IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

WM. WRIGLEY JR. COMPANY,

 Plaintiff and

Counter-Defendant,

v.

SWERVE IP, LLC,

 Defendant and

Counter-Claimant.

Case No. 11 C 9274

Hon. Harry D. Leinenweber

MEMORANDUM OPINION AND ORDER

Before the Court is Swerve IP’s Motion for a Preliminary

Injunction, and Wrigley’s Motion to Strike and Motion for a

Hearing. For the reasons contained herein, Wrigley’s Motions are

granted in part and denied in part, and Swerve’s Motion for a

Preliminary Injunction is continued pending a hearing.

I. BACKGROUND

Defendant and Counter-Claimant Swerve IP, LLC (“Swerve IP”)

moves for a preliminary injunction, barring Plaintiff and CounterDefendant Wm. Wrigley Jr. Co. (“Wrigley”) from allegedly infringing

Swerve’s federally registered trademark. 

Swerve IP holds a word mark (SWERVE), the name of its “allnatural” erythirtol-based non-sugar sweetener. It has used the

mark since 2001. The United States Patent and Trademark office

(the “USPTO”) registered it in September 2009. (Swerve IP acquired

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 1 of 22 PageID #:950
the rights to the mark via assignment in 2011, evidently when the

sweetener part of the business changed hands.) That registration

covers “natural sweetener” in International Class 030 (which

includes a large number of food and candy products).

Swerve sweetener is sold (in one-pound bags and in single-use

packets) through online retailers such as Amazon.com and certain

physical stores like Whole Foods. Similar sweeteners are evidently

sold in convenience stores, and Swerve IP hopes to expand to those

stores in the near future. The sweetener is also used in the

commercial manufacture of some food products, including diet

pralines, but Swerve IP hopes to expand into more mainstream

markets, including chewing gum. The sweetener is promoted via

social media sites such as Facebook and Twitter. 

Wrigley manufactures and sells the popular “5” brand of

chewing gum. There are a dozen different flavors, one of which is

called “Swerve” — because, Wrigley claims, it changes from a

“tangy” to a “sweet tropical” flavor when chewed. The gum is not

“all-natural” but is sugar-free, and is marked as containing

natural and artificial flavors. Wrigley markets 5 Gum as an

extreme sensory experience, targeting customers in their teens and

20s. 5 Gum is sold mainly in grocery and convenience stores,

though it is also available through Amazon.com.

In October 2010, Wrigley learned of Swerve IP’s mark. That

month, it applied to register “swerve” in International Class 030,

- 2 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 2 of 22 PageID #:951
covering “chewing gum.” Swerve IP opposed the registration. By

all appearances, the opposition is still pending before the

Trademark Trial and Appeal Board (the “TTAB”).

In July 2011, Wrigley launched the Swerve flavor of 5 Gum. 

The flavor is featured on its website and social media outlets, and

was advertised individually (but is no longer). In late 2011,

Swerve IP sent Wrigley a cease-and-desist demand regarding the

Swerve mark. Evidently after settlement discussions arising out of

the TTAB proceeding failed, Wrigley filed a declaratory judgment

action before this Court regarding its use of the Swerve term.

Swerve IP has moved for a preliminary injunction. 

II. LEGAL STANDARD

“A party seeking a preliminary injunction is required to

demonstrate a likelihood of success on the merits, that it has no

adequate remedy at law, and that it will suffer irreparable harm if

the relief is not granted.” Promatek Industries, Ltd. v. Equitrac

Corp., 300 F.3d 808, 811 (7th Cir. 2002). If it meets that

standard, the court then also must consider whether and to what

extent the injunction would harm the enjoined party and/or the

public. Id. These factors are evaluated on a sliding scale; the

more likely a movant is to prevail on the merits, the less heavily

the balance of harms needs to tip in its favor. Id.

- 3 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 3 of 22 PageID #:952
III. DISCUSSION

As this briefing is largely under seal the Court discusses the

evidence in only general terms. 

A. Motion to Strike

Wrigley has moved to strike portions of Swerve IP’s reply,

contending that it includes new evidence and new arguments which

could have been raised in the original motion. Swerve IP contends

that its evidence and argument are in proper response to issues

raised in Wrigley’s response, and was obtained in discovery after

Swerve IP filed its motion.

