FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

JL BEVERAGE COMPANY, LLC,

Plaintiff-Counter-DefendantAppellant,

v.

JIM BEAM BRANDS CO.; BEAM

SUNTORY INC.,

Defendants-Counter-PlaintiffsAppellees.

No. 13-17382

D.C. No.

2:11-cv-00417-

MMD-CWH

OPINION

Appeal from the United States District Court

for the District of Nevada

Miranda M. Du, District Judge, Presiding

Argued and Submitted January 8, 2016

San Francisco, California

Filed July 14, 2016

Before: J. Clifford Wallace, John T. Noonan,

and Marsha S. Berzon, Circuit Judges.

Opinion by Judge Wallace
2 JL BEVERAGE V. JIM BEAM BRANDS

SUMMARY*

Trademark

The panel reversed the district court’s summary judgment

in favor of Jim Beam Brands Co. on claims of trademark

infringement, false designation of origin, and unfair

competition brought under the Lanham Act and Nevada state

law by JL Beverage Co., which sells a competing line of

flavored vodkas.

The panel held that the district court erred in failing to

place the burden of proof on Jim Beam Brands, the moving

party; failing to view the evidence in the light most favorable

to JL Beverage; and never analyzing whether a genuine

dispute of material fact existed.

The panel held that genuine issues of material fact

remained as to the likelihood of consumer confusion between

plaintiff’s registered “Johnny Love Vodka” and “JL Lips”

marks and defendant’s “Pucker Vodka” logo. A reasonable

fact-finder could conclude that plaintiffs’ marks had

conceptual strength and either did or did not have commercial

strength, that the parties’ products were related flavoredliquor products sold to the same customers and distributors,

that the products were similar, that consumers purchasing the

products were not likely to exercise a high degree of care in

distinguishing between the two, and that Jim Beam was aware

of JL Beverage’s trademarks prior to rolling out its Pucker

* This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
JL BEVERAGE V. JIM BEAM BRANDS 3

Vodka line. The panel therefore reversed and remanded for

further proceedings consistent with its opinion.

COUNSEL

Colin Christopher Holley (argued), Jeremy T. Katz, and

George L. Hampton, Hampton Holley, Corona Del Mar,

California; Ryan R. Gile, Weide & Miller, Las Vegas,

Nevada; for Plaintiff-Counter-Defendant-Appellant.

Mark J. Liss (argued), Claudia Stangle, and Angela Baylin,

Leydig, Voit & Mayer, Chicago, Illinois; Jonathan Fountain

and Michael McCue, Lewis Roca Rothgerber, Las Vegas,

Nevada; for Defendant-Counter-Plaintiff-Appellee.

OPINION

WALLACE, Senior Circuit Judge:

JL Beverage Company, LLC (JL Beverage) appeals from

the district court’s summary judgment in favor of Jim Beam

Brands Company (Jim Beam) on JL Beverage’s trademark

infringement, false designation of origin, and unfair

competition claims. We have jurisdiction pursuant to

28 U.S.C. § 1291. Because genuine issues of material fact

remain, we reverse and remand for further proceedings

consistent with this opinion.

I.

This dispute centers on two alcoholic beverage

manufacturers, JL Beverage and Jim Beam, which sell
4 JL BEVERAGE V. JIM BEAM BRANDS

competing lines of flavored vodkas. JL Beverage

manufactures, sells, and promotes a line of flavored and

unflavored vodka called “Johnny Love Vodka.” Restaurant

owner and bartender Johnny Metheny created the Johnny

Love line of vodkas around 2003–2004. To promote the new

line, Metheny enlisted a friend to design a unique logo, and

Metheny quickly adopted the proposed lips image. He

believed the lips were “definitely sexy” and could “impart the

flavor” of the vodka if colored to denote the flavor in the

bottle of vodka. The lips were colored red for unflavored,

purple for passionfruit, yellow for aloha, orange for tangerine,

and green for apple. In 2005, Metheny sold the Johnny Love

Vodka line to JL Beverage.

Since July 2005, JL Beverage has used the following two

trademarks in connection with its sale of the Johnny Love

Vodka products:

The first mark, called “Johnny Love Vodka” or the “JLV

mark,” was registered on August 16, 2005, with the United

States Patent and Trademark Office (USPTO) as Registration

No. 2, 986,519 in International Class 33-Vodka. JL Beverage

registered the second mark, called the “JL Lips Mark,” with
JL BEVERAGE V. JIM BEAM BRANDS 5

USPTO on October 25, 2011 under Registration No.

