Ocean Spray Seeks Declaratory Relief After Soda Company Threatens It With Confused Trademark C&D
from the hang-ten dept
While we've seen plenty of instances of confused attempts at trademark bullying backfire on a company, this post will deal with one of the worst I've seen. Most of you will likely be familiar with the company Ocean Spray, best known as a purveyor of all kinds of cranberry-infused fruit drinks. You will likely be less familiar with Wedge Water, LLC, a company that makes fruit juice infused water products. The company also does business as Wave Soda, promoting its soda-alternative drinks.
Well, according to a lawsuit filed by Ocean Spray seeking declaratory relief that it did not infringe any trademarks with its own "wave" branding, Wedge Water / Wave Soda sent a cease and desist notice to Ocean Spray demanding that it cease using its own federally registered trademark. More on that in a moment, but here is what the complaint notes about the C&D.
The Letter accuses Ocean Spray of infringing “Wave Soda’s” trademark and trade dress rights through Ocean Spray’s line of OCEAN SPRAY WAVE products. According to the USPTO database, there is no registration for the mark NEW WAVE owned by an entity named Wave Soda, LLC. As noted above, according to the USPTO database, Wedge Water, LLC is the owner of record of U.S. Registration No. 5571632 for mark NEW WAVE.
The Letter advises that Wave Soda, LLC, is a “rapidly growing beverage company based in San Marcos, California.” A search of the database of the California Secretary of State, however, reveals no record for an LLC named Wave Soda, LLC in San Marcos, California, or at all. Despite the fact that there are many brands of sparking water with fruit juice and a small amount of caffeine for sale on Amazon, Mr. Levine’s letter claims that his client “pioneered an entirely new product category.”
The Letter emphasizes that the surfer motif is an important part of Wave Soda’s branding: “Wave’s growing team shares [the founder’s] passion for beverages and an active lifestyle—the Wave Soda Surfboard and VW van are not just for show” (emphasis added).
It goes on from there. The complaint, which includes the C&D letter in full, notes that the notice didn't offer any specifics as to what was infringing, offered no possibility of a settlement other than the cessation of Ocean Spray using its own mark, and that the letter in general is "utterly confusing as to who owns the trademarks and trade dress claimed in The Letter." All of this, the complaint goes on, has led the company to seek declaratory relief.
Frankly, the C&D is fairly shitty as far as these things go. But the actual legal claims, based on the suit, seem to be even more confused. This dispute led Ocean Spray's legal team to start looking into the trademarks claimed by Wedge Water. The complaint notes that Wedge Water applied for a mark for "New Wave" on a variety of goods, but the "intent to use" application failed to demonstrate that the applied for marks were actually in use in commerce. Instead, Wedge Water's attorneys appear to have supplied some art renderings of what the branding would be. In other words, Wedge Water wasn't actually using the marks in question before July of 2018. The filing notes that Ocean Spray was using its federally registered "Wave" trademark since at least 2013.
Plaintiff Ocean Spray requests an order declaring that its use of the marks WAVE as part of the mark OCEAN SPRAY WAVE, and the OCEAN SPRAY WAVE trade dress do not infringe Wedge Water’s alleged trademark and trade dress rights. With respect to the word marks WAVE as part of the mark OCEAN SPRAY WAVE and OCEAN SPRAY WAVE, Ocean Spray asserts priority over Wedge Water. Even if the marks are confusingly similar, (which Ocean Spray does not concede), Ocean Spray has prior rights and is not infringing any claimed rights of Wedge Water.
And because of that priority, and likely because of Wedge Water's attempt to play trademark bully, the lawsuit includes a second count beyond the declaratory relief, seeking also to cancel Wedge Water's trademark in favor of Ocean Spray's.
Ocean Spray has standing to request cancellation of the NEW WAVE Registration because it has reason to believe that it will be injured by the continued registration of same. Ocean Spray has reason to believe that it will be injured because Defendant/Registrant or its alter ego, the purported Wave Soda, LLC, has asserted in The Letter that Ocean Spray’s use of its OCEAN SPRAY WAVE trademark infringes the NEW WAVE mark. The Letter asserts, and thus admits, that there is a likelihood of confusion between OCEAN SPRAY WAVE and NEW WAVE.
Whoops. What retort could Wedge Water possibly have? Its own C&D letter suggested that there would be public confusion between the marks...and the trademark registrations sure do indicate that Ocean Spray's mark was registered first.
Live by the trademark, die by the trademark and all of that. You have to imagine at this point that Wedge Water is regretting having ever sent that threat letter to begin with.
Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.
Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.
While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.
–The Techdirt Team
Filed Under: declaratory relief, soda, trademark, wave
Companies: ocean spray, wave soda, wedge water
Reader Comments
Subscribe: RSS
View by: Time | Thread
Disagree; think there's confusion
I looked at the document and saw Ocean Spray's soda cans and then plaintiff's soda cans I think there's definitely a possibility of confusion so I think Wedge Water's complaint is valid. I could see how someone who sees Wedge's Wave soda might think that Ocean Spray had redesigned their Wave products. In that respect, I think Wedge Water has a point here.
[ link to this | view in thread ]
Re: Disagree; think there's confusion
Except Ocean Sprays been around since before this little shitty brand even thought about being a company.
