff maintains, however, that its Tetra Pak RTD nutritional product is frequently sold alongside defendant's Tetra Pak product, and that 75% of its RTD nutritional product is sold in the Tetra Pak packaging. (Bettilyon Decl., Ex. E [Reda Dep.] at 78:22-79:4; Ex. C [White Dep.] at 82:11-22.)

In July 2008, plaintiff learned that defendant filed a trademark registration for the mark "Muscle Shake" for use in connection with its nutritional supplements. Plaintiff's counsel subsequently sent a letter to defendant inquiring as to the products it intended to sell under the trademark. (PI, ¶¶ 44-45.) Plaintiff received no response to its letter and learned shortly thereafter that defendant intended to launch a new product using the MUSCLE POWER(r) trademark and trade dress that was similar to that used in connection with plaintiff's RTD nutritional product. (Id. at ¶¶ 46-47.) On October 16, 2008, plaintiff's counsel sent a letter to defendant requesting that defendant cease and desist from marketing, promoting, or selling any and all products, including defendant's RTD nutritional product, that infringe on plaintiff's trademarks and trade dress. (Id. at ¶ 47.) Defendant did not respond to this letter, and plaintiff accordingly filed the current action for trademark and trade dress infringement. (Id. at ¶ 48.) Despite defendant's attempts to evade service of process on November 7 and 10, 2008, plaintiff successfully served defendant with the current action on November 12, 2008. (Id. at ¶¶ 49-50.)

Notwithstanding the foregoing, on October 30, 2008, defendant filed a declaratory judgment action against plaintiff in the Southern District of Florida, and served plaintiff with the complaint on November 8, 2008. (Id. at ¶ 51.) On or about December 23, 2008, plaintiff filed a motion to dismiss the Florida action on the basis that defendant filed its anticipatory suit in bad faith. (Id. at ¶ 52.) The parties stipulated to suspend the present action pending a ruling on the motion to dismiss the Florida action. (Order for Suspension [Docket #21], filed Feb. 4, 2009.) The Southern District of Florida dismissed defendant's action on February 9, 2009. (PI, ¶ 53.) On April 22, 2009, the Southern District of Florida denied defendant's motion for reconsideration of its order. (Pl.'s Not. of Order Denying Mot. for Reconsid. [Docket #57], filed April 23, 2009.)

STANDARD

The Ninth Circuit has recently clarified the controlling standard for injunctive relief in light of the United States Supreme Court's decision in Winter v. Natural Res. Def. Council, 129 S.Ct. 365 (2008). Am. Trucking Ass'ns, Inc. v. City of Los Angeles, 559 F.3d 1049 (9th Cir. 2009). A party seeking a preliminary injunction must demonstrate that it is likely to succeed on the merits, that irreparable harm is likely in the absence of preliminary relief, that the balance of equities tips in favor of such relief, and that an injunction is in the public interest. Id. at 1052.

Previously, in trademark cases, the Ninth Circuit had held that a plaintiff was entitled to a presumption of "irreparable injury . . . from a showing of likelihood of success on the merits." GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 n. 4 (9th Cir. 2000). However, the governing law has changed in light of Winter. Now, a plaintiff is not granted the presumption of irreparable harm upon a showing of likelihood of success on the merits. Am. Trucking Ass'ns, 559 F.3d at 1052-53; see also Volkswagen AG v. Verdier Microbus and Camper, Inc., 2009 WL 928130, at *6 (N.D. Cal. Apr. 3, 2009). Indeed, in Winter, the Court emphasized that to be entitled to preliminary injunctive relief, a plaintiff must demonstrate that irreparable injury is "likely in the absence of an injunction." 129 S.Ct. at 375-76 (emphasis in original) (recognizing that issuing a preliminary injunction based only a "possibility" of irreparable harm is "inconsistent with [the Court's] characterization of injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief"). Ultimately, because a preliminary injunction is an extraordinary remedy, in each case, the court must "balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief." Id. at 376.