4,044,182 in International Class 33-Distilled Spirits. Both

images appear on the Johnny Love line of vodkas and

flavored vodkas:

The JL Lips Mark is imprinted on the top of the bottle and on

the back label, and is incorporated into the JLV Mark as the

“o” in “Love.” The mark color on the back label also

corresponds to the flavor in the bottle:

The Johnny Love Vodka bottles come in four different sizes.
6 JL BEVERAGE V. JIM BEAM BRANDS

After acquiring Johnny Love Vodka and the two

trademarks, JL Beverage expended substantial resources

developing, advertising, and marketing Johnny Love Vodkas

throughout the United States. JL Beverage at one point had

distributors in twenty states, and it holds a Federal Basic

Alcohol Permit for national use. JL Beverage’s nationwide

marketing campaign included print-media advertisements,

third-party publications, and the development of its own

website. Although in recent years its sales have been

substantially reduced, its overall marketing efforts resulted in

millions of dollars in sales of Johnny Love products

throughout the country.

In 2010, Jim Beam entered the flavored vodka market

with a new line of flavored vodkas called “Pucker Vodka.”

Jim Beam purchased the Pucker brand from Koninklijke De

Kuyper, B.V. (KDK). KDK had marketed a line of liqueurs

and cordials under the “Pucker” brand, and, in its original

design, used lips images in connection with its labeling and

logos. After Jim Beam purchased KDK’s flavored vodka line,

it decided to redesign and rebrand Pucker to “expand on the

equity of the Pucker brand and lips” into flavored vodka.” To

that end, Jim Beam hired the design firm of Libby, Perszyk,

Kathman, Inc. (LPK) to independently “develop a new and

unique look and feel” for its Pucker vodka product that would

communicate “[i]ntense flavor and [i]ntense fun” in

connection with the brand.

The redesigned Pucker Vodka bottle contains a prominent

lips image on the center of its label. Like the Johnny Love

Vodka labels, the lips image varies in color depending on the

vodka flavor in the bottle:
JL BEVERAGE V. JIM BEAM BRANDS 7

Jim Beam instructed LPK to use both the Pucker name and

lips as part of any design it developed for Pucker’s new label.

After LPK provided Jim Beam with several possible design

options, Jim Beam’s project team made final selections of the

proposed Pucker Vodka products and sent their choices to the

company’s legal department for clearance. Jim Beam

instructed its legal counsel to perform a clearance search for

lips designs. The legal department found 40 references to lips

for alcohol-related products. JL Beverage’s JLV Mark was in

the search report. Although JL Beverage’s Lips Mark is

incorporated into the JLV Mark, it did not separately appear

in the search report because JL Beverage had not yet filed its

registration application for the standalone lips mark. Based on

its research, Jim Beam’s legal department approved the

Pucker brand’s bottle shape and label.

Emily Johnson, a former Jim Beam employee, worked for

Jim Beam as a financial and business analyst during the

development of the Pucker Vodka product. Prior to her

employment at Jim Beam, Johnson met JL Beverage’s
8 JL BEVERAGE V. JIM BEAM BRANDS

president, T.J. Diab, and learned about JL Beverage’s

products. In March 2010, during her employment at Jim

Beam, she sent an email to Diab from her home account,

which stated “I was reading through some reporting on vodka

flavors and saw Aloha on the list!”

Jim Beam attempted to register the Pucker lips design

around March 2011, filing applications for trademarks in the

bottle and cap, the stylized Pucker wording, and the lips

design. After the registration process began, an official in Jim

Beam’s legal department discovered that the lips mark that

LPK had selected to be featured in the center of the Pucker

Vodka label was “stock art” from iStockphoto LP. Because

Jim Beam could not claim ownership in the lips image, it

withdrew its USPTO application for the lips design.

Prior to withdrawal, Jim Beam also received notice from

the USPTO that it had rejected Jim Beam’s registration

application. In the rejection letter, the USPTO cites JL

Beverage’s Lips Mark as a basis for refusing the registration.

JimBeamofficiallyrelaunched its newly-designedPucker

Vodka products in March and April 2011. Jim Beam

advertises Pucker Vodka products nationally through

television and cable commercials, digital advertising, print

advertisements in national magazines, and in-store and onpremise promotions at restaurants and bars.

Shortly after the Pucker Vodka launch, Shaun Robertson,

a JL Beverage broker for Johnny Love Vodka, began

receiving phone calls and messages concerning the

similarities between the two vodkas. Robertson provided, in

a declaration to the court, a summary of in-person

conversations, text messages, and phone calls he had with
JL BEVERAGE V. JIM BEAM BRANDS 9

friends and acquaintances in which those individuals

confused a different flavored vodka product for JohnnyLove.

JL Beverage delivered a cease and desist letter to Jim

Beam on March 18, 2011. Jim Beam responded that it did not

believe its Pucker Vodka logo infringed JL Beverage’s mark.

JL Beverage filed a complaint in the United States District

Court for the District of Nevada in July 2011, alleging

trademark infringement, false designation of origin, and

unfair competition. JL Beverage moved for preliminary

injunction, which the district court denied. JL Beverage and

Jim Beam then filed cross-motions for summary judgment.

