Amicus Curiae Brief — RiseandShine Corporation, dba Rise Brewing, Petitioner v. PepsiCo, Inc.

No. 24-1016

In the Supreme Court of the United States

RISEANDSHINE CORPORATION, DBA RISE BREWING,

PETITIONER

v.

PEPSICO, INC.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

BRIEF FOR THE UNITED STATES AS AMICUS CURIAE

D. JOHN SAUER

Solicitor General

Counsel of Record

BRETT A. SHUMATE

Assistant Attorney General

MALCOLM L. STEWART

Deputy Solicitor General

MICHAEL E. TALENT

Assistant to the

Solicitor General

DANIEL TENNY

BENJAMIN LEWIS

Attorneys

Department of Justice

Washington, D.C. 20530-0001

SupremeCtBriefs@usdoj.gov

(202) 514-2217

QUESTION PRESENTED

Whether, in a likelihood-of-confusion analysis under

15 U.S.C. 1114, a dispute concerning a trademark’s inherent strength presents a question of fact.

(I)

TABLE OF CONTENTS

Page

Interest of the United States....................................................... 1

Introduction................................................................................... 1

Statement:

A. Legal background ............................................................. 3

B. Factual and procedural background ............................... 6

Discussion .................................................................................... 11

A. The inherent strength of a trademark is a predominantly factual question that would ordinarily be

resolved by a jury ............................................................ 13

B. Even though the court of appeals’ error created a

circuit conflict, this Court’s review is not warranted .. 18

Conclusion ................................................................................... 21

TABLE OF AUTHORITIES

Cases:

Abercrombie & Fitch Co. v. Hunting World, Inc.,

537 F.2d 4 (2d Cir. 1976) ............................................ 3, 4, 16

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986).............................................................. 15

Black v. Cutter Labs., 351 U.S. 292 (1956) ......................... 20

Bufkin v. Collins, 604 U.S. 369 (2025) ................................ 18

City of New York ex rel. FDNY v. Henriquez,

98 F.4th 402 (2d Cir. 2024) ................................................. 10

First Savings Bank, F.S.B. v. First Bank Sys., Inc.,

101 F.3d 645 (10th Cir. 1996) ............................................... 5

Florida International University Board of

Trustees v. Florida National University, Inc.,

830 F.3d 1242 (11th Cir. 2016) ............................................. 5

Hana Fin., Inc. v. Hana Bank,

574 U.S. 418 (2015)..................................................... 2, 11-17

Jack Daniel’s Props., Inc. v. VIP Prods. LLC,

599 U.S. 140 (2023)...................................................... 1, 3, 13

(III)

IV

Cases—Continued:

Page

James Burrough Ltd. v. Sign of the Beefeater, Inc.,

540 F.2d 266 (7th Cir. 1976) ................................................. 5

KP Permanent Make-Up, Inc. v. Lasting

Impression I, Inc., 543 U.S. 111 (2004) .............................. 4

Lang v. Retirement Living Public Co.,

949 F.2d 576 (2d Cir. 1991) .................................................. 6

Loper Bright Enters. v. Raimondo,

603 U.S. 369 (2024).............................................................. 16

Mattel, Inc. v. MCA Records, Inc.,

296 F.3d 894 (9th Cir. 2002), cert. denied,

537 U.S. 1171 (2003)............................................................ 16

Ornelas v. United States, 517 U.S. 690 (1996) .............. 17, 18

Polaroid Corp. v. Polarad Elecs. Corp.,

287 F.2d 492 (2d Cir.), cert. denied,

368 U.S. 820 (1961).............................................................. 13

Santa Fe Indep. Sch. Dist. v. Doe,

530 U.S. 290 (2000)........................................................ 17, 18

Star Indus., Inc. v. Bacardi & Co.,

412 F.3d 373 (2d Cir. 2005), cert. denied,

547 U.S. 1019 (2006).............................................................. 6

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992)............................................................ 3, 4

U.S. Bank N.A., Tr. ex rel. CWCapital Asset Mgmt.

LLC v. Village at Lakeridge, LLC,

583 U.S. 387 (2018)............................................ 14, 15, 17, 18

United States Patent & Trademark Office v.

Booking.com B.V., 591 U.S. 549 (2020) ........................ 4, 15

Variety Stores, Inc. v. Wal-Mart Stores, Inc.,

888 F.3d 651 (4th Cir. 2018) ................................................. 6

Statute and rules:

15 U.S.C. 1127 .......................................................................... 3

Fed. R. Civ. P. 56(a) .............................................................. 15

V

Rules—Continued:

Page

Sup. Ct. R.:

Rule 10 .............................................................................. 18

Rule 10(a) ........................................................................... 3

Miscellaneous:

J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition (5th ed. 2025):

Vol. 1 .................................................................... 3-6, 11, 15

Vol. 3 ................................................................................... 4

Restatement (Third) of Unfair Competition (1995) ....... 5, 16

In the Supreme Court of the United States

No. 24-1016

RISEANDSHINE CORPORATION, DBA RISE BREWING,

PETITIONER

v.