ANALYSIS

I. Likelihood of Success on the Merits

A. Trademark Infringement

Plaintiff moves for a preliminary injunction, arguing it is likely to succeed on the merits of its trademark and trade dress infringement claims under the Lanham Act. 15 U.S.C. §§ 1114, 1116, 1125(a). The court considers these issues separately below. First, to prevail on a trademark infringement claim under the Lanham Act, a plaintiff must establish that the defendant is "using a mark confusingly similar to a valid, protectable trademark" of the plaintiff's. Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036, 1046 (9th Cir. 1999). Or, as the court in Brookfield clarified: "[m]ore precisely, because we are at the preliminary injunction stage, [the plaintiff] must establish that it is likely to be able to show . . . a likelihood of confusion." Id. at 1052 n. 15. As to the threshold component, here, plaintiff submits registration certificates for its MUSCLE MILK(r) trademark. These registrations constitute prima facie evidence that plaintiff owns a valid and protectable mark and has the exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registrations. 15 U.S.C. § 1115(a); Applied Info. Sciences Corp. v. eBay, Inc., 511 F.3d 966, 970 (9th Cir. 2007).

While maintenance of a valid and protectable mark is a prerequisite to bringing a trademark claim, the likelihood of confusion is the central element of a trademark infringement action. "The [core] issue can be recast as the determination of whether 'the similarity of the marks is likely to confuse customers about the source of the products.'" GoTo.com, 202 F.3d at 1205.*fn1 The Ninth Circuit has developed eight factors (the so-called Sleekcraft factors) to guide the determination of likelihood of confusion: (1) the similarity of the marks; (2) the relatedness of the two companies' products; (3) the marketing channels used; (4) the strength of the plaintiff's mark; (5) the defendant's intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by the purchasers. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). This eight-factor test is "pliant," with some factors being more important than others, and the relative importance of each factor being case-specific. Brookfield, 174 F.3d at 1054.

1. Similarity of the Marks

This factor has always been considered a critical question in the likelihood of confusion analysis. This factor, along with the second and third factors (relatedness of the products and the use of a common marketing channel), constitutes part of the "controlling troika in the Sleekcraft analysis." GoTo.com, 202 F.3d at 1205. The marks must be considered in their entirety and as they appear in the marketplace. Id. at 1206. Similarity is adjudged in terms of appearance, sound, and meaning, and similarities are weighed more heavily than differences. Id.

A review of the labels of both plaintiff's and defendant's products shows that this factor weighs heavily in plaintiff's favor. First, however, with respect to the trademarks themselves, both marks comprise a two-word composite trademark beginning with the word MUSCLE wherein the composite trademark conveys a similar commercial connotation to consumers. It is well established that the use of two trademarks comprising different terms but which convey an overall similar commercial connotation may tend to confuse consumers. See e.g., Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 73-74 (10th Cir. 1958) (recognizing that "[t]he use of a designation which causes confusion because it conveys the same idea, or stimulates the same mental reaction, or has the same meaning is enjoined on the same basis as where the similarity goes to the eye or the ear").*fn2

Here, both marks convey impressions of strength and nutrition to the consumer.

Contrary to defendant's suggestion, it is not pertinent to the inquiry that plaintiff had to disclaim the term "muscle" for one of its trademark applications for the MUSCLE MILK(r) mark (U.S. Registration No. 2,809,666). "[I]n determining whether infringement of a trademark has occurred, disclaimed material forming part of a registered trademark cannot be ignored. It is still part of the composite trademark which must be considered in its entirety." Kelly Blue Book v. Car-Smarts, Inc., 802 F. Supp. 278, 291 (C.D. Cal. 1992) (internal quotations omitted). "Such disclaimers are not helpful in preventing likelihood of confusion in the mind of the consumer, because [the consumer] is unaware of their existence." Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983). Moreover, the specific registration that pertains to the MUSCLE MILK(r) RTD product at issue does not have a disclaimer, and thus, defendant's argument is irrelevant to the matter. (White Decl., Ex. C [U.S. Registration 2,973,352 which covers "pre-mixed nutritionally fortified beverages"].)

In addition to the marks' similar commercial connotations, the similarities between the marks as they appear in the marketplace, namely, through employment of their respective product dresses, are extremely telling. The similarities between marks must be examined as they are encountered in the marketplace. AMF, Inc., 599 F.2d at 351. That is, "[t]he comparison should be made in light of what occurs in the marketplace, taking into account the circumstances surrounding the purchase of goods." Walt Disney Productions v. Air Pirates, 581 F.2d 751, 759 (9th Cir. 1978). In this case, the similarities between the marks are significantly accentuated by VPX's near identical incorporation of CS's trade dress into its own product. Indeed, "with a single glance at the two images, one is immediately struck by their similarity." GoTo.com, 202 F.3d at 1206.