The district court denied JL Beverage’s motion and granted

Jim Beam’s motion. The district court subsequentlydenied JL

Beverage’s motion for reconsideration.

II.

We review the district court’s summary judgment de

novo, including its decision on cross-motions for summary

judgment. Szajer v. City of L.A., 632 F.3d 607, 610 (9th Cir.

2011); Guatay Christian Fellowship v. Cty. of San Diego,

670 F.3d 957, 970 (9th Cir. 2011). Viewing the evidence in

the light most favorable to the nonmoving party, we

determine whether there are any genuine issues of material

fact. Olsen v. Idaho State Bd. of Med., 363 F.3d 916, 922 (9th

Cir. 2004). We review the district court’s conclusions of law

de novo, and its factual findings for clear error. Id.; Lahoti v.

VeriCheck, Inc., 586 F.3d 1190, 1195–96 (9th Cir. 2009). 

“[W]here it is unclear whether the district court relied on

proper law, we may vacate the judgment and remand with

instructions to apply the correct legal standard.” Lahoti,

586 F.3d at 1196 (citing United States v. Pintado-Isiordia,

448 F.3d 1155, 1158 (9th Cir. 2009)).
10 JL BEVERAGE V. JIM BEAM BRANDS

This appeal turns in large part on whether the district

court correctly applied the standard for deciding a motion for

summary judgment. The success of each of JL Beverage’s

claims turns on the same issue: whether there was a genuine

dispute of material fact as to the likelihood of consumer

confusion. JL Beverage asserts the following claims:

(1) federal trademark infringement under the Lanham Act,

15 U.S.C. § 1114; (2) false designation of origin and unfair

competition under the Lanham Act, 15 U.S.C. § 1125(a); and

(3) Nevada common law trademark infringement and unfair

competition. The likelihood of consumer confusion is central

to each claim. See 15 U.S.C. § 1114(1)(a) (providing that a

person is liable for trademark infringement where he or she

“use[s] in commerce any reproduction, counterfeit, copy, or

colorable imitation of a registered mark in connection with

the sale, offering for sale, distribution, or advertising of any

goods or services on or in connection with which such use is

likely to cause confusion, or to cause mistake, or to deceive”)

(emphasis added); A.L.M.N. v. Rosoff, 104 Nev. 274, 277, 281

(1988) (holding that Nevada’s common law trademark

infringement and unfair competition claims mirror their

federal counterparts, and plaintiffs need only prove that

(1) they own a protectable right in the marks, and (2) the

defendant’s use of the mark is likely to “confuse, cause

mistake, or deceive an ‘appreciable number’ of reasonable

customers” with respect to the marks).

In its summary judgment ruling, the district court used the

standard applicable to preliminary injunctions instead of the

standard for summary judgment rulings. The district court,

having alreadyruled on JLBeverage’s motion for preliminary

injunction, continued to apply the standard it used at that

stage when it ruled on the parties’ cross-motions for summary

judgment. In its summary judgment order, the district court
JL BEVERAGE V. JIM BEAM BRANDS 11

concluded: “[f]or reasons articulated in the Order denying the

Preliminary Injunction, the Court determines that no issues of

material fact remain which could provide Plaintiff a basis for

success on any of its claims. Defendant’s Motion for

Summary Judgment is accordingly granted.”

The district court’s failure to apply the correct standard is

significant: on motion for preliminary injunction, the

plaintiff–as the moving party–bearsthe burden of establishing

the merits of its claims. See Winter v. Nat. Res. Def. Council,

Inc., 555 U.S. 7, 20 (2008). In contrast, on a defendant’s

motion for summary judgment, not only does the movant

carry the burden of establishing that no genuine dispute of

material fact exists, but the court also views the evidence in

the light most favorable to the non-moving party. See, e.g.,

Olsen, 363 F.3d at 922. The defendant-movant must

demonstrate that, even viewing the evidence in the light most

favorable to the plaintiff, the plaintiff cannot satisfy its

burden to prove its claims. See Celotex Corp. v. Catrett,

477 U.S. 317, 322–23 (1986).

But in its summary judgment order, the district court

ignored the important distinctions between the two standards,

and, when ruling on the defendant’s motion for summary

judgment, ultimately placed the burden on JL Beverage, the

plaintiff, to prove the merits of its claims. Moreover, it failed

to view the evidence in the light most favorable to JL

Beverage, and never analyzed whether a genuine dispute of

material fact existed.