PEPSICO, INC.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

BRIEF FOR THE UNITED STATES AS AMICUS CURIAE

INTEREST OF THE UNITED STATES

This brief is submitted in response to the Court’s order inviting the Solicitor General to express the views

of the United States. In the view of the United States,

the petition for a writ of certiorari should be denied.

INTRODUCTION

“Confusion as to source is the bête noire of trademark law.” Jack Daniel’s Props., Inc. v. VIP Prods.

LLC, 599 U.S. 140, 147 (2023). The courts of appeals

have developed multi-factor tests to analyze whether a

junior user’s mark will create a likelihood of confusion

with a senior user’s mark. While the number of factors

in those tests varies among the circuits, all circuits treat

the strength of the senior user’s mark as a relevant consideration. Assessment of a mark’s strength depends

on both its “inherent” strength and its “commercial” (or

(1)

2

“acquired”) strength, with the ultimate goal of determining whether the consuming public perceives the

mark as identifying the source of a good or service. This

case involves inherent strength, which depends on a

mark’s ability to identify a good’s source at the time of

the mark’s first use.

The Second Circuit has suggested that a mark’s inherent strength is a pure question of law to be decided

by the court. That suggestion is incorrect. Where an

inquiry “operates from the perspective of an ordinary

purchaser or consumer,” it is ordinarily entrusted to a

jury. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 420

(2015). The assessment of a mark’s inherent strength

involves such an inquiry because inherent strength depends on the consuming public’s perception of a mark’s

source-identifying power. And in any given case, the

determination whether a particular mark is inherently

strong primarily involves an assessment of the relevant

facts, rather than the clarification or interpretation of

the legal standard of inherent strength. Because the

inherent-strength inquiry “involves the application of a

legal standard” to the circumstances of particular cases,

id. at 423, the inquiry is best viewed as presenting a

“mixed question of law and fact,” id. at 424 (citation

omitted)—but that “mixed” question is one in which the

factual component predominates.

Nevertheless, further review is not warranted. Although

the court of appeals erred in characterizing inherent

strength as a question of law, and its decision conflicts

with rulings of other circuits, it is far from clear

whether the court’s error was outcome-determinative

in this case. Other, unchallenged factors also weighed

against petitioner RiseandShine Corporation’s claim

of consumer confusion and consequent trademark

3

infringement. Treating this sub-factor of a factor in a

multi-factor test as a question of law, rather than a factual question or a mixed question in which the factual

aspect predominates, is also unlikely to have a significant effect on the litigation and disposition of infringement cases more generally. There is consequently no

“compelling” or “important” reason for further review

here. Sup. Ct. R. 10(a).

STATEMENT

A. Legal Background

1. A trademark is a “word, name, symbol, or device”

used by a person “to identify and distinguish his or her

goods” in commerce and “to indicate the source of the

goods.” 15 U.S.C. 1127. A trademark’s “primary” function is “to identify the origin or ownership of the article

to which it is affixed”—that is, to “identif [y] a product’s

source” and “distinguish[ ] that source from others.”

Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S.

140, 146 (2023) (citation and internal quotation marks

omitted). To be a valid trademark under federal law, a

mark must be “distinctive.” 1 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition

§ 11:2, at 965 (5th ed. 2025); see Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 768 (1992).

Courts classify marks along a spectrum of “increasing distinctiveness[:] * * * (1) generic; (2) descriptive;

(3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos,

Inc., 505 U.S. at 768; see Abercrombie & Fitch Co. v.

Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)

(Friendly, J.) (setting out the formulation); 1 McCarthy

§ 11:2, at 966. “The latter three categories of marks”—

fanciful, arbitrary, and suggestive—“are deemed inherently distinctive and are entitled to protection” because

“their intrinsic nature serves to identify a particular

4

source of a product.” Two Pesos, Inc., 505 U.S. at 768.

Suggestive marks—which is the category involved here

—“suggest[ ], but do[ ] not directly and immediately describe, some aspect of the” product. 1 McCarthy

§ 11:62, at 1126-1127. For example, “Tide” evokes the

ocean tide to market laundry detergent, but it does not

directly describe the product. United States Patent &

Trademark Office v. Booking.com B.V., 591 U.S. 549,

553 (2020).