Wedge infringed Ocean Sprays mark & then had the nerve to claim Ocean Spray copied them & sent their competing product back in time to screw with them.
They point out other shuttered mark holders used the word wave with fruit juice drinks before Wedge had & Wedge has changed their trade dress a few times.
My neighbor set little Timmy up with a Lemonaid Stand, she then sued Country Time Lemonaid for stealing the rustic look & lettering she used on Timmys stand. Karen is not very smart.
The lawyers for Wedge should hope they have malpractice coverage, pursuing legal antics against a multinational corporation who CLEARLY held & used the mark long before you did claiming the multinational stole your idea is actively lying in legal documents & a complete failure at due diligence.
[ link to this | view in thread ]
I gotta ask, did the C&D originate from a Club Fed in MN & signed by Hans?
To boldly threaten someone who held a mark long before you existed for stealing your mark is 4D chess levels of thinking like we can upload the porn then sue everyone who downloads it.
[ link to this | view in thread ]
Re: Disagree; think there's confusion
"In that respect, I think Wedge Water has a point here."
If this were a case of a brand releasing a new product long after a smaller player had succeeded in carving out a niche, I would agree.
But, here? From what I'm reading, Ocean Spray was using the mark for 5 years before Wedge started using it, so there doesn't seem to be fault there. The mark itself is a standard English language word that's directly associated with ocean spray (certainly closer the "wedge"), so you can't even claim that they were trying to be clever with their branding. If there's confusion over the placing and format of the branding, it seems they were beaten to market on that.
I'd normally root for the small guy, but I don't see the reason why anyone would consider Ocean Wave to be in the wrong here.
[ link to this | view in thread ]
Re: Re: Disagree; think there's confusion
I read both yours and That Anonymous Coward's replies, and I'm convinced; those were both good points I hadn't considered before. Thanks to both of you!
[ link to this | view in thread ]
Prior art
Hello, the 70s and 80s are calling, https://en.wikipedia.org/wiki/New_wave_music and https://www.youtube.com/playlist?list=PL3D6ABD3A4EA098FB
[ link to this | view in thread ]
Re: Re: Re: Disagree; think there's confusion
Yeah. They might need to change their name to BilgeWater.
[ link to this | view in thread ]
Re: Prior art
Obligatory XKCD: https://xkcd.com/875/
[ link to this | view in thread ]
Oops
Nothing like engaging in a little legal thuggery only to have your target turn it back on you. If this ends up with Wave Soda's trademark being invalidated that would just be the perfect result, they tried to force someone else to ditch a trademark only to lose theirs in turn.
[ link to this | view in thread ]
I get the feeling they thought they were, in the recent legal sense, releasing the Kraken. I also get the feeling they are about to experience a similar outcome.
[ link to this | view in thread ]
Re: Prior art
Absolutely. As you recall, NoWave Music made a similar claim against NewWave Music's priority. NoWave had to cease practicing and quickly passed into obscurity.
[ link to this | view in thread ]
Re: Re: Disagree; think there's confusion
I mean, after all, what is an ocean spray but something caused by waves?
[ link to this | view in thread ]
Re: Re: Re: Disagree; think there's confusion
They were also points brought up in the article because they were the defense by ocean spray the article was discussing. It was the entire second half of the article. How far did you get before you started commenting?
[ link to this | view in thread ]
Re: Re: Re: Re: Disagree; think there's confusion
I got up to this point:
And then I scrolled completely down to the PDF, looking for pictures of the trademark. I jumped to conclusions based on limited information and lack of reading comprehension.
Mea culpa maxima.
[ link to this | view in thread ]
Re: Re: Prior art
Even more obligatory XKCD: https://xkcd.com/1072/
[ link to this | view in thread ]
I think someone at new wave had a few too many hits off of the bong while coming up with their master plan.
[ link to this | view in thread ]
Re: Re: Disagree; think there's confusion
But what you've totally failed to grasp is that the lawyers own a time machine and will send their product back in time to before Ocean Spray used the wave mark and then they will win.
It worked for the Hitchhiker's Guide to the Galaxy, so why not for random fruit drinks.
[ link to this | view in thread ]
Send a stupid cease and desist, die by the lawsuit.
[ link to this | view in thread ]
the Wave Soda Surfboard and VW van are not just for show”
</Headdesk>
They may have a bigger problem than Ocean Spray. I mean, aside from the mega-insane hypocrisy and Dunning-Kruger psychopathy.
I saw the can. There is literally an old VW microbus on it. I just don't even.
[ link to this | view in thread ]
Re: Re: Re: Prior art
"Call yourself the youth of today?", https://www.youtube.com/watch?v=rKU8bc2AS5U
[ link to this | view in thread ]
Re:
Shhhhh we're saving the Germans for round 2 of defiling the corpse.
[ link to this | view in thread ]
Re: Re: Disagree; think there's confusion
it doesn't matter what company existed first, it's the 'Wave" part that is relevant here.
[ link to this | view in thread ]
Re:
that microbus image is apparently is free and clear for any to use
[ link to this | view in thread ]
Re: Re: Re: Disagree; think there's confusion
[ link to this | view in thread ]