CytoSport injunction halts VPX’s Muscle Power

A federal judge has barred VPX Sports from making, selling or marketing its Muscle Power protein drink because its appearance is too similar to that of a competing product.

In granting a preliminary injunction requested by VPX competitor Cytosport, Judge Frank C. Damrell, Jr., of the United States District Court of the Eastern District of California, wrote that Muscle Power was so similar to CytoSport’s Muscle Milk as to indicate a “desire to confuse the marketplace” and profit on Muscle Milk’s “goodwill and brand name.” The injunction indicates that the judge believed VPX would likely lose were the case to progress.

Muscle Milk currently leads the fast-growing protein beverage category, and Muscle Power’s packaging mimics Muscle Milk’s by employing the same variety of Tetrapak as well as a similar typeface, color and design pattern.

As a result of the decision, VPX will have to remove its product from the shelves and dispose of it. CytoSport requested the injunction last year, complaining that Muscle Power’s packaging was so similar to Muscle Milk that consumers thought it was a CytoSport product.

Judge Damrell used eight criteria to determine the likelihood of confusion and damage in the marketplace, and sided with Cytosport on seven.

The decision is just another illustration of the fact that fierce battles for shelf space can easily spill over into the courts. The U.S. federal courts database lists 22 cases that involve VPX in the last six years, and 33 cases involving CytoSport during the same period. Both companies play in emerging categories, where copycat brands frequently try to grab the momentum of early category leaders.

“Most of those other cases,” said Mark Bettillyon, an attorney for CytoSport “we’ve been able to get them resolved with less court involvement.”

VPX did not return BevNET’s calls for comment, but Bettylon said he spoke to VPX’s attorneys Thursday. He did not disclose what they spoke about, but said VPX is aware of the injunction and is working through compliance.

That compliance could put a kink in VPX’s plans to expand past energy drinks and into the mainstream sports and performance protein drink market that CytoSport has pioneered. CytoSport recently signed a major distribution deal with the Pepsi Bottling Group and VPX has been trying to market Muscle Power as a replacement product for DSD houses, much as it has done with its Redline products in the energy drink category.

The product may still return to shelves – PepsiCo, for example, restaged its SoBe Lifewater product after a similar legal setback – but the products will have to be distinguishable from each other, according to trademark attorney Gregg Sultan.

“The defendant may still sell these types of products, but it would have to do so without any use of the enjoined trademark and trade dress,” Sultan said. “That will obviously take some time.”

Sultan said the typical next step for an enjoined company is to settle. VPX could also appeal the decision, but for now, he said, “the defendant’s business is essentially halted.”