Descriptive and generic marks are not inherently

distinctive. Descriptive marks are just that—they are

“merely descriptive of a product.” Two Pesos, Inc., 505

U.S. at 769. A generic term “refers * * * to the genus

of which the particular product is a species” and can

never “become [a] valid trademark[ ].” Abercrombie &

Fitch Co., 537 F.2d at 9.

2. To establish trademark infringement, the owner

of a valid trademark must show that the alleged infringement “is likely to produce confusion in the minds

of consumers about the origin of the goods or services

in question.” KP Permanent Make-Up, Inc. v. Lasting

Impression I, Inc., 543 U.S. 111, 117 (2004). The courts

of appeals have adopted slightly different multi-factor

tests to assess whether a likelihood of confusion exists

in particular cases. See 1 McCarthy § 11:74, at 1158;

see also 3 McCarthy § 24:30, at 903-904. The Second

Circuit, which held that respondent was entitled to summary judgment here, applies an eight-factor test that

considers a mark’s strength, the similarity between the

plaintiff’s mark and the allegedly infringing one, the

proximity of the parties’ products and of their competitiveness, the likelihood that the prior owner may

“bridge the gap” in the markets for the products, any

evidence of actual confusion, the defendant’s good faith,

5

the relative quality of the products, and buyers’ sophistication. Pet. App. 20a (citation omitted). The relevance

and overall importance of any particular factor depends

on the circumstances of the specific case. See, e.g., Restatement (Third) of Unfair Competition § 21 cmt. a

(1995) (Third Restatement).

Although the specific factors that inform the likelihood-of-confusion analysis vary somewhat from circuit

to circuit, all circuits treat the senior mark’s strength as

a relevant consideration. See, e.g., 1 McCarthy § 11:73,

at 1153 (“All courts agree that ‘stronger’ marks are

given ‘stronger’ protection.”). Determining a mark’s

strength does not involve a yes-or-no inquiry but instead requires an assessment of where along a spectrum of strength that mark falls. To make that determination, the court evaluates “how likely it is that confusion will result from the challenged mark,” id. § 11:74,

at 1157, based on how much the mark is “remembered”

and “associated in the public mind” with the source of a

product, id. § 11:73, at 1156 (quoting James Burrough

Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 276 (7th

Cir. 1976)). “The stronger the mark, the more likely it

is that encroachment on it will produce confusion,” First

Savings Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d

645, 653 (10th Cir. 1996) (citation omitted), while “the

weaker the mark, the less protection it receives,” Florida International University Board of Trustees v. Florida National University, Inc., 830 F.3d 1242, 1256 (11th

Cir. 2016) (citation omitted).

The strength of a mark depends in part on an assessment of its distinctiveness, which is relevant to a mark’s

“conceptual” or “inherent” strength—a subfactor of a

mark’s overall strength that evaluates “the inherent potential of the term at the time of its first use.”

6

1 McCarthy § 11:73, at 1153. “[T]he more ‘distinctiveness’ a mark has, the greater is its ‘strength’ for the

purpose of determining if there is a likelihood of confusion.” Id. § 11:75, at 1162. To determine the strength

of a suggestive mark, a further analysis is sometimes

necessary. Because “the strength of [a] mark turns on

its origin-indicating quality[ ] in the eyes of the purchasing public,” a suggestive mark may still be conceptually

weak or only moderately strong, Lang v. Retirement

Living Public Co., 949 F.2d 576, 581 (2d Cir. 1991) (citation and internal quotation marks omitted), if, for instance, there is significant “prior use of a mark’s text in

other marks, particularly in the same field of merchandise or service,” Variety Stores, Inc. v. Wal-Mart

Stores, Inc., 888 F.3d 651, 662 (4th Cir. 2018) (citation

omitted). In that case, “[c]onsumers are unlikely to associate a mark with a unique source.” Ibid. (citation

omitted); see Star Indus., Inc. v. Bacardi & Co., 412

F.3d 373, 385 (2d Cir. 2005), cert. denied, 547 U.S. 1019

(2006).

In assessing the strength of a particular mark, the

court also considers the mark’s “commercial” or “acquired” strength, which reflects the “actual customer

recognition value of the mark at the time registration is

sought or at the time the mark is asserted in litigation

to prevent another’s use.” 1 McCarthy § 11:73, at 1153.

Because a mark’s overall strength depends on both its

inherent and commercial strength, an inherently strong

mark may have little overall strength if it lacks commercial strength. See id. § 11:80, at 1174.

