from the United States District Court for the Northern
District of Illinois, Eastern Division. No. 16-cv-7868 -
Matthew F. Kennelly, Judge.
Kanne, Barrett, and Brennan, Circuit Judges.
appeals the district court's grant of summary judgment
for Gatorade and its parent company, PepsiCo. SportFuel
brought this suit against Gatorade alleging violations of its
trademark after Gatorade rebranded itself with the slogan,
"Gatorade The Sports Fuel Company." The district
court deemed Gatorade's slogan a fair use protected
by the Lanham Act. We affirm.
is a Chicago-based sports nutrition and wellness
consulting firm whose clients include several of
Chicago's prominent professional sports teams and
their athletes. The company provides personalized nutrition
consulting services to professional and amateur
athletes, but also sells SportFuel-branded dietary
supplements. SportFuel holds two registered trademarks for
"SportFuel." It registered the first for "food
nutrition consultation, nutrition counseling, and providing
information about dietary supplements and
nutrition." After several years of use,
SportFuel's trademark became
"incontestable" in 2013 under 15 U.S.C. §
1065. SportFuel also registered a trademark in 2015 for
"goods and services related to dietary supplements
and sports drinks enhanced with vitamins."
was created in 1965 at the University of Florida College of
Medicine and public sales began several years later.
Undoubtedly, Gatorade is more widely known. It is the
official sports drink of the NBA, PGA, MLB, MLS, and
many other professional and collegiate organizations. Whether
by television imagery of victorious athletes drenching their
coaches or teammates with a Gatorade shower from a
distinctive cooler, or through aggressive national media
marketing campaigns, Gatorade became a household name.
addition to its traditional sports drinks, Gatorade now
customizes its sports drink line by selling formulas that are
tailored to the nutritional needs of individual professional
athletes. The company also sells numerous other sports
nutrition products beyond sports drinks. It began to
publicly describe its products as sports fuels in 2013.
Seeking to broaden its public image to reflect its expanded
variety of products, Gatorade began a rebranding effort. In
2016 it registered the trademark "Gatorade The Sports
Fuel Company" with the United States Patent and
Trademark Office ("PTO"). Notably, Gatorade
disclaimed the exclusive use of "The Sports Fuel
Company" after the PTO advised the company that the
phrase was merely descriptive of its products.
only link between SportFuel and Gatorade is a
nutritionist and dietician named Julie Burns, who
founded Sport-Fuel in 1993. Burns had a history of working
with Gatorade: she served as a nutritionist on the Gatorade
Sports Science Institute's Sports Nutrition Advisory
Board from 1995 until 2003. Burns became aware of
Gatorade's rebranding efforts and the alleged trademark
infringement when she saw a Gatorade commercial
featuring the new slogan. SportFuel filed suit against
Gatorade and PepsiCo in August 2016. Its complaint
alleged trademark infringement (15 U.S.C. § 1051),
unfair competition, and false designation of origin in
violation of the Lanham Act (15 U.S.C. § 1125(a)).
Similarly, SportFuel asserted claims of trademark
infringement and unfair competition in violation of
Illinois law. See 815 111. Comp. Stat. §§
505/1, 510/1. Gatorade raised counterclaims for a
cancellation of SportFuel's trademark.
moved to exclude SportFuel's expert's testimony
and survey evidence concerning the likelihood of
consumer confusion from Gatorade's use of the
slogan. Gatorade also moved for summary judgment on two
grounds. First, it argued that SportFuel failed to provide
evidence that allowed a jury to find a likelihood of
confusion-a necessary element to each of SportFuel's
claims. Second, Gatorade argued that the Lanham Act protected
its use of "Sports Fuel" as a fair use.
14,2018, the district court granted Gatorade's
motion for summary judgment after finding that SportFuel
failed to produce evidence that demonstrated a factual
dispute on any of the three elements of Gatorade's fair
use defense. The court also determined that because it found
that Gatorade successfully raised the Act's fair use
defense, it need not conduct a risk of confusion
analysis for SportFuel's claims. Similarly, because
the court determined that SportFuel's claims under
Illinois law were subject to the same analysis as its
federal claims, it did not separately consider those
claims. SportFuel appeals.
review the district court's grant of summary judgment
de novo, viewing all facts in SportFuel's favor.
Georgia-Vac. Consumer Prods. LP v. Kimberly-Clark
Corp., 647 F.3d 723, 727 (7th Cir. 2011). A district
court may award summary judgment when the evidence 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).
Trademark Act of 1946, commonly known as the Lanham Act,
"federalized" the common law's trademark
protections. CAB, Inc. v. Clean Air Eng'g,
Inc., 267 F.3d 660, 672 (7th Cir. 2001). The Lanham Act
allows those who employ trade or service marks to register
them for exclusive use in commerce. KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117
(2004). A trademark holder's right becomes
"incontestable" five years after initial
registration with the PTO if the holder meets certain
conditions. Id.; 15 U.S.C. § 1065.
holder of a registered mark ... has a civil action against
anyone employing an imitation of it in commerce when
'such use is likely to cause confusion, or to cause
mistake, or to deceive.'" KP Permanent
Make-Up, 543 U.S. at 117 (quoting 15 U.S.C. §
1114(1)(a)). Additionally, the Act provides
trademark-holders a cause of action against those who make a
false designation of origin for a mark. 15 U.S.C. §
1125(a). "To prevail on either claim, a plaintiff must
establish that (1) its mark is protectable and (2) the
defendant's use of the mark is likely to cause
confusion among consumers." CAB, Inc., 267
F.3d at 673-74.
the Lanham Act provides several affirmative defenses to a
plaintiff's claims, including the "fair use"
defense. See 15 U.S.C. § 1115(b). The fair
use defense is available against even incontestable
trademarks, like SportFuel's. Sorensen v. WD-40
Co., 792 F.3d 712, 722 (7th Cir. 2015). The defense
allows individuals to use otherwise trademarked language
in a descriptive sense. See Packman v. Chi. Tribune
Co., 267 F.3d 628, 639 (7th Cir. 2001); Sunmark,
Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055,
1058 (7th Cir. 1995). "[A] defendant in a trademark
infringement action may invoke the fair use defense by
demonstrating that the alleged infringement, 'is a
use, otherwise than as a mark ... which is descriptive
of and used fairly and in good faith only to describe the
goods or services of such party.'"
Sorensen, 792 F.3d at 722 (quoting 15 U.S.C. §
1115(b)(4)). In short, to raise the fair use defense
successfully, Gatorade must show that (1) it did not use
"Sports Fuel" as a trademark, (2) the use is
descriptive of its goods, and (3) it used the mark fairly and
in good faith. Sorensen, 792 F.3d at 722;
Packman, 267 F.3d at 639. The district court
determined that Gatorade met all three prongs.
appeal, SportFuel challenges the district court's
conclusions on all three prongs of the fair use defense.
We review each prong in turn. However, because we conclude
that Ga-torade successfully raised a fair use defense against
Sport-Fuel's claims, we do not consider whether