San Diego - There is enough of a possibility that William Wrigley Jr. Co.'s Swerve sugar-free chewing gum is infringing a trademark for the name Swerve for artificial sweeteners to consider a preliminary injunction barring Wrigley's use of the name is warranted, an Illinois federal judge ruled Friday.
Swerve IP LLC had asked for the preliminary injunction in Wrigley's declaratory judgment lawsuit seeking to avoid liability for infringing Swerve IP's trademark. Judge Harry D. Leinenweber put off his final decision on Swerve IP's motion until a hearing can be held, but ruled that it is possible for Swerve IP to succeed on the merits of its argument.
Swerve IP holds the trademark for the word Swerve in relation to the company's all-natural non-sugar sweetener, which it has used since 2001. The U.S. Patent and Trademark office officially registered the trademark in September 2009, covering natural sweeteners including a large class of food and candy products.
The sweetener is sold through online retailers and some physical stores, and is used in the commercial manufacture of some food products, but Swerve IP hopes to expand into more mainstream markets, including chewing gum, according to the judge.
Wrigley's popular "5" brand of chewing gum, meanwhile, features a flavor called Swerve, so named because it allegedly changes flavors as it is chewed. The gum is mainly sold in grocery and convenience stores.
Wrigley learned of Swerve IP's trademark in 2010, and at that time applied to register the trademark for the word Swerve in relation to chewing gum. Swerve IP opposed the registration, and the matter remains pending before the PTO's Trademark Trial and Appeal Board.
The gum maker launched its Swerve flavor in July 2011, and a few months later Swerve IP sent it a cease and desist letter, which prompted Wrigley to file its declaratory judgment complaint after settlement talks arising from the TTAB proceeding failed.
Testimony given so far reflects a concern that Swerve gum's flooding the market would undermine the sweetener's independent reputation for being all-natural, the judge said. Such a fear implicitly reflects the assumption that the customer would connect the brands, consistent with a reverse confusion theory, he ruled.
From the consumer's perspective, the Swerve trademark is arbitrary as to the sweetener but suggestive as to the gum, and so is therefore protectable, Judge Leinenweber said.
It appears that other manufacturers, and even Wrigley in the 1980s, have co-branded gum and candy products with sweeteners, according to the judge. Accordingly, the public may well believe that Swerve sweetener has somehow become affiliated with sugar-free Swerve gum, he said.