B. Factual And Procedural Background

1. Petitioner RiseandShine Corporation, doing business as Rise Brewing, sells nitro-brewed, canned coffee

nationwide. See Pet. App. 46a. RiseandShine uses

7

“RISE” as a mark for its product, and the company has

registered “RISE” as a word and design mark. Ibid.;

see D. Ct. Doc. 80, at 17 (July 26, 2021) (explaining that

“RISE is the prominent, distinctive portion of ” the company’s marks). * When RiseandShine filed suit, Respondent PepsiCo, Inc., was selling a caffeinated, canned

energy drink nationwide. Pet. App. 47a. PepsiCo used

the mark “MTN DEW RISE ENERGY,” ibid., but referred to its product as simply “Mtn Dew RISE” or

“RISE,” D. Ct. Doc. 80, at 18.

RiseandShine filed suit in federal district court, alleging that PepsiCo had infringed its “RISE” mark.

RiseandShine moved for a preliminary injunction restricting PepsiCo’s use of its “MTN DEW RISE ENERGY” mark. See Pet. App. 64a-97a. In its ruling, the

district court held that the “RISE” mark was suggestive, id. at 82a, and that the evidence RiseandShine had

submitted tilted “slightly” in favor of finding acquired

strength, ibid.; see id. at 82a-83a. The court concluded

that RiseandShine had shown a “sufficient likelihood of

success on the merits” by virtue of “the degree of similarity between” the two marks, “the proximity of ”

RiseandShine’s and PepsiCo’s “areas of commerce,”

and “credible testimony of actual confusion.” Id. at 91a.

Based on that holding and on its analysis of the other

relevant factors, see id. at 91a-94a, the district court

granted RiseandShine’s motion for a preliminary injunction, id. at 94a.

RiseandShine has registered “RISE BREWING CO.” as a word

mark and the RISE BREWING CO. logo as a design mark. Pet.

App. 46a. In its registration, the company disclaimed “ ‘BREWING

CO.,’ ” thus making “RISE” “the prominent, distinctive portion of

the registered RISE Marks.” D. Ct. Doc. 80, at 17.

*

8

2. In a published decision, the court of appeals vacated the preliminary injunction. See Pet. App. 45a63a. The court held that the district court had “erred

in its evaluation of what is often the most important

factor—the strength of [RiseandShine’s] mark—as well

as in its finding of similarity in the appearance of the

products.” Id. at 50a.

The court of appeals concluded that, in conducting

the strength-of-the-mark inquiry, the district court had

“failed to recognize the inherent weakness of [RiseandShine’s] mark.” Pet. App. 51a. The court agreed with

the district court that RiseandShine’s mark is suggestive, but added that “labeling a mark as ‘suggestive’ is

not the end of the inquiry.” Id. at 54a. The court of

appeals explained that “[b]ecause suggestive marks, by

their nature, seek to suggest the qualities of the product, it can be difficult to distinguish weak suggestive

marks from descriptive ones.” Ibid. The court found

“RISE” to be conceptually weak because of “[t]he close

associations between the word ‘Rise’ and coffee,” specifically “[c]offee’s capacity to wake one up and lift one’s

energy, which is what the ‘RISE’ mark suggests.” Id.

at 56a-57a. The court also concluded that “[a] survey of

the use of the term ‘Rise’ in the beverage market further underlines the weakness of the mark,” id. at 57a,

because a number of companies use the term “in the

same way as [RiseandShine] does—to allude to increased

energy, particularly in the morning hours,” id. at 58a.

The court of appeals held that the district court had

committed “legal error” by failing “to note * * * the

strong logical associations between ‘Rise’ and coffee,”

which “place the mark at the low end of the spectrum of

suggestive marks.” Pet. App. 55a. While acknowledging circuit precedent treating “the classification of a

9

mark [as] a factual matter,” the court of appeals cited

other precedents establishing “that there is an undeniable legal element in the determination of how much

strength a given mark commands.” Ibid. The court

stated that “[b]etween descriptive and suggestive

marks, there may be some room for difference of opinion; nonetheless, the discretion allowed to a factfinder

in finding inherent strength is minimal at best.” Id. at

55a n.1. The court of appeals concluded that, “[g]iven

the inherent weakness of ‘Rise’ for coffee, the [strength]

factor [did] not favor” RiseandShine, id. at 59a, because

the mark’s lack of inherent strength was not offset by

evidence of acquired strength, see id. at 61a.

The court of appeals further held that the district

court’s “finding of similarity in the appearance of the

products,” Pet. App. 50a, constituted “clear error,” id.

at 61a; see id. at 61a-63a. The court of appeals based

that conclusion primarily on its ruling that “the word

‘Rise’ in this context is not distinctive,” and on a comparison between the designs of the energy-drink cans

each company had produced, finding that the “overall

appearances” of the two companies’ cans “are very dissimilar.” Id. at 62a.

3. On remand, the district court granted PepsiCo’s

motion for summary judgment. See Pet. App. 15a-44a.