The features of CS's trade dress which have been employed by VPX include the following: (1) the package front of the MUSCLE POWER product is visually divided into three sections, top, middle, and bottom; (2) on the middle portion of the package, the word MUSCLE is prominently displayed above the second word of the composite mark in all capital letters in a bold, block-letter, white-colored font on a dark background; (3) on the lower portion of the package a depiction of a swirled colored liquid appears reflecting the color of the product in the package, i.e., brown for chocolate, red for strawberries and cream, etc.; (4) on the top portion of the package, an identification of the flavor in words and a picture appears; (5) on the side of the package, the MUSCLE POWER mark is printed in bold, block-letter font and oriented so the consumer can read the words from the bottom to the top of the package; and (6) VPX uses the Tetra-Pak packages which are created by printing a label directly on to a flat piece of packaging material that is subsequently folded into a three-dimensional carton that can be filled with the product. (White Decl., ¶¶ 29, 39.)

Defendant's efforts to expose trivial distinctions between the two marks are unimpressive. VPX points to only subtle differences between the way the marks are used, such as the red outline around its brand name, as opposed to plaintiff's black outline, and the "splash" on the bottom of its package instead of plaintiff's "swirl." These minor differences are "trivial distinctions" especially when viewing the products in full, as they appear in the marketplace. Abercrombie v. Fitch Co. v. Moose Creek, Inc., 486 F.3d 629, 636 (9th Cir. 2007). Seen in that light, the marks are glaringly similar. Phat Fashions, LLC v. Phat Game Athletic Apparel, Inc., 2002 WL 570681, at *8 (E.D. Cal. March 20, 2002) ("Put plainly, the combination of features as a whole rather than a difference in some details must determine whether the competing product is likely to cause confusion in the minds of the public.")

Additionally, VPX's use of its logo in conjunction with its MUSCLE POWER mark is inconsequential. VPX's logo is comparatively small and only noticeable upon close inspection. The clear emphasis on the packaging is on the MUSCLE POWER(r) mark. In this respect, this case is akin to Sleekcraft. There, the court noted that while the defendant used a house mark in connection with the infringing product, its use was in a smaller, skewed lettering leaving the emphasis on the primary mark. AMF, Inc., 599 F.2d at 351. Like in Sleekcraft, defendant's use of its VPX logo is not sufficiently prominent or distinctive to mitigate any likelihood of confusion between MUSCLE POWER(r) and MUSCLE MILK(r).

Moreover, the fact that the PTO did not find the two marks confusingly similar is not dispositive. The PTO makes its determination based upon the mark as it is presented for registration, regardless of how the mark may be used in the marketplace. See Amsted Industries, Inc. v. West Coast Wire Rope & Rigging Inc., 2 U.S.P.Q.2d 1755, 1758-59 (T.T.A.B. 1992); Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 801-02 (9th Cir. 1970) (recognizing that the finding by the trademark examining attorney "must be regarded as inconclusive since [it is] made at [the] lowest administrative level" and that the ultimate determination by the PTO "is rendered less persuasive still by the fact that the [PTO] did not have before it the great mass of evidence which the parties [subsequently present]"). Here, the PTO was unaware that the MUSCLE POWER product is virtually identical to MUSCLE MILK, sold through identical channels of trade, to an identical class of consumer, in identical packaging and with virtually identical labeling schemes.

An example similar to this case may be found in Classic Foods International Corp. v. Kettle Foods, Inc. Finding striking similarity between the marks KETTLE CLASSICS and KETTLE CHIPS, the court in Classic Foods noted that the first word of the mark appeared directly above the second word, both words were centered on the packaging, both marks were written in thick block capital letters, and in the same style and font. Classic Foods International Corp., v. Kettle Foods, Inc., 2006 WL 5187497, at *10 (C.D. Cal. Mar. 2, 2006) (noting that "[e]ven the most cursory glance at the two products' packaging reveals a striking similarity"); see also Abercrombie, 486 F.3d at 636 (noting that the differences in the marks there were a "trivial distinction with no effect on our observation that with a single glance at the two images, one is immediately struck by their similarity"). Much like the Classic Foods case, the similarity between the MUSCLE MILK(r) and MUSCLE POWER(r) marks is significantly enhanced by consideration of the trade dress employed by VPX for its products. As noted above, VPX has chosen an identical font, in an identical color, on an identically shaped package, and placed the mark on the package in an identical location. (White Decl., ΒΆ 38, 39.) While one must acknowledge that there are some dissimilarities between the MUSCLE POWER(r) and MUSCLE MILK(r) ...


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