Talking Rain Beverage Co. v. South Beach Beverage Co.

Talking Rain owns U.S. Trademark Registration No. 2,181,774, which covers the shape of a bottle that Talking Rain uses in its sales of flavored and unflavored water. See Appendix A. Talking Rain claims that South Beach Beverage Company, Inc., and the South Beach Beverage Company, LLC (collectively “SoBe”) use a bottle in sales of beverages that is confusingly similar to Talking Rain’s trademarked bottle. Talking Rain sued SoBe, claiming trademark infringement and false designation of origin, in violation of §§ 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 , 1125(a), and the Washington State Consumer Protection Act, WASH. REV. CODE § 19.86.020. SoBe counterclaimed, alleging that Talking Rain’s bottle is functional and, accordingly, that its trademark registration is invalid and should be canceled.

Talking Rain appeals from the district court’s final judgment dismissing its complaint, granting SoBe’s counterclaim to invalidate Talking Rain’s federal trademark registration for its design and directing the Commissioner of Patents and Trademarks to cancel Talking Rain’s federal trademark registration. Reviewing de novo the district court’s grant of summary judgment, see Botosan…