Originally published by Peggy Keene.
A three-judge panel of the 7th Circuit Court of Appeals recently ruled that Gatorade’s use of “sports fuel” was not an infringement of another company’s mark.
In handing down the judgment, the court held that Gatorade’s use of “sports fuel” was protected under fair use because Gatorade was using the slogan as a means of describing the company’s wide variety of products and not solely as an identifier of the source of goods.
Court Finds “Sports Fuel” Use in Advertising Considered Descriptive
In 2016, the original suit against Gatorade was filed by SportFuel, Inc. (“SportFuel), which had registered the mark “SPORTFUEL”. Although both Gatorade and SportFuel operate in the same channels of business, which revolves around hydration drinks marketed toward athletes, the court still held that the mere factor that Gatorade and SportFuel operate in the same field, marketing similar products, does not demonstrate that Gatorade had infringed upon SportFuel’s mark when it used the words “sports fuel” in its advertising.
In fact, the court instead found that Gatorade’s use of sports fuel in its own marketing and business practices fell under protected use because it qualified as fair use. Specifically, the court stated that Gatorade’s use of sports fuel was both in good faith and simply used in a descriptive sense.
Trademark Affirmative Defense for Use of Sports Fuel Slogan
Gatorade was able to successfully use the affirmative use defense by providing evidence that it did not use SportFuel’s mark, that Gatorade’s use of the mark did not confuse consumers as to the source of the goods provided, and that Gatorade’s advertising materials clearly demonstrated that the words emphasized on packaging was “GATORADE” as opposed to any focus on sports fuel.
And because the court had ruled that Gatorade’s use of the mark was in good faith, and because Gatorade has actually disclaimed exclusive rights to use “The Sports Fuel Company” in its own trademark applications, the court ruled against SportFuel, Inc.
The Lesson Learned from the Sports Fuel Ruling
This case sets important precedent as it demonstrates that trademark infringement cases are often more complex than one may expect. Even though a brand user may find a competitor using specific words that are registered on the federal trademark register, this does not preclude a court from ruling against the brand owner. As such, brand owners should seek the counsel of experienced trademark attorneys to properly protect their marks and to determine whether a trademark infringement suit should proceed.
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