## Facts

- Star Industries, Inc. produced “Georgi” vodka and developed an orange-flavored version marketed with a label featuring an orange slice, the words “orange flavored,” and a large stylized elliptical letter “O” outlined in orange with thin gold lines.
- Star was an early distributor of an orange-flavored alcoholic beverage using a large orange “O” element on its bottle label.
- Bacardi developed and marketed an orange-flavored rum sold as “Bacardi O,” using a large elliptical “O” on its label together with Bacardi’s prominent house mark.
- Anheuser-Busch entered an exclusive licensing arrangement to produce Bacardi-branded malt beverages.
- Star alleged that Bacardi’s use of a similar “O” design infringed Star’s rights under the Lanham Act and New York law.
- The PTO initially rejected Star’s application to register “Georgi O,” but later approved registration of the “O” design alone; the registration issued during the litigation.

## Issues

1. Whether Star’s stylized orange elliptical “O” design was protectable as a trademark and, if so, how strong the mark was.
2. Whether defendants’ use of a similar “O” on “Bacardi O” was likely to cause consumer confusion under the Lanham Act and related New York claims.

## Decision

- The Second Circuit held Star’s “O” design was protectable because it was sufficiently stylized and inherently distinctive.
- The court found the mark conceptually weak and entitled only to “thin” protection.
- Applying the Polaroid likelihood-of-confusion factors, the court concluded Star failed to prove a likelihood of consumer confusion.
- The court affirmed judgment for Bacardi and Anheuser-Busch on all federal and state claims.
- The court also affirmed the denial of Star’s post-trial motion to reopen the record and amend findings.

## Legal Principles

- A stylized design may be inherently distinctive and protectable even if it is simple, but its conceptual weakness can limit the scope of protection.
- A “thin” mark receives narrow protection; infringement generally requires a very close similarity in context.
- Likelihood of confusion is determined by the Polaroid factors, including strength, similarity as encountered in the marketplace (including trade dress and house marks), product proximity, actual confusion, defendant’s intent, and consumer sophistication.
- Trademark registration supports protectability but does not control the likelihood-of-confusion analysis.
- Prominent, distinct house marks and materially different overall packaging can reduce confusion even where a shared design element exists.

## Conclusion

The court recognized Star’s orange “O” as a protectable trademark but, treating it as weak, held that the overall presentation of the competing products—especially the prominent house marks and differing packaging—prevented a showing of likely confusion; it therefore affirmed dismissal of Star’s federal and New York claims.


Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005)