Replies are not to be used to “patch holes” in the original

briefing. E2Interactive, Inc. v. Blackhawk Network, Inc. ̧ No. 09-

CV-629, 2010 WL 1981640, at *1 (W.D. Wis. 2010). However, at this

stage, unlike summary judgment, the record is not necessarily

complete before the motion is filed. Cf. Black v. TIC Inv. Corp.,

900 F.2d 112, 116 (7th Cir. 1990) (new evidence in a summary

judgment reply should not be considered, unless the other side had

a chance to respond). Accordingly, district courts permit some

“new” facts and arguments in replies, if they are directly

responsive to issues raised in a response and do not prejudice the

other side. See, e.g., Wynn v. Express, LLC, No. 11 C 4588, 2012

WL 386716, at *3 (N.D. Ill. Feb. 6, 2012) (collective action

preliminary certification). The Court discusses each item of “new”

evidence as necessary below.

- 4 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 4 of 22 PageID #:953
B. Motion for Hearing

Wrigley claims that the Court must hold a hearing, so that it

can confront the factual issues created by Swerve IP’s reply brief.

It claims that, because the Court opted to rule on the Motion to

Strike simultaneously with the Injunction Motion, Wrigley needs a

hearing “to be assured that the Court will not consider” the

challenged material in ruling on the injunction. Wrigley’s Request

for Hrg. 2. Wrigley’s fear that the Court will rule against it on

the Motion to Strike is not a valid basis for holding a hearing.

See Promatek, 300 F.3d at 814 (preliminary injunction hearing is

required if the nonmoving party’s evidence raises genuine issues of

material fact.) Furthermore, Wrigley’s refusal to detail all of

the fact issues that it believes exist, Request for Hrg. 2 n. 2, is

grossly insufficient. As noted, the Court will not consider new

evidence and argument that would unfairly prejudice Wrigley. The

Court will note when and if it finds questions of fact

necessitating a hearing. 

C. Preliminary Injunction

The parties agree that, at this stage, Swerve IP’s state law

claims stand or fall with the federal claims, and have not

separately briefed them. The Court follows suit. 

As noted above, a party seeking a preliminary junction must

demonstrate a likelihood of success on the merits. Promatek, 300

F.3d at 811. The parties appear to agree that irreparable injury

- 5 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 5 of 22 PageID #:954
may be presumed from trademark infringement. The Seventh Circuit

arguably cast doubt on that proposition in a recent copyright case.

Flava Works, Inc. v. Gunter, --- F.3d ----, 2012 WL 3124826, at *1

(7th Cir. 2012) (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S.

388, 392–93(2006)). But cf. Am. Taxi Dispatch, Inc. v. Am. Metro

Taxi & Limo Co., 582 F.Supp.2d 999, 1005 (N.D. Ill. 2008) (applying

the presumption and citing, inter alia, eBay.). Given that the

Court is ordering a limited hearing, below, the Court applies the

agreed standard to this motion, but will entertain argument as to

the impact of eBay at that time. 

1. Likelihood of Success on the Merits

At this initial phase, the Court need only find that Swerve IP

has a non-negligible likelihood of success on the merits. Ty, Inc.

v. Jones Grp., Inc., 237 F.3d 891, 896-97 (7th Cir. 2001). To

prevail on the merits, Swerve IP must show that: (1) it has a

protectable trademark, and (2) there is a likelihood of confusion.

Id. at 897. This is a “reverse confusion” case – one in which a

junior user uses its size and market power to overwhelm a senior,

but smaller, mark user. See Custom Vehicles, Inc. v. Forest River,

Inc., 476 F.3d 481, 484 (7th Cir. 2007). 

Wrigley contends that the Court need not conduct the ordinary

analysis, because the Swerve IP’s feared harm is not actionable as

trademark infringement. Wrigley points to the deposition of Ivan

Echegarrua as establishing that the only harm Swerve IP fears is

- 6 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 6 of 22 PageID #:955
unrelated to the concern that its sweetener will be mistakenly

affiliated with Wrigley. Without going into confidential details,

the Court finds the testimony is not inconsistent with the kind of

confusion and loss of goodwill remediable under the Lanham Act. 