While the district court must apply the correct standard in

any case, the necessity to do so is heightened in cases turning

on the likelihood of consumer confusion. Because the

determination is based on a non-exhaustive, multi-factor,
12 JL BEVERAGE V. JIM BEAM BRANDS

fact-intensive inquiry, we have cautioned against granting

summary judgment in these cases. Rearden LLC v. Rearden

Commerce, Inc., 683 F.3d 1190, 1210 (9th Cir. 2012) (“Given

the open-ended nature of this multi-prong inquiry, it is not

surprising that summary judgment on ‘likelihood of

confusion’ grounds is generally disfavored”); Au-Tomotive

Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1075

(9th Cir. 2006) (“Because the likelihood of confusion is often

a fact-intensive inquiry, courts are generally reluctant to

decide this issue at the summary judgment stage”); Thane

Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901–02 (9th

Cir.2002) (“We have cautioned that district courts should

grant summary judgment motions regarding the likelihood of

confusion sparingly, as careful assessment of the pertinent

factors that go into determining likelihood of confusion

usually requires a full record”), superseded by statute on

other grounds, 15 U.S.C. § 1125. Where, as here, conflicting

facts render it unclear whether there was a likelihood of

consumer confusion, summary judgment is inappropriate.

III.

To determine whether a likelihood of consumer confusion

exists, our court relies on the eight-factor Sleekcraft test,

which reviews: (1) the strength of the mark; (2) proximity or

relatedness of the goods; (3) similarity of the marks;

(4) evidence of actual confusion; (5) marketing channels

used; (6) type of goods and the degree of care likely to be

exercised by the purchaser; (7) the defendant’s intent in

selecting the mark; and (8) the likelihood of expansion of the

product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,

348–49 (9th Cir. 1979), abrogated in part on other grounds

by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792,

810 (9th Cir. 2003). The factors are non-exhaustive and
JL BEVERAGE V. JIM BEAM BRANDS 13

applied flexibly; the Sleekcraft factors are not intended to be

a “rote checklist.” Rearden, 683 F.3d at 1209. “A

determination may rest on only those factors that are most

pertinent to the particular case before the court, and other

variables besides the enumerated factors should also be taken

into account based on the particular circumstances.” Id.

Utilizing the eight-factor test, plaintiffs may establish a

likelihood of consumer confusion as a result of either

(1) forward confusion, or (2) reverse confusion. Surfvivor

Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir.

2005). JL Beverage alleges both forward and reverse

trademark confusion. “Forward confusion occurs when

consumers believe that goods bearing the junior mark came

from, or were sponsored by, the senior mark holder.” Id.

Reverse confusion, on the other hand, “occurs when

consumers dealing with the senior mark holder believe that

they are doing business with the junior one.” Id.

In its order denying a preliminary injunction, the district

court determined that factors two, five, and six of the

Sleekcraft test favor JLBeverage and a finding of a likelihood

of confusion. Jim Beam does not dispute that these factors

favor JL Beverage. Rather, Jim Beam contends that there is

no genuine dispute of material fact concerning factors one,

three, four, and seven, and, accordingly, no genuine dispute

of material fact concerning a likelihood of confusion. So the

issue before us is whether, viewing the evidence in the light

most favorable to JL Beverage, there is a genuine dispute of

material fact concerning whether factors one, three, four, and

seven favor JLBeverage, and, accordingly, a genuine dispute

of material fact as to the likelihood of consumer confusion.
14 JL BEVERAGE V. JIM BEAM BRANDS

A.

JL Beverage contends that there is a factual dispute as to

the strength of its standalone lips logo (Lips Mark) and

composite mark consisting of the lips logo and the words

“Johnny Love Vodka” (JLV Mark). We examine the strength

of JL Beverage’s mark to determine the scope of trademark

protection to which the mark is entitled. Surfvivor, 406 F.3d

at 631 (citing Entrepreneur Media, Inc. v. Smith, 279 F.3d

1135, 1141 (9th Cir. 2002)). As the uniqueness of the mark

increases, so too does the degree of protection. Id. A mark’s

strength is “evaluated in terms of its conceptual strength and

commercial strength.” GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199, 1207 (9th Cir. 2000).

A mark’s conceptual strength “depends largely on the

obviousness of its connection to the good or service to which

it refers.” Fortune Dynamic, Inc. v. Victoria’s Secret Stores

Brand Mgmt., Inc., 618 F.3d 1025, 1032–33 (9th Cir. 2010).

To determine a mark’s conceptual strength, we classify a

mark along a spectrum of five categories ranging from

strongest to weakest: arbitrary, fanciful, suggestive,

descriptive, and generic. Network Automation, Inc. v.

Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir.

2011). Arbitraryand fanciful marks, which employwords and

phrases with no commonly understood connection to the

product, are the two strongest categories, and “trigger the

highest degree of trademark protection.” Surfvivor, 406 F.3d

at 631. In the middle of the spectrum are suggestive marks,

which suggest a product’s features and require consumers to

exercise some imagination to associate the suggestive mark

with the product. Fortune Dynamic, 618 F.3d at 1033, (citing

Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108,

1114 (9th Cir. 2010)). Descriptive and generic marks, at the
JL BEVERAGE V. JIM BEAM BRANDS 15

other end of the spectrum, are the two weakest categories.