In assessing the inherent strength of RiseandShine’s

trademark, the court found the summary-judgment record to be “substantially similar” to the earlier-compiled

preliminary-injunction record, and it therefore treated

the court of appeals’ conclusions in the first appeal as

“binding” in the summary-judgment proceedings. Id.

at 28a. The district court ruled on that basis that the

court of appeals’ prior decision “compel[led] a finding

that * * * [‘RISE’] is inherently weak as a matter of

10

law.” Id. at 29a. In analyzing the similarity between

the two companies’ marks, the district court again

treated the court of appeals’ prior judgment as binding

because “the record has not changed since the Second

Circuit’s decision.” Id. at 35a; see id. at 34a-35a.

In making the ultimate determination whether

RiseandShine was entitled to summary judgment, the

district court considered RiseandShine’s mark’s

strength and the similarity of the marks along with the

other relevant factors. See Pet. App. 41a-43a. The

court viewed the court of appeals’ analysis in the first

appeal as requiring it to place significant weight on the

strength and similarity factors. See id. at 42a. The

court thus found that, because RiseandShine’s “RISE”

mark was weak, it received “only an extremely narrow

scope of protection.” Ibid. (citation omitted). The court

also observed that its finding of “a lack of similarity

[could] be grounds for summary judgment in and of itself.” Ibid. The district court concluded that, because

“[t]he remaining * * * factors are insufficient to overcome the weakness of the mark and the Circuit’s finding

of dissimilarity,” PepsiCo was entitled to judgment “on

[RiseandShine ’s] federal and state trademark and unfair competition claims.” Id. at 43a.

4. The court of appeals issued an unpublished summary order affirming the district court’s grant of summary judgment to PepsiCo. See Pet. App. 1a-14a. In

rejecting RiseandShine’s argument that “inherent

strength is a question of fact,” the court explained that

it had recently “reiterated in no uncertain terms that ‘a

mark’s inherent strength is a legal question.’ ” Id. at 6a

(brackets omitted) (quoting City of New York ex rel.

FDNY v. Henriquez, 98 F.4th 402, 413 (2d Cir. 2024)).

The court of appeals thus held that the district court

11

“was bound by the previous panel’s determination that

‘RISE’ [is], as a matter of law, an inherently weak mark

for a coffee product because of the mark’s logical association with the product.” Id. at 7a.

The court of appeals also rejected RiseandShine’s

other claims of error. The court thus held that the company had failed to raise “triable issues of fact regarding

the acquired strength of its mark,” Pet. App. 8a; see id.

at 8a-10a, and that the district court had not erred “in

treating the likelihood of confusion question as a matter

of law,” id. at 10a. Based on those holdings, and on the

prior panel’s ruling that the companies’ products are

not similar, see id. at 12a, the court of appeals affirmed

the district court’s ultimate “determination that there

was not a likelihood that consumers would be confused

by PepsiCo’s use of the term ‘Rise,’ ” id. at 11a.

DISCUSSION

The court of appeals erred in suggesting that the assessment of a trademark’s inherent strength presents a

pure question of law to be decided by a court. That error, however, does not warrant this Court’s review.

In addressing a different trademark issue, this Court

explained that questions turning “upon an ordinary consumer’s understanding of the impression that a mark

conveys” are ordinarily submitted to juries. Hana Fin.,

Inc. v. Hana Bank, 574 U.S. 418, 422 (2015). That principle applies to determinations concerning a trademark’s inherent strength. In deciding whether the defendant’s allegedly infringing conduct created a likelihood of consumer confusion, the strength of the plaintiff ’s mark depends on “the effect of [the] mark[ ] upon

the mind of the consuming public.” 1 McCarthy § 11:73,

at 1156 (citation omitted). Assessment of a mark’s inherent strength is a subcomponent of that inquiry.

12

Like the trademark-strength assessment as a whole,

determining a mark’s inherent strength turns on the extent to which the consuming public associates the mark

with a particular source of goods. “[W]hen the relevant

question is how an ordinary person or community would

make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.” Hana Fin., 574 U.S. at 422. And while determining a trademark’s inherent strength “involves the

application of a legal standard,” id. at 423, this particular “mixed question,” id. at 424 (citation omitted), is one

in which the factual component predominates.

Despite the court of appeals’ erroneous suggestion

that the inherent-strength inquiry is purely legal, the

petition for a writ of certiorari should be denied. Even

as to the nature of the inherent-strength analysis, the

Second Circuit’s approach is ambiguous. And the

inherent-strength inquiry is simply one component of

the overall strength-of-the-mark assessment, which itself is one factor to be weighed along with other criteria

in a multi-factor, likelihood-of-confusion analysis. The

ultimate question for the courts below was whether,

given the summary-judgment record in this case, a reasonable jury could conclude that PepsiCo’s allegedly infringing conduct was likely to cause consumer confusion

as to the source of goods. The Second Circuit’s mischaracterization of the inherent-strength sub-factor as

purely legal is unlikely to affect the resolution of that

ultimate question, in this case or more generally. Further review is not warranted.