The testimony reflects a concern that Swerve gum’s flooding the

market would undermine the sweetener’s independent reputation for

being all-natural. Such a fear, the Court finds, implicitly

reflects the assumption that the customer would connect the brands,

consistent with a reverse confusion theory. Cf. Sands, Taylor &

Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992)

(noting that senior users are harmed when the “public comes to

assume that the senior user’s products are really the junior user’s

or that the former has become somehow connected to the latter.”).

a. Mark is entitled to Protection 

“The law recognizes five categories of trademarks, in

ascending order of distinctiveness: generic, descriptive,

suggestive, arbitrary, and fanciful.” Packman v. Chicago Tribune

Co., 267 F.3d 628, 638 (7th Cir. 2001). Swerve IP notes that the

mark’s federal registration is prima facie evidence of its

validity, see 15 U.S.C. § 1115(a). Wrigley does not argue that

“swerve” is not protectable, but claims that it is weak because it

is an English word and “not as arbitrary or fanciful as [the names

of] sweeteners like SPLENDA or NUTRASWEET.” Wrigley’s Opp’n to

Prelim. Inj. 23. The Court finds that from the consumer

- 7 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 7 of 22 PageID #:956
perspective, the mark is arbitrary as to the sweetener, but

suggestive as to the gum. It is therefore protectable. 

b. Likelihood of Confusion 

“Seven factors comprise the likelihood of confusion analysis:

(1) similarity between the marks in appearance and suggestion; (2)

similarity of the products; (3) area and manner of concurrent use;

(4) degree of care likely to be exercised by consumers; (5)

strength of the plaintiff’s mark; (6) actual confusion; and (7)

intent of the defendant to “palm off” his product as that of

another.” Packman v. Chicago Tribune Co., 267 F.3d 628, 643 (7th

Cir. 2001). No factor is dispositive, and which factors are most

important varies from case to case. Id.

“Reverse confusion” protects senior mark holders from the risk

of losing “the value of the trademark — its product identity,

corporate identity, control over its goodwill and reputation, and

ability to move into new markets” if the public comes to assume

that its product is that of, or connected with, the junior user.

Sands, Taylor & Wood Co., 978 F.2d at 957-58. If it appears

extremely likely that the mark holder will soon enter the junior

holder’s field, this factor weighs heavily in favor of injunctive

relief. Id. at 958. Furthermore, the protection applies to

products “closely related” to the senior user’s product – that is,

products which the public might think came from, or were affiliated

with, the same source. Id. at 958. 

- 8 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 8 of 22 PageID #:957
i. Similarity Between the Marks

Swerve IP argues that the word marks are identical. Wrigley

argues that, as presented in the marketplace, they are quite

different: Swerve IP uses “swerve,” in orange script, as a brand

name accompanied by the image of a multicolored bird. 5 Swerve

Gum, it notes, uses a different font and sleek, black, futuristic

packaging with a “pop” of color (mostly orange). Furthermore, it

notes that it makes “swerve” subordinate to the 5 and Wrigley

marks, placing it where 5 Gum consumers know to look for the gum’s

flavor, not its sweetener. Swerve IP rejoins that very few

consumers will make a side-by-side comparison, and that where one

word is particularly salient, it receives more weight. See Ty,

Inc., 237 F.3d at 898-99. 

The Court finds that Wrigley’s consistent association of

“swerve” with its other marks weighs in Swerve IP’s favor. Sands,

Taylor & Wood Co., 978 F.2d at 960. Nonetheless, as presented to

consumers, the marks are sufficiently different that this factor

tips slightly in Wrigley’s favor. The Court does not hold that the

marks are dissimilar as a matter of law. Cf. Chattanoga Mfg., Inc.

v. Nike, Inc, 140 F.Supp.2d 917, 925 (N.D. Ill. 2001) (declining to

find marks dissimilar as a matter of where the words were nearly

identical, and the other markings may not have fully mitigated the

similarity.) 

- 9 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 9 of 22 PageID #:958
ii. Product Similarity

The key issue here as to product similarity is whether the

products are related enough that the public might attribute them

(in source or affiliation) to a single producer. Ty, Inc., 237

F.3d at 900. The parties have focused extensively on their

customers’ demographics; although that information is not an

intuitive fit with this factor, other courts have considered it,

and the Court will do likewise. See Pathfinder Commc’ns Corp. v.

