Sunkist Squeezes Out a Win and Kisses Kist Goodbye!

Written by: Douglas B. Wentzel and Julia N. Hanson

SUNKIST GROWERS, INC. v. INTRASTATE DISTRIBUTORS, INC.

Before Prost, Taranto, and Stark.  Appeal from the Trademark Trial and Appeal Board.

Summary: The TTAB incorrectly found that similar trademarks created distinct commercial impressions based on an alleged marketing theme that lacked evidentiary support.

Sunkist Growers, Inc. opposed Intrastate Distributors’ (“ID”) trademark applications for the mark KIST, in both standard characters and stylized form, for use on soft drinks in Class 32. Sunkist based its opposition on its longstanding registrations for the SUNKIST marks, used in connection with fresh fruit (Class 31) and beverages and concentrates (Class 32). Sunkist has sold SUNKIST-branded beverages for over 90 years. ID acquired the KIST brand in 2009 from Leading Edge Flavors, who used the mark from 2000 to 2009. ID used the KIST marks on canned sodas until 2014, and thereafter on nostalgic glass-bottled sodas. In 2019, ID filed the challenged applications, prompting Sunkist’s opposition. The Trademark Trial and Appeal Board (TTAB) dismissed the opposition, finding no likelihood of confusion between the KIST and SUNKIST marks.

The Federal Circuit reversed, holding that the TTAB's analysis of the DuPont factor concerning the similarity of the marks was not supported by substantial evidence. The court found that the TTAB improperly emphasized a perceived association of “SUNKIST” with the sun and “KIST” with kisses, concluding incorrectly that the marks created distinct commercial impressions. It also found that ID’s alleged “kiss” branding theme lacked evidentiary support, as ID’s trademark applications did not include any imagery of lips and its marketing materials did not consistently reflect a lips or kiss theme. Because the TTAB had found no other significant factors weighing against a likelihood of confusion—apart from the absence of actual confusion, which is not dispositive—the Federal Circuit held that the KIST marks are likely to cause confusion with the SUNKIST marks and reversed the TTAB’s decision.

Editor: Sean Murray