At issue is the famed soda beverage Moxie – first developed back in 1884 and considered one of the first carbonated soda beverages to be mass produced. Cornucopia bought the rights to the soda brand in April 2007 from Monarch Beverage Company (see Boston Globe article about the purchase here). Before purchasing the rights, Cornucopia had been producing Moxie under license from Monarch. Cornucopia now owns several trademark registrations for the mark MOXIE, including for nonalcoholic, maltless carbonated beverages (registered 09/09/1924) and for soft drinks (registered 07/01/1986).
Moxie Java, which opened its first store in Boise, Idaho in 1988, operates 85 coffee houses worldwide. On May 20, 1997, the company received registrations for the marks MOXIE JAVA (and Design) and MOXIE JAVA INTERNATIONAL (both for restaurant services featuring coffee and espresso-based drinks, coffee beans, cakes and pastries, and coffee related merchandise). According to Moxie Java, Monarch Beverage Company reached an agreement with Moxie Java in 1997 which allowed Moxie Java to continue using the MOXIE JAVA marks for the services described in Moxie Java’s registration.
On November 11, 2005, Moxie Java filed two Section 1(a) use-in-commerce applications for the marks MOXIBERRY and MOXICCINO (both covering the same three classes of goods -- blended iced drinks including chocolate and candy bars, namely, dairy based beverages and fruit-based food beverages; blended iced drinks including chocolate and candy bars, namely, dairy based beverages and fruit-based food beverages; and blended iced drinks, namely iced fruit beverages, frozen fruit-based beverages, and smoothies).
In addition, on February 15, 2007, Moxie Java filed a Section 1(b) intent-to-use application seeking to register the mark MOXIE MATÉ (for the same three classes of blended iced drinks). Finally, on May 7, 2007, Moxie Java filed an application to register the MOXIE JAVA mark for coffee beverages, espresso beverages, coffee-based drinks, espresso-based drinks, blended drinks, coffee beans, coffee related merchandise, bakery goods, breakfast wraps, gelato, sorbet, ice cream, soups, salads, sandwiches, calzones, pasta as well as for restaurant and catering services (claiming use in commerce back to December 1, 1994).
When the MOXIBERRY and MOXICCINO marks were published for opposition in April and May of 2007, Cornucopia swiftly filed oppositions on June 13, 2007 citing Section 2(d) likelihood of confusion as well as Section 43(c) dilution. See Cornucopia Beverages, Inc. v. Moxie Java International, LLC, Opposition No. 91177837 (T.T.A.B.); Cornucopia Beverages, Inc. v. Moxie Java International, LLC, Opposition No. 91177841 (T.T.A.B.). Both oppositions are currently suspended while the parties pursue settlement negotiations.
Moxie Java bases its declaratory judgment action on the “apprehension of litigation” created by Cornucopia when it filed oppositions to Moxie Java’s applications. Apparently, Moxie Java’s position is that it has the right to use the word “Moxie” in connection with coffee-related products sold at its restaurants and cafes. Moxie also argues that Cornucopia’s actions violate Moxie Java’s 1997 agreement with Monarch Beverage Company.
According to Cornucopia’s opposition, however, under the 1997 agreement, Moxie Java agreed that it will not use MOXIE by itself or in combination with any kind of prepared beverage in a pre-packaged and pre-sealed container, whether in a bottle, container, cardboard pack, or the like. In addition, Moxie Java further agreed to limit its use of the word Moxie to the above MOXIE JAVA (and Design) and MOXIE JAVA INTERNATIONAL in connection with the services described in the registrations and not use Moxie or any Moxie-formative mark in connection with soft-drinks or soft-drink related merchandise. Cornucopia argues that the “blended iced drinks” are the same or closely related to Cornucopia’s soft-drink goods, Moxie Java’s proposed marks exceed the use allowed under the 1997 agreement, and such marks are likely to cause confusion and/or likely to dilute Cornucopia MOXIE mark.
For the MOXIBERRY and MOXICCINO applications, Cornucopia's case seems weak both on likelihood of confusion and dilution given the dissimilarity of the marks and the difference in the goods. Customers seeing the “MOXI” prefix are more likely to perceve it as a reference to MOXIE JAVA’s name, and not confuse it with the soda.
However, Moxie Java may have a problem with its other pending applications --the pending MOXIE JAVA application and the MOXIE MATÉ application -- which use the entire word “Moxie” and where the goods sought to be registered are outside the scope of what Moxie Java agreed to in the 1997 agreement (even though Moxie Java would argue that such goods are related to its coffee shop restuarant services). At the same time, however, its use of MOXIE MATÉ on blended iced drink and MOXIE JAVA on coffee beverages, espresso beverages, coffee-based drinks, espresso-based drinks, and blended drinks is not in connection with soft-drinks or soft-drink related merchandise. The final outcome of this dispute may hinge more on contract law than trademark law.