On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks

Pro se applicant Jay Pirincci had a mountain to climb in this opposition to his application for the mark CAN DEW for "Fruit drinks and fruit beverages; Fruit flavored carbonated beverages; Fruit flavored energy drinks; Non-alcoholic malt beverages; Malt beer; all in a can, plastic, or bottle," in class 32. The Board entered summary judgment on Opposer Pepsico's Section 2(d) claim, finding the applied-for mark likely to cause confusion with the famous mark MOUNTAIN DEW for flavored sodas and soft drinks. However, due to disputed material facts, the Board denied Pepsico's summary judgment motion as to Pirincci's class 5 goods ("Nutritional drink mixes for use as a mean replacement in a can plastic or bottle"), and as to Pepsico's dilution-by-blurring claim. Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (June 25, 2012) [not precedential].


Likelihood of confusion: Pepsico introduced a mountain of evidence to establish that MOUNTAIN DEW is an "exceedingly famous mark." The Board observed that there is no excuse for even approaching a famous mark, and that all doubt as to likely confusion will be resolved against the newcomer, "especially where the established mark is one which is famous and applied to an inexpensive product bought by all kinds of people without much care."

In light of the fame of Pepsico's mark, the degree of similarity between the marks necessary to support a finding of likely confusion is decreased. The Board found no genuine dispute as to the issue of the similarity of the marks.

Pirincci's "fruit flavored carbonated beverages" in class 32 are legally identical to Pepsico's goods. As to his class 5 goods, however, Pepsico failed to establish the similarity of the goods. In short, a genuine dispute of material fact existed as to the relatedness of the class 5 goods to Pepsico's products.

There was no genuine dispute that the channels of trade as to the class 32 goods are identical, but there was a genuine dispute regarding the class 5 goods. And consumers would not exercise a great deal of care in purchasing the parties' soft drink products.

Finally, the Board looked to the survey evidence submitted by Pepsico and found that the survey (conducted by Friend-of-the-Blog Hal Poret) "weighs in favor of a finding of likelihood of confusion." Mr. Poret's survey pegged "net confusion" at 47.8%.

We find that Mr. Poret’s survey, which used the “mall intercept” method, surveyed approximately 400 respondents divided into control and test groups, displayed the test and control marks on cards, and asked a series of questions and follow-up questions in a well-accepted format, is admissible and credible. In fact, the survey is quite similar in design and execution to surveys we and federal courts have previously held to be persuasive.

The Board therefore granted Pepsico's summary judgment as to the class 32 goods, on Section 2(d) grounds, but denied the motion as to the class 5 goods.

Dilution: The Board found that, at a minimum, a genuine issue of material fact exists as to "whether applicant's mark will blur the distinctiveness of opposer's marks."

More specifically, genuine disputes exist as to the “extent to which [opposer] is engaging in substantially exclusive use” of its marks, whether applicant “intended to create an association with” opposer’s mark and whether there is “[a]ny actual association” between the parties’ marks.

And so the Board denied the motion as to the dilution issue.

TTABlog comment: The class 5 portion of the case will be interesting, assuming that Pepsico pursues its claims. The opposed application is based on intent to use, and any party claiming dilution-by-blurring in such a situation will have an difficult task to proving that a dimunition in the marketing power of the famous mark will occur. On that note, see Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 101 USPQ2d 1188 (TTAB 2011) [precedential] [TTABlogged here].

Text Copyright John L. Welch 2012.