A federal judge put one in the win column for PepsiCo in a trademark violation lawsuit over its use of the term “sport fuel” in Gatorade advertisements.
Nearly two years ago, Western Springs-based SportFuel Inc. filed suit in Chicago federal court over a national marketing campaign billing Gatorade as “The Sports Fuel Company.” The campaign, according to the complaint, was applied to Gatorade’s line of whey protein powder, whey protein bars, shakes, “energy chews,” “Fuels” bar, “Sports Fuels Drink,” “Thirst Quencher Powder” and other products, which SportFuel said violated trademarks it established in the early 1990s.
According to the lawsuit, SportFuel’s owner and founder, Julie Burns, worked with Gatorade, purportedly serving on a Gatorade advisory board and providing “various consulting services for Gatorade” from 1995-2003. SportFuel said it holds federal trademarks, under its corporate name, both for its consulting services, and for lines of “dietary supplements and sports drinks enhanced with vitamins.”
Floyd Mandell
| Katten Muchin Rosenman
Gatorade filed a countersuit seeking to nullify SportFuel’s trademark and also moving to strike the company’s expert testimony while requesting summary judgment. Judge Matthew Kennelly issued an opinion on the dispute June 14, saying a key distinction in the way Gatorade used the phrase “sports fuel” is whether it was attempting to imply the product comes from SportFuel Inc.
Kennelly included several visual depictions of Gatorade advertising, including retail display shelves, all showing how the registered Gatorade word or lightning bolt G logo are visually dominant over the phrase “The Sports Fuel Company.” That prominent placement, he explained, “reduces the likelihood that Gatorade is using ‘Sports Fuel’ as an indicator of source,” and rather that it uses the phrase to generally describe the type of product Gatorade markets.
“Additionally, as previously noted, Gatorade's Chief Marketing Officer (Andrew) Hartshorn has stated that Gatorade does not use the slogan ‘Gatorade The Sports Fuel Company’ on specific product packaging or labeling, and his testimony on this point is not meaningfully disputed,” Kennelly wrote. “That is where a consumer would most expect to find source identifiers.”
Although Gatorade did register the slogan as a trademark, Kennelly said the U.S. Patent and Trademark Office said “The Sports Fuel Company” could not be registered because “"it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of (the) applicant's goods and/or services."
That PTO finding worked in Gatorade’s favor as relates to SportFuel’s assertion the slogan is suggestive rather than descriptive, the key distinction in Gatorade’s contention of fair use. Kennelly said the idea of sports nutrition, and that Gatorade products are designed for athletes to use during sporting activities, are widely understood.
Although Gatorade knew of SportFuel, Kennelly said that alone doesn’t prove the company acted in bad faith by deploying the slogan, nor was he moved by SportFuel noting Gatorade didn’t stop using the slogan after the trademark lawsuit was filed.
“No reasonable jury could find that Gatorade's use of the phrase ‘Sports Fuel’ in its slogan ‘Gatorade The Sports Fuel Company’ is anything other than a fair use,” Kennelly wrote. He granted summary judgment and said that decision moots the issue of Gatorade’s motion to exclude survey evidence and testimony from SportFuel experts.
SportFuel is represented in the action by attorneys Raymond P. Niro and Kyle D. Wallenberg, of Niro McAndrews LLC, of Chicago, and attorney Vincent Pinelli, of Burke Burns & Pinelli, of Chicago.
PepsiCo is represented by attorneys Floyd A. Mandell and Julia L. Mazur, of the firm of Katten Muchin Rosenman LLP, of Chicago.