Descriptive marks define a particular characteristic of the

product in a way that does not require any imagination, while

generic marks describe the product in its entirety and are not

entitled to trademark protection. Surfvivor, 406 F.3d at 632.

After identifying whether a mark is generic, descriptive,

suggestive, arbitrary, or fanciful, the court determines the

mark’s commercial strength. Miss World (UK) Ltd. v. Mrs.

Am. Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988),

abrogated in part on other grounds by Eclipse Assocs. Ltd. v.

Data Gen. Corp., 894 F.2d 1114, 1116 n.1 (9th Cir. 1990).

Commercial strength “is based on actual marketplace

recognition.” Network Automation, 638 F.3d at 1149 (citation

omitted). As a result, advertising expenditures, which

increase marketplace recognition, offer evidence of

commercial strength and “can transform a suggestive mark

into a strong mark.” Id. (citation omitted).

JL Beverage has alleged both forward and reverse

confusion claims. The JLV and Lips Marks’ conceptual and

commercial strength plays a different role in each type of

claim. “In the usual [forward] infringement case,” the court

“determine[s] whether the junior user is palming off its

products as those of the senior user.” Dreamwerks Prod.

Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129–30 (9th Cir.

1998). Consequently, for JL Beverage’s claim of forward

confusion, we evaluate the conceptual and commercial

strength of the JLV and Lips Marks to determine whether a

customer interested in purchasing vodka would be confused

into thinking that JL Beverage produces Jim Beam’s Pucker

Vodka, or that Johnny Love Vodka is the same product as

Pucker Vodka. In contrast, in claims of reverse confusion, the

question is “whether consumers doing business with the
16 JL BEVERAGE V. JIM BEAM BRANDS

senior user might mistakenly believe that they are dealing

with the junior user.” Id. at 1130. As a result, the court

evaluates the conceptual strength of JLBeverage’s marks and

compares it to the commercial strength of Jim Beam’s mark. 

Id. at 1130 n.5.

1.

We turn first to analyzing the JLV and JL Lips Marks’

conceptual strength. Jim Beam contends the JLV Mark is

descriptive because it contains the word “vodka,” and

therefore describes the product. Jim Beam, however, ignores

the color-coordinated feature of the JLV Mark. Instead of just

labeling the bottle “vodka,” the JLV Mark has colorcoordinated lips that match a particular flavor. Reasonable

jurors, viewing the Mark in its entirety, could conclude that

the Mark is suggestive because they must use their

imaginations to connect the color of the lips to the vodka

flavor.

Jim Beam also contends that the Lips Mark has weak

conceptual strength. Jim Beam overlooks that the salient

feature of the Lips Mark–the lips–have no commonly

understood connection with the alcohol product it represents.

As a result, a fact-finder could reasonably conclude that the

Lips Mark is arbitrary, garnering the highest degree of

trademark protection.

Jim Beam counters that the Lips Mark is part of a

“crowded field” of similar lips logos, and thus there is less

likelihood of consumer confusion. Jim Beam argues that JL

Beverage waived its right to contest this issue on appeal

because it failed to raise it before the district court. However,

because the district court considered this issue, it is not
JL BEVERAGE V. JIM BEAM BRANDS 17

waived on appeal. Cmty. House, Inc. v. City of Boise,

490 F.3d 1041, 1054 (9th Cir. 2007) (“[E]ven if a party fails

to raise an issue in the district court, we generally will not

deem the issue waived if the district court actually considered

it”). Returning to the issue, when “the marketplace is replete

with products using a particular trademarked” symbol, it

“indicates not only the difficulty in avoiding its use but also,

and directly, the likelihood that consumers will not be

confused by its use.” Entrepreneur Media, Inc. v. Smith,

279 F.3d 1135, 1144 (9th Cir. 2002). Jim Beam has provided

several examples of lips marks used on product labels for

different types of alcohol. The lips logos Jim Beam presents,

however, lack the crucial feature of the Lips Mark: unlike the

Lips Mark, they are not color-coordinated by flavor for an

entire line of flavored vodkas.

