United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY UNITED STATES DISTRICT JUDGE.
Inc., which owns the registered trademark SPORTFUEL, sued
PepsiCo, Inc. and its wholly-owned indirect subsidiary, The
Gatorade Company (Gatorade) over Gatorade's use of the
advertising slogan "Gatorade The Sports Fuel
Company." SportFuel asserts claims of trademark
infringement, unfair competition, and false designation of
origin under the Lanham Act, 15 U.S.C. §§ 1114,
1125(a) (counts 1 and 2), and parallel claims of trademark
infringement and unfair competition under state statutory and
common law (count 3). Gatorade has counterclaimed for the
cancellation of SportFuel's trademark registration.
Gatorade has moved to exclude the testimony and survey
evidence of Kenneth Hollander and James Berger,
SportFuel's experts, and for summary judgment on all
counts of the complaint. For the reasons stated below, the
Court grants Gatorade's motion for summary judgment and
denies as moot the motions to exclude SportFuel's expert
testimony and survey evidence.
following facts are taken from the parties' statements of
undisputed facts and the exhibits attached to or referenced
by those statements.
Inc. is a Chicago-based sports nutrition and wellness
consulting firm. Julie Burns, a clinical nutritionist and
registered dietician, founded SportFuel in 1993. In addition
to being the Chicago Blackhawks' team nutritionists and
providing personalized performance nutrition consulting
services for individuals, SportFuel also sells a variety of
SportFuel-branded dietary supplement powders and capsules.
SportFuel owns two registered trademarks for the name
SPORTFUEL: one for "food nutrition consultation, "
"nutrition counseling, " and "providing
information about dietary supplements and nutrition"
(Reg. No. 3, 495, 513) and another for "dietary
supplements" and "sports drinks enhanced with
vitamins" (Reg. No. 4, 832, 297). Pl.'s Statement of
Additional Facts (SAF), Ex. 13, at 32, 68. SportFuel's
Burns served on the Gatorade Sports Science Institute's
Sports Nutrition Advisory Board in her capacity as a
nutritionist from 1995 to 2003.
Gatorade continues to sell its well-known sports drinks, it
now sells a wider variety of food and beverage products,
including bars, chews, protein bars, protein shakes, protein
powders, and gels. Gatorade also offers its Gx Personalized
Hydration System-in which scientists create personalized
formulas and hydration plans for athletes based on an
analysis of their sweat-to "select professional athletic
teams." Pl.'s Resp. to Defs.' Statement of
Undisputed Material Facts (SUMF) ¶ 4.
has used variations of the word "fuel" in its
marketing for close to twenty years. See, e.g.,
Mazur Decl., Ex. C (Gatorade offers "tips on how to
avoid dehydration, by rehydrating, so you can go stronger,
last longer, respect the heat, stay cooled and fueled");
Mazur Decl., Ex. D (Gatorade keeps athletes "refueled,
rehydrated and at the top of their game"). Gatorade
began using the phrase "sports fuel" internally in
2012. Internal Gatorade marketing strategy presentations from
2012 onward repeatedly reference "Sports Fuel"
products, which the presentations describe as "[i]tems
specifically designed to improve athletic performance."
Mazur Decl., Ex. H, at 3; see also Mazur Decl., Ex.
K, at 4 (differentiating sports fuel products from sports
nutrition products). These marketing presentations also refer
to brands and companies that Gatorade has identified as
competitors in the "Sports Fuel" market.
See Mazur Decl., Ex. H, at 5; Mazur Decl., Ex. G, at
6. As part of Gatorade's self-described effort to
"rebrand itself as 'Gatorade - The Sports Fuel
Company, '" the company began using the slogan
"Gatorade The Sports Fuel Company" in nationwide
media in 2015. Mazur Decl., Ex. K, at 3. The goal of this
rebranding effort was to "position Gatorade as THE
fueling company that is continually innovating to create
sports fuel solutions to help athletes perform at their
best." Id. Gatorade was aware of
SportFuel's trademarks before it began using the slogan.
registered GATORADE THE SPORTS FUEL COMPANY as a trademark in
2016 (Reg. No. 5, 025, 026), but it disclaimed the exclusive
right to use "The Sports Fuel Company."
See Mazur Decl., Ex. L, at 2. According to Andrew
Hartshorn, the chief marketing officer and vice president of
Gatorade, Gatorade uses its Gatorade house mark and / or the
following G-bolt design mark on all of its packaging and
dkt. no. 59, Hartshorn Decl. in Supp. of Mot. for Summ. J.
(Hartshorn Decl.) ¶ 25. Hartshorn also stated that
Gatorade does not use the slogan "Gatorade The Sports
Fuel Company" on any product packaging or
labeling. See Id. ¶ 20.
filed this suit against Gatorade and PepsiCo in August 2016.
As previously noted, SportFuel has alleged trademark
infringement, unfair competition, and false designation of
origin in violation of the Lanham Act, and it also asserts
claims of trademark infringement and unfair competition under
state statutory and common law. Gatorade has moved to exclude
SportFuel's expert testimony and survey evidence
regarding the likelihood of consumer confusion resulting from
Gatorade's use of the advertising slogan "Gatorade
The Sports Fuel Company." Gatorade has also moved for
considering a motion for summary judgment, the Court views
the record in the light most favorable to the non-moving
party, drawing reasonable inferences in favor of that party.
See Sorensen v. WD-40 Co., 792 F.3d 712, 722 (7th
Cir. 2015). A grant of summary judgment is appropriate
"if the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment
as a matter of law." Fed.R.Civ.P. 56(a). If "the
evidence is such that a reasonable jury could return a
verdict for the nonmoving party, " a genuine issue of
material fact exists, and summary judgment must be denied.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
has moved for summary judgment on all counts of the complaint
on two separate grounds. Gatorade first argues that summary
judgment is warranted because SportFuel has failed to present
evidence from which a reasonable jury could find likelihood
of confusion, a necessary element of all of SportFuel's
claims. Gatorade also contends that its use of the term
"Sports Fuel" in the slogan "Gatorade The
Sports Fuel Company" is a fair use protected by the
Lanham Act. Because, as explained below, the Court ...