13

A. The Inherent Strength Of A Trademark Is A Predominantly Factual Question That Would Ordinarily Be Resolved By A Jury

1. “Confusion as to source is the bête noire of trademark law.” Jack Daniel’s Props., Inc. v. VIP Prods.

LLC, 599 U.S. 140, 147 (2023). Thus, “[t]he keystone”

in an infringement case is whether the plaintiff has established a “likelihood of confusion” by consumers as to

the source of the product displaying the allegedly infringing mark. Ibid. (citation and internal quotation

marks omitted). The circuits have developed somewhat

different multi-factor tests to analyze whether a likelihood of confusion exists, with the court of appeals here

using an eight-factor test developed in Polaroid Corp. v.

Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert.

denied, 368 U.S. 820 (1961). But while the tests differ

in some respects, they all consider a mark’s strength as

a factor, and they all analyze trademark strength by

considering both its inherent strength and its acquired

or commercial strength.

2. In Hana Financial, this Court held that the question of tacking—which allows a party to use the priority

date of an old mark when seeking protection for a revised version of that mark—is properly submitted to the

jury in an infringement suit. See 574 U.S. at 419-420,

422-423. Under established trademark principles, tacking is appropriate when “two marks * * * create the

same, continuing commercial impression so that consumers consider both as the same mark.” Id. at 422 (citation and internal quotation marks omitted). The

Court explained that “when the relevant question is how

an ordinary person or community would make an assessment, the jury is generally the decisionmaker that

ought to provide the fact-intensive answer.” Ibid.

14

The Court in Hana Financial recognized that “the

‘legal equivalents’ test” used to determine whether

trademark tacking is appropriate in a particular instance “involves the application of a legal standard.”

574 U.S. at 423. The Court explained, however, that

“the application-of-legal-standard-to-fact sort of question, commonly called a mixed question of law and fact,

has typically been resolved by juries.” Id. at 423-424

(citation, ellipsis, and internal quotation marks omitted). The Court observed that “[t]he ‘mixed’ analysis

that takes place during the tacking inquiry is no different.” Id. at 424. The Court further explained that, to

ensure that the jury correctly understands the legal

standard that governs the tacking inquiry, the trial

court should “craft careful jury instructions that make

that standard clear.” Ibid.

Three Terms later, this Court addressed the standard of review that an appellate court should apply in reviewing a trial court’s resolution of a mixed question.

See U.S. Bank N.A., Tr. ex rel. CWCapital Asset Mgmt.

LLC v. Village at Lakeridge, LLC, 583 U.S. 387 (2018).

The Court explained that, for standard-of-review purposes, “[m]ixed questions are not all alike.” Id. at 395396. When resolving a particular mixed question involves

“amplifying or elaborating on a broad legal standard,”

thereby “developing auxiliary legal principles of use in

other cases[,] appellate courts should typically review a

[trial-court] decision de novo.” Id. at 396. “[O]ther

mixed questions,” by contrast, “immerse courts in casespecific factual issues,” and in that circumstance, “appellate courts should usually review a decision with deference.” Ibid. “In short,” the Court observed, “the

standard of review for a mixed question all depends—

15

on whether answering it entails primarily legal or factual work.” Ibid.

The question in Hana Financial, supra, was

whether the tacking issue should be decided by the

judge or by the jury when a jury trial is conducted; the

question in U.S. Bank, supra, concerned the standard

of review that an appellate court should apply in reviewing a trial court’s resolution of a particular mixed question. Here, by contrast, the disputed question is

whether RiseandShine’s suit should go to trial at all.

Nevertheless, this Court’s decisions in Hana Financial

and U.S. Bank bear directly on the issue presented in

this case. The question at summary judgment is

whether the record reveals a “genuine dispute as to any

material fact,” Fed. R. Civ. P. 56(a), i.e., whether the

summary-judgment “evidence is such that a reasonable

jury could return a verdict for the nonmoving party,”

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248

(1986). The more fact-intensive a particular mixed

question is, the greater the jury’s latitude in resolving

it, and the more hesitant a court at summary judgment

should be (provided that material facts are disputed) to

conclude that the issue has a single, legally dictated answer.

3. Like tacking, a trademark’s inherent strength

turns on “its meaning to consumers.” United States Patent & Trademark Office v. Booking.com B.V., 591 U.S.

