The Naming Risk Every Branding Agency Should Be Watching
A conflict between a canned-coffee company and Pepsi is about to change how much legal risk lives inside every name your agency recommends.
The Supreme Court just accepted RiseandShine Corporation v. PepsiCo, Inc. On the surface it is a fight over the RISE trademark, used by both a canned nitro-brewed coffee brand and PepsiCo’s own canned energy drink, MTN DEW RISE ENERGY. Underneath is a question that runs through the naming work you do for clients: when a brand’s strength is challenged, who decides how strong it is — a jury, or a judge?
In likelihood of confusion conflicts, trademark strength is a crucial factor. Conceptual strength depends upon where a mark falls on the distinctiveness spectrum, the further right the strongest: generic, descriptive, suggestive, arbitrary, and fanciful. Virtually all circuits treat placement on this spectrum as a fact question, typically for the jury.
Here, the Second Circuit treated it as law, reviewed the mark de novo, and held that RISE was inherently weak, based on its associations with mornings and coffee. So, depending upon the forum, a mark could be strong in one circuit, while weak in another.
A factual finding gets clear-error deference on appeal, while a legal conclusion gets de novo review. This is not an academic question; it is exactly how RISE lost. Because the Second Circuit treated inherent strength as legal, it felt free to re-weigh the mark and declare it weak, rather than deferring to the trial court.
Likelihood of confusion analysis is inherently subjective and fact-specific, so a follow-on concern is that a judge’s conclusion is precedential regarding the same mark or category, and an adverse ruling can devalue a mark across the board. A jury’s conclusion, by contrast, is case-specific and does not carry the same stare decisis weight.
So why does this matter if you build brands for a living?
First, names that evoke your product are often the legally weakest since the very thing that makes them resonate ties them to the goods.
Second, “we loved the name” is not a viable legal strategy.
Third, reverse confusion, where a small senior brand is financially overwhelmed by a deep-pocketed junior user, is a very real concern and the very issue that entrant-brand clients face when they scale.
Finally, trademark clearance conversations have now become more valuable. Knowing where a name sits on the spectrum is part of protecting the client’s investment, not just clearing a hurdle.
The practical solution, then, is to consider trademark strength early in the naming process, rather than as a last-minute check. By the time a name is presented, the defensibility conversation should already be part of the story you tell the client.
Agencies and brand strategists: how early does legal defensibility enter your naming work — and should it be there earlier? hashtagtrademarks