Midwest Commc’ns Co., 593 F.Supp. 281, 286 (D.C. Ind. 1984).

Swerve IP contends that the products are related, particularly

because of the “close relationship between sugar-free food products

and the non-sugar sweeteners (typically artificial) that such

products use.” Mem. in Supp. of Prelim. Inj. 8. Indeed, it

argues, Wrigley previously co-branded one of its gum brands with

the artificial sweetener NutraSweet. It offers examples of other

sugar-free gum and candy makers similarly co-branding (by, it

claims, putting a sweetener’s trademark in the same area of the

package where Wrigley puts “swerve” on 5 Gum). Furthermore, it

argues, the Lanham Act protects a mark holder’s ability to move

into a related field, and it plans to move Swerve sweetener further

into the mainstream gum and candy market. 

Wrigley is correct that not all food products are related. It

argues that artificially flavored gum and all-natural sweeteners

are not related and that there is no evidence that consumers

- 10 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 10 of 22 PageID #:959
attribute them to a single source. (Actual confusion, however, is

a separate factor.) Wrigley makes no sweeteners, and knows of no

sweetener company that makes gum; it has not co-branded its gum

with a sweetener since the 1980s, and even then, the sweetener mark

was accompanied by “sweetened with —.”

It also claims that Wrigley and Swerve IP’s customer bases are

very different: the sweetener targets diabetic- and health-friendly

companies and women ages 38-60+, while 5 Gum is mass marketed,

targeting users in their teens and twenties, not to a healthconscious population set. 5 Gum, it claims, is underrepresented in

gum sales to adults 35 and over. 

Wrigley further argues no mass-marketed all-naturally

sweetened chewing gum exists, because all-natural sweeteners cannot

cost-effectively provide the intensity and duration of sweetness

that mass-market customers demand. In addition to its expense and

short chewing life, erythritol “faces obstacles” to use in gum from

“numerous patents and patent applications” (some of which, it

seems, are Wrigley’s). These obstacles, Wrigley claims, defeat

Swerve IP’s hope to enter the chewing gum market – and indeed,

after 10 years, the sweetener’s only candy application seems to be

one “regional” diet praline company. 

In reply, Swerve IP argues that Wrigley’s relatedness argument

is hypocritical, given that it previously opposed other 030

trademark registrations for fear of confusion with its own Citrus

- 11 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 11 of 22 PageID #:960
Mint gum flavor. The Court declines to consider this new evidence

until Wrigley has a chance to respond in the hearing. 

Swerve IP next argues that Wrigley is wrong to claim that

there is no evidence of overlap between gum and sweetener makers,

pointing to several trademarks (like NutraSweet) which are

registered for both sweeteners and chewing gum. The Court grants

the Motion to Strike Exhibits 12-15, however, because they do not

directly respond to Wrigley’s argument; such cross-registrations,

especially without evidence of their use, do not illuminate

consumer perceptions. 

Swerve IP next attacks the claim that there are no massmarketed naturally sweetened chewing gums, arguing that Glee gum is

all-naturally sweetened and available in the same stores as Swerve

gum, and that Trident is sweetened with xylitol. (This evidence

appears to be disputed – as to where Glee is sold and whether

Trident’s xyltiol is synthetic – and is presented for the first

time in reply; the Court therefore sets it aside until the

hearing.) Swerve also argues that Wrigley ignores a number of gums

which advertise their all-natural sweeteners; their market,

however, is unclear. As to whether gums ever co-brand with

sweeteners, Swerve IP notes that it is currently negotiating with

a Wrigley competitor for possible Swerve sweetener use in, and cobranding with, a gum product. Those talks, however, have not yet

progressed to discussing terms. 

- 12 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 12 of 22 PageID #:961
Swerve also argues that the products’ customer groups overlap.

It notes that even if 5 Gum is under-represented in the adult

market, sales to that group are still substantial; therefore, even

if Swerve sweetener is generally marketed at retail to women

aged 38-60+, the customer bases overlap. The Court finds that

Wrigley is unlikely to be prejudiced by Swerve IP’s Reply

Exhibit 18, which responds to Wrigley’s argument and which Wrigley

produced in discovery; nonetheless, the Court takes Swerve IP’s

point, even without that exhibit. This, however, does not throw

open the door to all demographic evidence; Swerve IP’s new evidence

regarding the target demographics of magazines in which Wrigley has

advertised (Exs. 18-24) is appropriately disregarded at this stage.

