A lawsuit filed in a New York federal court has initiated a dispute between Mark Anthony, the owner of popular beverage brands like White Claw and Mike’s Hard Lemonade, and Prime Hydration, a hydration drink company founded by social media sensations Logan Paul and KSI. At the heart of the dispute is the alleged trade dress infringement of Prime Hydration’s PRIME drink by Mark Anthony’s MÁS+ BY MESSI hydration drink, created in collaboration with global soccer legend Lionel Messi.
What is Trade Dress?
Trade dress refers to the overall appearance of a product or its packaging that identifies its source and distinguishes it from others in the market. This can include elements such as color, shape, design, logo, label, and slogan. For trade dress to be protectable, it must be distinctive—either inherently or through acquired secondary meaning—and non-functional, meaning it does not impact the cost, quality, or performance of the product.
The Allegations
According to the complaint filed by Mark Anthony, Prime Hydration threatened to sue for trade dress infringement, accusing Mark Anthony of copying Prime’s packaging design on MÁS+ BY MESSI’s drink. Prime Hydration claims its design has distinctive features, including brightly colored labels with caps that match the beverage flavor, a large vertically oriented brand logo, the flavor name displayed across the top of the label, and an electrolyte droplet symbol. Mark Anthony denies any infringement and seeks a declaratory judgment that its MÁS+ BY MESSI drink is lawful and non-infringing. Companies often seek a declaratory judgment in situations like this to proactively resolve legal uncertainties, end legal disputes and avoid potential litigation. Mark Anthony seeks to clarify its legal standing and keep selling its drink without the looming threat of a lawsuit from Prime Hydration.
Prime Hydration’s Counterclaims
In its response and counterclaims, Prime Hydration asserts that it owns protectable trade dress rights in its overall packaging design, which it claims has gained distinctiveness and fame through extensive use, marketing, and sales since 2022. Prime Hydration alleges that Mark Anthony’s MÁS+ BY MESSI drink closely mirrors Prime Hydration’s branding and packaging, leading to consumer confusion and dilution. Additionally, Prime Hydration accuses Mark Anthony of trademark infringement, trade dress dilution, and unfair competition, citing the use of phrases like “Positive Hydration” and “Replenish, Refresh, Revive,” which Prime Hydration claims are confusingly similar to its trademarks “Prime Hydration” and “Refresh, Replenish and Refuel.”
Key Issues and Challenges
The case presents several legal challenges. Mark Anthony must show that Prime Hydration’s “trade dress” is neither distinctive nor protectable, either due to inconsistent use or because it comprises common, functional, or descriptive elements prevalent in the hydration beverage industry. Mark Anthony must also argue that consumers are unlikely to confuse the two products, emphasizing the differences in their brand names, logos, colors, celebrity affiliations, and target markets. Expert testimony, consumer surveys, and other evidence may be pivotal in supporting Mark Anthony’s arguments.
Prime Hydration’s main challenge is to prove that its trade dress has acquired secondary meaning, indicating that consumers associate it as a source identifier for Prime Hydration’s products. Prime Hydration must also demonstrate that its trade dress is non-functional, meaning it does not serve any practical or competitive purpose, and that it is not generic or descriptive, meaning it does not describe the category or characteristics of the products.
The Importance of Trade Dress Protection
This case underscores the significance of trade dress protection and enforcement for businesses, particularly in competitive and crowded markets. Trade dress can be a valuable asset, helping a product stand out and build a loyal customer base. However, trade dress protection also entails certain limitations and risks, such as the need to establish distinctiveness and non-functionality, the potential for counterclaims or invalidity challenges, and the difficulty of proving consumer confusion or dilution. Businesses should carefully weigh the benefits and costs of pursuing or defending trade dress claims and seek legal advice before taking action.
For additional information regarding what steps to take in establishing a new brand or line of products, how to defend your company in a trade dress infringement case, or how to protect your company’s existing trade dress, please contact Antonio F. Dempsey (AFD@kjk.com; 216.736.224) or Robert E. Zulandt, III (REZ@kjk.com; 216.736.7259) or any attorney within KJK’s eCommerce practice group.