549, 560 (2020); cf. 1 McCarthy § 11:73, at 1156 (Trademark strength reflects “the effect of [a] mark[ ] upon the

mind of the consuming public.”) (citation omitted). For

example, to assess whether a particular mark is inherently distinctive (which informs its inherent strength),

a decisionmaker must determine whether “prospective

purchasers are likely to perceive it as a designation that

16

* * * identifies goods or services produced or sponsored

by a particular person.” Third Restatement § 13(a); see

id. § 13 cmt. c (explaining that for inherently distinctive

marks, “prospective purchasers can be expected to

view” or “perceive” the mark as indicating the source of

a good or to “place primary emphasis on [the mark’s]

identifying” significance).

That consumer-oriented

analysis is fact-intensive and mark-specific, so that “a

term that is in one category for a particular product

may be in quite a different one for another,” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d

Cir. 1976), and may even be generic if the term has “enter[ed] [the] public discourse” and become a “part of our

vocabulary,” Mattel, Inc. v. MCA Records, Inc., 296

F.3d 894, 900 (9th Cir. 2002), cert. denied, 537 U.S. 1171

(2003). Inherent strength, like trademark tacking,

therefore “operates from the perspective of an ordinary

purchaser or consumer.” Hana Fin., 574 U.S. at 420.

This case illustrates the predominantly factual nature of the inherent-strength inquiry. In holding that

the district court had committed “legal error” at the

preliminary-injunction stage by failing “to note * * *

the strong logical associations between ‘Rise’ and coffee,” Pet. App. 55a, the court of appeals pointed to the

connection “[i]n its ordinary usage” between the term

“Rise” and waking up and energy, id. at 56a; the linkage

between that term and “the perceived virtues of coffee,”

id. at 57a; and existing uses of the mark, see id. at 57a59a. Those considerations bear little resemblance to the

factors that courts consider in deciding pure questions

of law, such as the meaning of disputed statutory provisions. See Loper Bright Enters. v. Raimondo, 603 U.S.

369, 385 (2024). The court of appeals’ conclusion that

there is a “strong logical association[ ] between ‘Rise’

17

and coffee,” Pet. App. 55a, does not reflect the application of legal analysis or expertise, but instead represents the court of appeals’ fact-dependent assessment

of ordinary consumers’ experience and perceptions.

To be sure, the inherent-strength inquiry has a legal

component. Although the inquiry turns on ordinary

consumers’ perceptions, the term “inherent strength”

will likely be unfamiliar to most jurors, so appropriate

instructions will be necessary to explain that concept to

the jury. Cf. Hana Fin., 574 U.S. at 424 (explaining that

“insofar as petitioner is concerned that a jury may improperly apply the relevant legal standard [for trademark tacking], the solution is to craft careful jury instructions that make that standard clear”). But given

the inquiry’s focus on “the perspective of an ordinary

purchaser or consumer,” id. at 420, and the likelihood

that resolution of inherent-strength controversies will

“immerse courts in case-specific factual issues,” U.S.

Bank, 583 U.S. at 396, assessment of a trademark’s inherent strength involves the sort of predominantly factual question as to which the factfinder’s determination

should be given significant deference on appeal. For

the same reasons, when a court at summary judgment

determines whether a reasonable jury could rule for the

non-moving party, it should bear in mind the jury’s primary role in resolving inherent-strength disputes.

4. Citing Ornelas v. United States, 517 U.S. 690

(1996), and Santa Fe Independent School District v.

Doe, 530 U.S. 290 (2000), PepsiCo argues that an inquiry can be predominantly legal even if it “operat[es]

from the perspective of an ordinary person.” Br. in

Opp. 36; see id. at 36-37. The Court in Ornelas held

that “the ultimate questions of reasonable suspicion and

probable cause to make a warrantless search should be

18

reviewed de novo” on appeal, 517 U.S. at 691, even

though the terms “reasonable suspicion” and “probable

cause” are “commonsense, nontechnical conceptions”

that cannot be “reduced to a neat set of legal rules,” id.

at 695-696 (citation and internal quotation marks omitted). In Santa Fe Independent School District, the

Court held that “[w]hether a government activity violates the Establishment Clause is in large part a legal

question,” 530 U.S. at 315 (citation and internal quotation marks omitted), even though the inquiry at that

time turned in part on “whether an objective observer

* * * would perceive [the challenged activity] as a

state endorsement” of religion, id. at 308 (citation omitted). Those cases, however, each involved “a constitutional standard,” where there is “a strong presumption

that determinations under that standard are subject to

de novo review.” Bufkin v. Collins, 604 U.S. 369, 384

(2025); see U.S. Bank, 583 U.S. at 396 n.4 (explaining

that, “[i]n the constitutional realm, * * * the role of

appellate courts” in clarifying applicable constitutional

standards “favors de novo review even when answering

a mixed question primarily involves plunging into a factual record”).

