IP Law Daily, TRADEMARK NEWS: Mark Anthony seeks declaration to protect MÁS+ BY MESSI products from Prime Hydration’s trade dress claims, (Oct 9, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Complaint highlights Prime Hydration’s alleged attempts to monopolize functional design features commonly used in the hydration beverage industry.

Mark Anthony International SRL and its associated entities filed a declaratory judgment lawsuit against Prime Hydration LLC in the U.S. District Court for the Southern District of New York. The plaintiffs claim that their MÁS+ BY MESSI hydration beverage does not infringe Prime Hydration's trade dress or trademarks and seek to stop Prime Hydration's alleged anticompetitive conduct in the beverage industry (Mark Anthony International SRL v. Prime Hydration, LLC, No. 1:24-cv-07620 (S.D.N.Y. Oct. 8, 2024)).

Mark Anthony is a global beverage company best known for brands such as White Claw hard seltzer, Mike's Hard Lemonade, and other popular beverages. In June 2024, it launched MÁS+ BY MESSI, a collaboration with soccer icon Lionel Messi, as a new entrant in the hydration drink market. The product, marketed as a low-calorie, all-natural hydration beverage with electrolytes and vitamins, was designed to appeal to health-conscious consumers.

Prime Hydration, founded in 2022 by social media influencers Logan Paul and KSI, manufactures and distributes hydration beverages under the "PRIME" brand. The company's products have attracted a younger audience through influencer-driven marketing campaigns. Despite its commercial success, Prime Hydration has been embroiled in various controversies, including accusations of misleading advertising, targeting children in its promotions, and the composition of its drinks.

The conflict between the two companies began shortly after the launch of MÁS+ BY MESSI. Prime Hydration claimed that the packaging and branding of MÁS+ BY MESSI were too similar to that of its PRIME hydration drinks. Prime alleged that Mark Anthony had infringed on its trade dress rights by using similar visual elements, such as brightly colored labels that coordinate with beverage flavors, vertically oriented logos, and color-matched bottle caps. Prime Hydration threatened litigation in its cease-and-desist letter to Mark Anthony if the product was not pulled from the market.

In response, Mark Anthony filed this lawsuit, seeking a declaratory judgment that the packaging and branding of MÁS+ BY MESSI do not infringe Prime Hydration’s trade dress or trademarks. Mark Anthony asserts that the design elements in question are functional and common throughout the hydration beverage industry, arguing that Prime Hydration has no legal right to monopolize these features.

According to the complaint, Prime Hydration’s trade dress lacks the consistency required for protection under intellectual property law. The plaintiffs argue that Prime’s product line uses a variety of designs, colors, and packaging configurations, undermining its claim that the trade dress is distinctive or protectable. Mark Anthony further asserts that its branding is clearly distinguishable from Prime’s, particularly given its strong association with Lionel Messi, a global sports icon.

The lawsuit points out that MÁS+ BY MESSI prominently features Messi's name and image on its packaging and marketing, a key differentiator from Prime's branding, focusing on Logan Paul and KSI. The plaintiffs argue that the association with Messi, along with the product's overall design, makes it unlikely that consumers would confuse the two brands. While MÁS+ BY MESSI targets health-conscious adults, PRIME products primarily cater to a younger audience driven by social media and influencer marketing.

Additionally, Mark Anthony highlights the contrasting reputations of the two brands in the market. MÁS+ BY MESSI has been widely praised since its launch, with coverage in major media outlets and a positive response from consumers. By contrast, Prime Hydration has faced several controversies, including a recent call for an investigation by the U.S. Food and Drug Administration due to the high caffeine content of its energy drinks and product recalls in various countries. These issues, Mark Anthony claims, further differentiate the two brands and reduce the likelihood of consumer confusion.

The plaintiffs also address Prime Hydration’s trademark claims. Prime has alleged that Mark Anthony’s use of phrases such as “Positive Hydration” and “Replenish, Refresh, Revive” infringe on its trademarks, including its use of similar language in the PRIME branding. Mark Anthony contends that these phrases are descriptive and commonly used across the beverage industry, and their use is protected as fair use. The lawsuit emphasizes that Prime Hydration does not have exclusive rights over generic terms like "hydration" or the descriptive phrases it uses to market its products.

Mark Anthony asserts that Prime Hydration's legal threats are baseless and are part of an effort to stifle competition in the rapidly growing hydration beverage market. The plaintiffs claim that Prime Hydration is attempting to monopolize standard industry practices, such as using bright colors to indicate flavors or coordinating label and cap colors.

In its lawsuit, Mark Anthony seeks several forms of relief from the court. First, it asks the court to declare that MÁS+ BY MESSI does not infringe on Prime Hydration's trade dress or trademarks. Second, it seeks a ruling that Prime Hydration has no legal basis to prevent the continued sale and marketing of MÁS+ BY MESSI. Additionally, Mark Anthony requests that the court bar Prime Hydration from pursuing any further legal claims related to the branding of MÁS+ BY MESSI. The plaintiffs also seek an award of attorney fees and legal costs incurred due to defending against Prime Hydration's allegations.

The plaintiffs argue that Prime Hydration’s legal threats have caused harm to the MÁS+ BY MESSI brand, particularly as it continues to roll out the product in new markets. Mark Anthony claims that Prime’s actions are designed to create uncertainty and disrupt its business at a critical time, potentially harming its relationships with retailers and distributors. The lawsuit aims to resolve these issues and allow Mark Anthony to continue expanding its product without the threat of litigation.

The Case is No. 1:24-cv-07620.

Attorneys: David H. Bernstein (Debevoise & Plimpton LLP) for Mark Anthony International SRL, Mark Anthony Brands International Unlimited Company, and Mas+ Next Generation Beverage Co.

Companies: Mark Anthony International SRL; Mark Anthony Brands International Unlimited Company; Mas+ Next Generation Beverage Co.; Prime Hydration, LLC

News: Trademark NewYorkNews GCNNews