In addition, the vast majority of the products on which

lips are used are not liquor products, but rather beer, wine, or

non-alcoholic beverages. In that regard, the parties dispute

how broadly the relevant market should be characterized for

the purposes of evaluating whether the field is crowded with

lips uses. In other words, there are genuine disputes of

material fact as to what constitutes the relevant “field,”

whether the field is “crowded,” and the effect of the

foregoing on the likelihood of confusion analysis. See also

Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc.,

679 F.3d 410, 420–21 (6th Cir. 2012) (agreeing with the

district court that, in a trademark dispute between a bourbon

maker and a tequila maker, the relevant market was not “all

distilled spirits,” but rather a narrower field); Fleischmann

Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 159–60

(9th Cir. 1963) (calling, in a pre-Sleekcraft case, scotch

whiskey and beer “related” for purposes of the likelihood of

confusion). Perhaps most importantly, the impact of a
18 JL BEVERAGE V. JIM BEAM BRANDS

“crowded field” of lips logos is not dispositive in determining

a mark’s conceptual strength; rather, it is but one factor a

court considers in evaluating the overall strength of the mark.

See Entrepreneur Media, 279 F.3d at 1143–44.

Here, the district court failed to construe the evidence

concerning the JLV and Lips Marks’ conceptual strength in

the light most favorable to JL Beverage to determine whether

a genuine dispute of material fact exists. Had the district court

applied the correct standard, it may well have concluded that

the Marks’ conceptual strength placed the Marks in a

category that warranted a higher degree of protection.

2.

We now turn to the second step of our inquiry: the Marks’

commercial strength. Jim Beam argues that JL Beverage has

a “relatively weak” market presence, while it maintains a

“relatively strong” market presence.

JL Beverage concedes that Jim Beam has a strong market

presence. JLBeverage correctly points out, however, that this

finding supports its reverse confusion claim: evidence that

Jim Beam’s junior mark, the Pucker Vodka lips, is wellknown suggests a greater likelihood that consumers will

confuse JL Beverage’s senior mark for the Pucker Vodka

line. See Walter v. Mattel, Inc., 210 F.3d 1108, 1111 n. 2 (9th

Cir. 2000) (“In a reverse confusion case . . . the inquiry

focuses on the strength of the junior mark because the issue

is whether the junior mark is so strong as to overtake the

senior mark”). The national recognition of the Jim Beam

mark increases the likelihood that consumers will believe

they are doing business with Jim Beam, not JL Beverage,

when they purchase Johnny Love Vodka. See Cohn v.
JL BEVERAGE V. JIM BEAM BRANDS 19

Petsmart, Inc., 281 F.3d 837, 842 (9th Cir. 2002) (explaining

that, in reverse confusion cases, the junior mark holder’s

commercial strength “creates a potential that consumers will

assume that” the senior holder’s mark refers to the junior

holder’s mark, “and thus perceive that the businesses are

somehow associated”).

To support its forward confusion claim, JL Beverage

argues in the alternative that it too has a strong market

presence. JL Beverage submitted evidence that it sold its

products nationally, and that it spent considerable resources

on marketing through print media, third-party publications,

and internet advertising.

Viewing the evidence in the light most favorable to JL

Beverage, there is a genuine dispute of material fact as to the

commercial strength of JLBeverage’s JohnnyLove Vodka in

the marketplace. Moreover, the determination as to whether

the evidence demonstrates that JL Beverage has robust

commercial strength will lend support to JL Beverage

whatever the fact-finder decides, as JL Beverage has raised

both forward and reverse confusion claims.

B.

We now address factor three of the Sleekcraft test, the

similarity of the marks. JL Beverage contends that the

similarity of shape and color in the competing lips designs

renders the marks similar.

Similarity of the marks “has always been considered a

critical question in the likelihood-of-confusion analysis.”

GoTo.com, 202 F.3d at 1205. Three principles guide a court

in determining whether marks are similar. Fortune Dynamic,
20 JL BEVERAGE V. JIM BEAM BRANDS

618 F.3d at 1032. First, “similarity is best adjudged by

appearance, sound, and meaning.” Id. (citation and alteration

omitted). “Second, the marks must be considered in their

entirety and as they appear in the marketplace.” Id. (citation

omitted). “Third, similarities are weighed more heavily than

differences.” Id. (quoting GoTo.com, 202 F.3d at 1206).

In viewing the competing JL Beverage and Jim Beam

marks in their entirety, there are numerous similarities in their

appearance: both have puckered, human lips as the focal point

of their design; the lips have a similar angle and shape; and

the lips are color-coordinated with the flavor of the vodka. In

addition to the photos of the marks, which suggest a similar

appearance, JLBeverage offered evidence from officials who

concluded that the marks are similar. First, JLBeverage relies

upon the Chief Administrator of the North Carolina Alcoholic

Beverage Control Commission’s (NCABCC) statement that

the Jim Beam mark “looks a lot like” JL Beverage’s design.

Second, it provided evidence that a USPTO Examiner stated,

in his initial review of Jim Beam’s application to register its

lips, that the Jim Beam and JL Beverage “marks are highly

similar lip designs oriented at a similar angle. Consequently,

the marks create an overall similar commercial impression.”

