CAFC Reverses TTAB: KIST is Confusable with SUNKIST for Soft Drinks

The CAFC overturned the Board's decision [TTABlogged here] dismissing Sunkist Growers' opposition to registration of the mark KIST for soft drinks. Sunkist claimed likelihood of confusion with, and dilution-by-blurring of, its mark SUNKIST for fresh fruits and various beverages and concentrates, but it appealed only the Section 2(d) issue. The appellate court ruled that the Board had botched the analysis of the first DuPont factor, the similarity or dissimilarity of the marks. Sunkist Growers, Inc. v. Intrastate Distributors, Inc., 2025 U.S.P.Q.2d 989 (Fed. Cir. 2025) [precedential].

The Board found that the similarity of the goods ("closely related"), the similarity of the trade channels, the conditions of sale, and the strength of Sunkist's mark all favored a finding of likelihood of confusion. However, it found that the first DuPont factor, the similarity of the marks, weighed in the other direction, as did the lack of evidence of actual confusion.

In sum, although the Board found that, among the DuPont factors it deemed relevant, a majority favor likelihood of confusion, the Board ultimately concluded that the similarity of the marks and actual confusion factors outweigh the other four factors.

The CAFC reviewed the Board's factual finding under the first DuPont factor for substantial evidence, noting that this was "the only factor really in dispute . . . because actual confusion is not a dispositive factor on its own and the Board found four other factors favor likelihood of confusion."

The Board found that the SUNKIST mark and the KIST mark engender different commercial impressions: "IDI markets KIST to reference a kiss but Sunkist markets SUNKIST to reference a sun." Therefore, according to the Board, "a person who encounters the marks would not "be likely to assume a connection between the parties." The CAFC disagreed.

First, the lips image is not part of the KIST mark. * * * Second, not all the marketing materials with the KIST mark include a lips image. * * * Third, there is no indication of the degree of consumer exposure to the marketing materials containing the lips image. * * * Fourth, the cropped image that the Board relied on is taken from a page of the marketing presentation that emphasizes different sparkling water flavors, not lips or a kiss.

With respect to the Board’s finding that Sunkist markets SUNKIST as a reference the sun, the court observed that only two of Sunkist's pleaded registrations include a sun design. Most are standard character marks. The Board stated that its focus was on the SUNKIST standard character mark because a finding of no likelihood of confusion with standard character marks would mean the same finding for the other forms. "Importantly, the record also contains Sunkist products with the SUNKIST standard character mark without the sun design."

In short "substantial evidence does not support the Board’s finding that similarity of the marks favors no likelihood of confusion."

Weighing the DuPont factors, the Board found four that favored Sunkist. Since the CAFC rejected the Board’s finding regarding similarity of the marks, that left only that lack of actual confusion in Applicant Intrastate's favor. However, the court observed, the "failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove."

The CAFC concluded that confusion is likely and so it we reversed the Board’s decision.

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TTABlogger comment: Actual confusion may be hard to prove, but on the other side of the coin, there was a long period of co-existence without any. Anyway, I have no complaint about the CAFC's ruling. BTW: what if Intrastate has filed for the mark in design form, with the "kiss" depicted? 

PS: not sure why this is precedential. Doesn't seem to say anything new.

Text Copyright John L. Welch 2025.