Finally, Swerve IP argues, any “incidental distinction between

the target demographics here fails” when one considers that Swerve

gum is displayed at the checkout lines of mass-market stores, and

is therefore exposed to all demographics. 

Even having declined to consider nearly all of Swerve IP’s

evidence in reply, the Court finds that this factor favors Swerve

IP. It appears that other manufacturers, and even Wrigley in the

1980s, have co-branded gum and candy products with sweeteners.

Accordingly, the public may well believe that Swerve sweetener has

somehow become affiliated with sugar-free Swerve gum. Furthermore,

Wrigley’s own evidence tacitly acknowledges that the customer

groups may overlap. Therefore, while the Court reserves judgment

- 13 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 13 of 22 PageID #:962
on the final strength and weight of this factor until the hearing,

it currently favors Swerve. 

iii. Area and Manner of Concurrent Use

Several factors are relevant to whether to products are

related in terms of use, promotion, sales or distribution such that

their area and manner of concurrent use supports a finding of

confusion, including: their geographical distribution areas, any

competition between them, whether they are sold in the same section

and type of store, and whether they are sold through the same

marketing channels. See Ty, Inc., 237 F.3d at 900. 

Swerve IP contends that both products are sold nationwide, and

through online retailers such as Amazon.com. Furthermore, it

argues, Swerve gum is sold in the same physical stores, like

convenience stores, as other sugar substitutes. Both are marketed

through same social media channels (Facebook and Twitter).

Accordingly, it contends, the products will likely be encountered

by the same consumers.

Wrigley claims that being sold through the same online megaretailer hardly makes the products similar. Wrigley emphasizes

that it sells chewing gum and candy, not their ingredients, and

does not sell goods in health or specialty stores (which comprise

most of Swerve IP’s retail presence). It emphasizes that Swerve

Sweetener is carried in only a few “regional” grocery stores, and

that even if it gains wider distribution, it would likely still be

- 14 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 14 of 22 PageID #:963
in the baking or health food aisles. Finally, Wrigley argues any

overlap is limited by Swerve IP’s “extreme regionality.”

In reply, Swerve IP stresses that the products are sold in the

same “specialty section” of Amazon.com. Furthermore, it contends,

Wrigley admits that both products are sold in “grocery stores”; the

fact that the sweetener is not yet sold in the biggest chain stores

“is but a consequence of its size.” Reply 14 n.9. It stresses

that Swerve gum and some “natural sweeteners” may be sold in the

same general area of physical stores, and that even if they are

sold in different aisles, Swerve gum gains wide exposure by being

sold in checkout aisles. Finally, it contends that even if Swerve

gum is no longer advertised, it has already reached a high market

saturation. 

The Court agrees that being sold through Amazon.com, or

marketed through social media, is hardly unique, and that a very

small portion of Wrigley’s sales are online. Though neither party

discusses it as such, however, the Court notes that online stores

operate in part through keyword searches, which seems to increase

the likelihood that customers will encounter the products and

promotional materials together. Furthermore, Wrigley appears to

concede that a few “regional” grocery stores may sell both

products, though where in the store is unclear. This factor is too

close to weigh heavily in favor of either party, but slightly

favors Swerve IP. 

- 15 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 15 of 22 PageID #:964
iv. Degree of Care Exercised by Consumers

The level of care exercised by consumers is a significant

factor in assessing the likelihood of confusion. Rust Env’t &

Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1217 (7th Cir.

1997). Although in forward confusion cases both parties’ customers

are relevant, see CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660,

682-83 (7th Cir. 2001), the Court finds persuasive those cases

which find the senior user’s customers more important in reverse

confusion cases. Matrix Motor Co., Inc. v. Toyota Jidosha

Kabushiki Kaisha, 290 F.Supp.2d 1083, 1095 (C.D. Cal. 2003). The

less expensive the product, the less care consumers are expected to

use. CAE, Inc., 267 F.3d at 682-83. 

Although Swerve may be more expensive than some other sugar

substitutes, the Court agrees that both products are cheap enough

not to trigger a great deal of consumer scrutiny. Wrigley further

objects, however, that Swerve IP conceded that its customers – like

most consumers of health food and diet-related products – shop

somewhat carefully. 