The entirety of the marks’ appearances, coupled with

documented statements stating that the marks appear similar,

establishes a genuine dispute of material fact concerning their

similarity.

In response, Jim Beam first argues that the marks are

“dramaticallydifferent” because the bottle shapes are distinct,

the product labeling is not similar, and both products

prominently feature their house marks. While a fact-finder

may ultimately conclude that these factors render the marks

dissimilar, Jim Beam’s competing factual analysis does
JL BEVERAGE V. JIM BEAM BRANDS 21

nothing to alleviate the existence of a dispute of material fact

concerning the marks’ similarity.

Jim Beam next contends that the USPTO Examiner’s

statement is unpersuasive as it was only a preliminary

assessment for determining whether its lips design would be

trademarked. Regardless of whether the statement was the

result of a preliminary assessment, it suggests that others

found the marks similar.

C.

The fourth factor of the Sleekcraft test looks to evidence

of actual consumer confusion. Surfvivor, 406 F.3d at 633. JL

Beverage contends that there is evidence of actual consumer

confusion through Shaun Robertson, a manager of one of JL

Beverage’s product brokers, who submitted a declaration with

an attached email in which he lists instances of confusion

about which individuals informed him. The district court,

although it did not ultimately rule on the admissibility of the

statements in Robertson’s declaration, concluded in its

preliminary injunction order that factor four favored neither

party because the evidence was hearsay, and unreliable, and

because many of the cited instances actually showed a lack of

consumer confusion.

Robertson’s declaration presents a smattering of

statements that JL Beverage alleges serve as evidence of

actual consumer confusion. For instance, Robertson reported

that a woman named Missy Giblin contacted Robertson

stating that she saw JL Beverage’s new commercial for

Johnny Love Vodka, when in fact JL Beverage was not

running commercials at that time; a man named Sam Mills

told Robertson that he mistakenly purchased Pucker Vodka,
22 JL BEVERAGE V. JIM BEAM BRANDS

having thought it was Johnny Love Vodka; and Micheal C.

Herring, the Chief Administrator of the NCABCC, sent

Robertson an email that stated “see attached. This is Jim

Beam’s new line of vodka. Looks a lot like Johnny Love.”

Jim Beam argues, and the district court correctly

concluded, that the statements contained in Robertson’s

declaration and email are hearsay. See Japan Telecom., Inc.

v. Japan Telecom, Am. Inc., 287 F.3d 866, 874 n.1 (9th Cir.

2002) (concluding that statements made by the declarant that

the declarant knows of others who were confused by similar

trademarks are inadmissible hearsay). Almost all of the

instances that Robertson recounts are statements that he

gathered from others via email, telephone calls, or text

messages. At times, Robertson even fails to specify where or

how some of the alleged conversations took place.

We note, however, that at summary judgment a district

court may consider hearsay evidence submitted in an

inadmissible form, so long as the underlying evidence could

be provided in an admissible form at trial, such as by live

testimony. See Fraser v. Goodale, 342 F.3d 1032, 1036–37

(9th Cir. 2003). But here, JL Beverage has not argued that the

hearsay declarants would be available to testify at trial, or that

its hearsay evidence would be admissible at trial in some

other form. We address, therefore, only the district court’s

conclusion that the statements discussed in Robertson’s

declaration are hearsay, not subject to an exception.

In addition to being hearsay, some of the reported

statements were provided to Robertson by friends and

acquaintances. For example, Diab testified that while he

personally did not know Missy Giblin, he believed that she

was a friend of Robertson and his co-worker. In addition, text
JL BEVERAGE V. JIM BEAM BRANDS 23

messages Robertson received on his personal cell phone,

which suggested consumer confusion, showed that Robertson

and the sender had a high level of familiarity, as the messages

contained phrases such as “hey babes,” “dude,” and “call me

back hun.” Evidence from such “partial source[s] possesses

very limited probative value.” Filipino Yellow Pages v. Asian

Journal Publ’ns, Inc., 198 F.3d 1143, 1152 (9th Cir. 1999).

JL Beverage acknowledges that the statements submitted

in Robertson’s declaration are hearsay, but alleges that at

least some of the statements are admissible under the “state

of mind” exception to the hearsay rule. Federal Rule of

Evidence 803(3) allows admission of “[a] statement of the

declarant’s then-existing state of mind . . . or emotional,

sensory, or physical condition.”

