J&B Wholesale Distributing v. Redux Beverages

Citation: J&B Wholesale Distrib. v. Redux Bevs., LLC, 85 U.S.P.Q.2d (BNA) 1623 (D. Minn. 2007).

Factual Background
Plaintiff J&B Wholesale Distributing (“J&B”) manufactured and distributed frozen and refrigerated food products under the federally registered marks NO NAME and NO NAME STEAKS. J&B sold its products through retail chains and its website “nonamesteaks.com.” Defendant Redux Beverages (“Redux”) sold an energy drink initially called “Cocaine” that was later changed to “No Name” following federal regulatory pressure. The drink was available for purchase in several smaller stores around Minnesota and online at “drinknoname.com,” “drinknonameshop.com,” and “drinkcocaineshop.com.”

Trial Court Proceedings
After receiving no response to a cease-and-desist letter, J&B sued for federal trademark infringement, unfair competition, and cybersquatting, state and common law infringement, and state dilution.

The court granted J&B’s motion for preliminary injunction. Redux argued that the NO NAME mark should be afforded little protection, as it was a suggestive mark used commercially by numerous third parties, and the Redux energy drink did not directly compete with J&B’s product line. Redux also argued that its mark did not tarnish J&B’s mark, as numerous third parties already used the NO NAME mark in unsavory ways, such as referencing illegal drugs or referring to Internet communities for individuals engaged in deviant sexual behavior.

The court, however, viewed the NO NAME mark as arbitrary and strong. Standing alone, the mark did not tell consumers anything about the product. The court also rejected Redux’s third-party use argument, finding the majority of the demonstrated uses unrelated to the food and drink marketplace, and most of the third-party marks used a combination of words rather than just the NO NAME mark standing alone.

Finally, the court ruled that even though J&B’s food products were not in direct competition with Redux’s energy drink, food and drink products are closely related for purposes of the likelihood-of-confusion analysis, as consumers could reasonably believe that J&B decided to launch an energy drink in addition to its meat products. The court also ruled for J&B on its state dilution claim, finding the NO NAME mark famous, distinctive, and tarnished by the association with a drink formerly and commonly known as “Cocaine.”

The court rejected Redux’s defense based on allegedly tarnishing third-party uses, stating Redux offered no proof that these third-party marks were used or known in Minnesota, or that such uses would likely be found where J&B’s products were sold.

Regarding remedies, Redux argued that an injunction would result in catastrophic harm through the consumer good will lost with a third product name change in six months. The court rejected this argument as well, referencing evidence that Redux had reached an agreement with the FDA to resume selling its energy drink under the “Cocaine” name. The court enjoined Redux from all use of the NO NAME mark in any form, including in the disputed domain names, and ordered the domain name registrar to “immediately suspend” those names.

Finally, the court ordered Redux to provide a contact list of all those in the Redux distribution chain that might possess infringing products, along with evidence that Redux has sent each a mailing demanding return of any inventory of the infringing products.

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.