In reply, Swerve IP contends that “[i]t is precisely because

[Swerve IP’s] customers care about the type of sweeteners that are

in the products they buy that the loss of control over the mark is

so important. Consumers who care about natural ingredients are

more likely to draw upon their recollections about the ingredients

than consumers who are unconcerned with an artificial sweetener.”

- 16 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 16 of 22 PageID #:965
Reply 15. It is unclear, however, how that leads to confusion –

whether, for example, consumers will see the Swerve mark on the

front of the gum package and notice the lack of natural sweeteners,

or will be drawn initially to swerve gum by the association with a

natural sweetener. Cf. Promatek, 300 F.3d at 812-13 (explaining

initial interest confusion). (Absent any other discussion of

initial interest confusion, the Court presumes former.) In any

event, given the lack of dispute that Swerve IP’s customers - the

more relevant group here – use some degree of care, this factor

tips slightly in favor of Wrigley. 

Swerve IP further argues that it is currently negotiating with

a Wrigley competitor, and once swerve sweetener is introduced as an

ingredient in mass market gums and candies, any distinction between

the parties’ customers will disappear. This motion seeks a

preliminary, rather than permanent, injunction, however. Absent

any indication that such production is likely during the pendency

of this case, the Court concludes that it need not factor in that

scenario at this time. 

v. Strength of Complainant’s mark

The “strength” of a trademark refers to the mark’s

distinctiveness and ability or tendency to identify the goods sold

under that mark as originating from a particular source. Sands,

Taylor & Wood Co., 978 F.2d at 959. In reverse confusion cases,

the focus is on the junior use of the mark. Id. If the marks are

- 17 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 17 of 22 PageID #:966
identical and the products closely related, this factor matters

little, but this Court has already found that the marks are

presented differently to the public. The Court has also found, as

noted, that the mark is arbitrary as to the sweetener, and

suggestive as to the gum. 

Swerve IP argues that the mark is commercially strong because

Wrigley, a leading gum manufacturer, has promoted 5 Gum nationwide.

Wrigley objects that the Swerve gum mark has not reached a market

saturation sufficient to create reverse confusion. It offers no

authority for what that point is, but stresses that it does not

now, and does not plan to, advertise the Swerve flavor

specifically. Wrigley is skeptical that the Swerve flavor has

unique goodwill, and that gum flavors (as opposed to brands) become

famous. It emphasizes that the flavor name is always subordinate

to the Wrigley and 5 Gum marks in packaging and past advertising

(as noted above, however, this does little to help its case). 

Swerve IP rejoins that, Wrigley’s own evidence makes 5 Gum the

third most popular in the country (though, the Court notes, that

includes all 5 Gum flavors). The Court declines to consider Swerve

IP’s newly-offered Exhibits 19 and 26, but finds adequate support

for 5 Gum’s large market presence, and the swerve flavor’s

notoriety within that brand (see, e.g., the February 2012 Swerve

advertisement in Rolling Stone) in the previous evidence. Although

- 18 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 18 of 22 PageID #:967
Swerve gum may not dominate the chewing gum market, this factor

weighs marginally in Swerve IP’s favor. 

vi. Actual Confusion

There appears to be no dispute that there is no evidence of

actual confusion. Although actual confusion is not necessary, see

Id. at 960, this factor weighs in favor of Wrigley. 

vii. Intent

Intent is irrelevant in a reverse confusion case. Id.

(Whether Wrigley knowingly ignored Swerve IP’s trademark is

relevant – just in balancing the harms. Ideal Indus. Inc. v.

Gardner Bender, Inc., 612 F.2d 1018, 1026 (7th Cir. 1979)). 

Although many of these factors present close questions and not

all of them favor Swerve IP, the Court concludes that Swerve IP has

shown a better than negligible chance of prevailing. 

2. No Adequate Remedy at Law/Irreparable Harm 

Swerve IP also must prove that it has no adequate remedy at

law, and will suffer irreparable harm absent an injunction.

Promatek, 300 F.3d at 813. The parties agree that there is a

presumption of irreparable damages in trademark infringement cases.

The debate is whether Wrigley overcame that presumption. 

Wrigley argues that, by its ever-increasing settlement

demands, Swerve IP admits that any harm to it is compensable.

