GATORADE WINS THE SPORTFUEL VS. SPORTS FUEL CASE : A LESSON LEARNED ON TRADEMARK INFRINGEMENT

By Onwuchekwa Obinna Agwu, Esq.

After two long years legal battle, Gatorade has won a trademark lawsuit brought against it for the use of the term “Sports Fuel” in an advertisement campaign that Gatorade launched in 2015, where the 7th Circuit Court of Appeals recently ruled that Gatorade’s use of “sports fuel” was not an infringement of another company’s mark.

The facts of the case

Both Gatorade and SportFuel operate in the same channels of business, which revolves around hydration drinks marketed toward athletes were. In 2016, SportFuel, Inc. (“SportFuel), which had registered the mark “SPORTFUEL filed a trademark infringement suit against Gatorade, stating that Gatorade knew of the SportFuel trademark and intentionally used it in its product marketing and ad Campaign.  

Gatorade was able to successfully rely on the affirmative (fair) 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.

The court 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 found that 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.

Furthermore, the Court held that the mere fact 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.

Finally, the court ruled that Gatorade’s use of the mark was in good faith, and that Gatorade has actually disclaimed exclusive rights to use “The Sports Fuel Company” in its own trademark applications, the court ruled against SportFuel, Inc.

The Lessons Learned from the Sports Fuel Ruling

Trademark infringement cases are often tricky and complex than one may expect, at least that is the important precedent that this case and other trademark infringement cases have demonstrated. Even though a brand user may find a competitor using specific words that are registered on the trademark register, it 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.

Therefore, for a brand owner to successfully sue for trademark infringement, he must prove the following –

§ That his mark is distinctive and therefore the use of the mark by another is likely to confuse consumers; 

§ That the mark was not used in a descriptive sense but was used as a means to confuse customers as to the source of the goods; 

§ That the use of the mark was in bad faith