To support its argument, JL Beverage relies heavily on

Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (9th Cir. 2011)

(Lahoti II), which admitted hearsay statements regarding

consumer confusion under the state of mind exception. In

Lahoti II, the court admitted testimony from Vericheck

company representatives who received telephone calls from

confused customers who could not find information about

Vericheck on the website www.Vericheck.com, which the

defendant had created. Id. The statements in Robertson’s

declaration differ from the testimony in Lahoti II in two

important ways. First, many of the alleged conversations

Robertson had were not with customers calling because they

were currently confused and seeking information about JL

Beverage; rather, the individuals were reporting, after the

fact, that they had mistaken two products. Second, unlike the

spontaneous calls of confusion that company representatives

received in Lahoti II, Robertson received some of the reports

of confusion from possible biased sources: his friends and
24 JL BEVERAGE V. JIM BEAM BRANDS

acquaintances. Accordingly,JLBeverage’s reliance on Lahoti

II is of little help.

Finally, some of the statements included in the

declaration, including Herring’s, state only that the Johnny

Love Vodka and Pucker Vodka products “look alike.”

Statements that the products look alike do not necessarily

demonstrate consumer confusion: consumers who identify

products as “looking alike” recognize the products’

similarities, but the question is whether they have mistaken

one product for another.

Whether JL Beverage may be able to supplement its

evidence of actual consumer confusion through further

discovery is not known. However, as it now stands, this

evidence of actual consumer confusion does not weigh in JL

Beverage’s favor. Nevertheless, as we have previously held,

“[b]ecause of the difficulty in garnering” evidence of actual

confusion, “the failure to prove instances of actual confusion

is not dispositive.” Sleekcraft, 599 F.2d at 353.

D.

We turn last to factor seven of the Sleekcraft test, which

assesses the defendant’s intent in selecting the mark. JL

Beverage contends that Jim Beam knew of the registered JLV

and Lips Marks, yet proceeded to use a colored lips logo on

its Pucker Vodka bottles.

Factor seven favors the plaintiff “where the alleged

infringer adopted his mark with knowledge, actual or

constructive, that it was another’s trademark.” Brookfield

Comnc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,

1059 (9th Cir. 1999). When “an alleged infringer knowingly
JL BEVERAGE V. JIM BEAM BRANDS 25

adopts a mark similar to another’s, courts will presume an

intent to deceive the public.” Official Airline Guides, Inc. v.

Goss, 6 F.3d 1385, 1394 (9th Cir. 1993).

JL Beverage has set forth evidence to create a genuine

dispute of material fact as to whether Jim Beam knew of JL

Beverage’s registered trademarks, yet proceeded to use its

colored-lips logo anyway. JL Beverage provided the

following: (1) as a result of a trademark search that Jim

Beam’s legal team performed, Jim Beam was aware of JL

Beverage’s JLV trademark; (2) Jim Beam employee Emily

Johnson, who worked with a Pucker flavored-vodka team,

was aware of Johnny Love Vodka prior to joining Jim Beam;

and (3) Jim Beam continued its nationwide rollout of Pucker

Vodka even after the USPTO denied its trademark

application; as a basis for that denial, the USPTO identified

the similarity of Jim Beam’s proposed marks to JL

Beverage’s.

Jim Beam contends that we should nonetheless conclude

that factor seven weighs in its favor because there is no

evidence that Jim Beam intended to infringe JL Beverage’s

trademarks. Unfortunately for Jim Beam, “[a]bsence of

malice is no defense to trademark infringement.”

Dreamwerks, 142 F.3d at 1132 n.12. The relevant inquiry is

not Jim Beam’s intent, but rather whether it adopted the

colored lips logo with the knowledge that the mark already

belonged to JL Beverage. Viewing the evidence in the light

most favorable to JL Beverage, there is a dispute of material

fact concerning what Jim Beam knew when it launched the

Pucker Vodka line.
26 JL BEVERAGE V. JIM BEAM BRANDS

IV.

In ruling on the parties’ cross-motions for summary

judgment, the district court does not appear to have viewed

the evidence in the light most favorable to JL Beverage and

to determine whether a genuine dispute of material fact

existed. Balancing the Sleekcraft factors as a whole, we

conclude there is a genuine dispute of material fact as to the

likelihood of consumer confusion. A reasonable fact-finder

could conclude that: the JLV Mark has conceptual strength

because the Mark’s salient feature, the color-coordinated lips,

requires consumers to use their imagination to connect the

color to the vodka flavor; the Lips Mark has conceptual

strength because the lips have no commonly understood

connection to the vodka product; JohnnyLove Vodka does or

does not have commercial strength (because a finding of

either would support one of JL Beverage’s theories of

confusion–reverse or forward); Johnny Love and Pucker

Vodka are related flavored-liquor products sold to the same

customers and distributors; the products are similar given

their use of color-coordinated, puckered human lips as the

focal point of their bottle designs; consumers purchasing the

vodka products are not likely to exercise a high degree of care

in distinguishing between the two; and Jim Beam was aware

of JL Beverage’s trademarks prior to rolling out its Pucker

Vodka line. Accordingly, we reverse and remand for further

proceedings consistent with this opinion.

REVERSED and REMANDED.