The U.S. Trademark Trial and Appeal Board has ruled in favor of Pepsi-Cola in a trademark opposition case filed by the New York beverage giant against a pro se applicant in the matter of Pepsico, Inc. v. Jay Pirincci.
The Applicant had sought registration of the mark CAN DEW for nutritional drink mixes to be used as meal replacement in International Class 5. Pepsi opposed the application on the grounds that it was confusingly similar to its well-known family of Mountain Dew® trademarks for soft drinks, including Dew®, Do the Dew®, and Mountain Dew®.
In its decision, the Board assessed the Dupont Factors for likelihood of confusion, finding that the Mountain Dew® mark is a famous mark based on its extensive use and advertising over the years.
Originally, Applicant had filed for registration of the CAN DEW Mark for both nutritional supplements in international class 5 as well as fruit drinks and fruit beverages; fruit flavored energy drinks; non-alcoholic malt beverages; and malt beer in international class 32. Pepsi then moved for summary judgment on its likelihood of confusion and dilution claims.
The Board partially ruled in favor of Pepsi on the issues of fame and similarity of the marks as well as likelihood of confusion with Pepsi’s Mountain Dew® marks and goods in International Class 32. The Board, however, found a genuine issue of material fact as to whether Applicant’s nutritional drink mixes would be sold in the same channels of trade as the Opposer’s products and/or whether Applicant intended to trade upon Opposer’s goodwill. Therefore, partial summary judgment was entered in favor of Pepsi for likelihood of confusion with respect to International class 32 beverages and was denied for International Class 5 nutritional drink mixes.
In its extended analysis, the Board pointed out that for purposes of likelihood of confusion, the Applicant filed for the word-mark CAN DEW in standard characters, without any visual design or label elements. Therefore, Applicant could not compare its design labels with the Mountain Dew design label marks since Applicant had also applied for the goods as word marks. Likewise, Applicant’s applied for goods were compared in their entirety to Applicant’s registered goods. This correct interpretation of trademark law prevented Applicant from a more liberal interpretation of the likelihood of confusion factors. The Board also ruled that any interpretation (or ambiguity) in the identification of goods must be construed in favor or the prior user, here, Pepsico.
In the end, the Board ruled in favor of Pepsico on the issue of likelihood of confusion for the Class 32 goods, thereby denying registration of Applicant’s mark, stating both expressly and implicitly that the evidence in support of the fame of Pepsi’s cited registrations (by way of historical advertising, promotional, and sales figures) as well as the similarity of the marks weighed mightily in their decision.
The moral of the story? When one has a trademark that is deemed famous, all other arguments against likelihood of confusion seem to become secondary.