B. Even Though The Court Of Appeals’ Error Created A

Circuit Conflict, This Court’s Review Is Not Warranted

RiseandShine correctly identifies a circuit conflict on

the question whether inherent strength is a factual matter. See Pet. 10-13; Cert. Reply Br. 3-4. Notwithstanding that split, RiseandShine’s petition does not present

“compelling reasons” justifying further review. Sup.

Ct. R. 10.

First, the court of appeals’ approach in this case is

not entirely clear even with respect to the proper characterization of the inherent-strength inquiry. To be

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sure, the court in the summary-judgment appeal described inherent strength as a “legal question,” Pet.

App. 6a (citation omitted), and the court in the earlier

preliminary-injunction appeal found that the district

court had committed “legal error” in characterizing

RiseandShine’s mark as inherently strong, id. at 55a.

The Second Circuit’s published opinion in the

preliminary-injunction appeal, however, also stated that

“[b]etween descriptive and suggestive marks, there may

be some room for difference of opinion; nonetheless, the

discretion allowed to a factfinder in finding inherent

strength is minimal at best.” Id. at 55a n.1. Although

that language suggests that the Second Circuit viewed

the inherent-strength inquiry as predominantly legal,

it is hard to reconcile with the proposition that inherent

strength is a pure question of law. Read in context, the

earlier panel’s statement that the district court had

committed “legal error,” id. at 55a, may simply reflect

the court of appeals’ view that no reasonable factfinder

could have found RiseandShine’s mark to be inherently

strong.

Second, the ultimate question before the courts below in the current appeal was whether, based on the

summary-judgment record compiled in the district

court, a reasonable jury could find a likelihood of consumer confusion between the parties’ competing marks.

The court of appeals recognized that “[t]he likelihood of

confusion analysis * * * could be submitted to a jury

if there were enough evidence for a reasonable jury to

make the predicate findings to establish a likelihood of

confusion,” but it concluded that “[i]n this case * * *

the district court properly decided the evidence was insufficient to proceed to trial.” Pet. App. 11a n.2. The

court of appeals did not rest that conclusion on its

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assessment of inherent strength standing alone. Rather, inherent strength is simply one subfactor in a

multi-factor (in the Second Circuit, eight-factor, see id.

at 50a) balancing test used to assess the likelihood of

consumer confusion.

Relying on a visual comparison of the two companies’

products, the district court held that the similarity-ofthe-marks factor weighs in favor of PepsiCo, see Pet.

App. 34a-35a, and the court explained that this factor

can be dispositive at the summary-judgment stage,

see id. at 42a. RiseandShine did not contest this determination in the court of appeals. See id. at 3a.

RiseandShine also has not contested the court of appeals’ holding that its mark lacks commercial, i.e., acquired strength. See, e.g., id. at 9a.

It is therefore far from clear whether summary judgment would have been denied if the Second Circuit had

viewed the inherent strength of RiseandShine’s trademark as a predominantly factual, mixed question.

RiseandShine also has identified no sound reason to

suppose that this Court’s resolution of the question presented would have a significant practical impact on the

disposition of trademark-infringement cases more generally.

Indeed, RiseandShine’s request for review of the

inherent-strength subfactor stands in tension with the

established principle that this Court “reviews judgments, not statements in opinions.” Black v. Cutter

Labs., 351 U.S. 292, 297 (1956). RiseandShine does not

seek review of the Second Circuit’s ultimate determination that PepsiCo was entitled to summary judgment on

the overall likelihood-of-confusion issue. Nor does

RiseandShine ask this Court to determine whether

likelihood-of-confusion should be treated as a legal,

21

factual, or mixed question. (In the summary-judgment

appeal, the Second Circuit stated both that “the likelihood of confusion test is a question of law,” Pet. App.

10a, and that the likelihood-of-confusion question “could

be submitted to a jury if ” the evidence warranted that

step, id. at 11a n.2—propositions that are not obviously

reconcilable.) Granting the petition for a writ of certiorari to determine the proper characterization of the

inherent-strength subfactor, in isolation from the larger

multi-factor likelihood-of-confusion analysis, would be

in tension with this Court’s usual practices and would

not meaningfully clarify the proper analytic approach in

trademark-infringement cases. Further review is not

warranted.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

D. JOHN SAUER

Solicitor General

BRETT A. SHUMATE

Assistant Attorney General

MALCOLM L. STEWART

Deputy Solicitor General

MICHAEL E. TALENT

Assistant to the

Solicitor General

DANIEL TENNY

BENJAMIN LEWIS

Attorneys

MAY 2026