Wrigley claims to offer the settlement evidence to prove Swerve

IP’s financial motive for this injunction, not to prove that

- 19 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 19 of 22 PageID #:968
confusion is unlikely. The Court nonetheless finds the evidence

barred by FED. R. EVID. 408, which excludes evidence of settlement

negotiations offered “to prove or disprove the validity or amount

of a disputed claim” or to impeach a witness. Although this

situation is an awkward fit with the Rule’s language, the Rule is

to be interpreted to further its purpose of encouraging settlement.

Bankcard Am., Inc. v. Universal Bancard Sys., Inc., 203 F.3d 477,

484 (7th Cir. 2000). 

Wrigley essentially asks the Court to use the settlement

evidence to reject the type, rather than the “amount,” of claimed

damages. Nonetheless, the Court finds that it would better serve

the purpose of the Rule to exclude this evidence than to allow any

settlement talks involving financial consideration to undermine a

claim for injunctive relief. That the talks originated around the

TTAB proceeding does not change the result. The TTAB proceeding is

closely tied to this one, and the Court is aware of no strong

policy favoring admission under these circumstances. Cf. Zurich

Am. Ins. Co. v. Watts Indus., Inc., 417 F.3d 682, 690 (7th Cir.

2005) (finding that the policy behind Rule 408 was not thwarted “in

the instant case” by admitting a letter from a “not totally

unrelated” case).

Apart from the settlement evidence, Wrigley argues the Swerve

IP peddles the sweetener to food manufacturers, on a branded or

unbranded basis, regardless of whether the end product would be (or

- 20 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 20 of 22 PageID #:969
is) all natural. It has thus, Wrigley claims, put its reputation

and goodwill up for sale. The Court agrees with Swerve IP,

however, that there is a critical distinction between licensing an

all-natural sweetener for use in a product that is not all-natural,

and associating the brand with a product which uses only artificial

sweeteners. 

Wrigley’s cited cases do not support it. The discussion to

which it cites in 20th Century Fox Film Corp. v. Marvel Enter.,

Inc., 155 F.Supp.2d 1, 43-44 (S.D.N.Y. 2001) addressed an

injunction on a breach of contract claim. In Johnson Pub. Co.,

Inc. v. Willitts Designs Intern., Inc., No. 98 C 2653, 1998 WL

341618, at *8 (N.D. Ill. June 22, 1998), the court noted that the

presumption was sufficient to establish irreparable injury, despite

finding the case weakened by the moving party’s delay in seeking

relief. Although Wrigley suggests some delay, see Opp’n at 7, it

makes no concerted argument to that end, or about being lulled into

a false sense of security. See Ty, Inc., 237 F.3d at 902-03.

Accordingly, assuming that the presumption of irreparable harm

applies, Wrigley has failed to overcome it. 

3. Harm to Wrigley

Wrigley contends that it would be irreparably harmed both

financially and intangibly by an injunction. It contends that its

immediate financial loss would exceed $2 million, including

packaged inventory, “raw materials, lost sales, and rebranding

- 21 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 21 of 22 PageID #:970
costs.” Wrigley Opp’n 14. Furthermore, it contends, its

relationships with distributors and retailers, including its share

of shelf space, would irreparably suffer. 

Wrigley’s supporting evidence, however, is very general, and

plays coy regarding important issues such as the breakdown of these

financial harms, the projected life of the Swerve flavor, and what

if any alternate products are in development. Furthermore, there

appears to conflicting evidence regarding whether the Swerve flavor

could be replaced in stores by another Wrigley product.

Accordingly, the Court finds that the question of Wrigley’s likely

harm, and therefore the balancing of the harms to the respective

parties (and the public), and setting the amount of any necessary

bond, requires a hearing. 

IV. CONCLUSION

For the reasons stated herein, Wrigley’s Motions to Strike and

for a Hearing are granted in part and denied in part. Swerve IP’s

Motion for a Preliminary Injunction is continued, pending a hearing

on the issues identified herein.

IT IS SO ORDERED.

Harry D. Leinenweber, Judge

United States District Court

DATE:9/28/2012

- 22 -

Case: 1:11-cv-09274 Document #: 55 Filed: 09/28/12 Page 22 of 22 PageID #:971