Wednesday, April 23, 2014

CAN DEW for Nutritional Drink Mixes Confusable With Pepsico's Famous DEW Mark, Says TTAB

In this second round of this feud between Pepsico and Jay Pirincci over the latter's applied-for mark CAN DEW, the Board sustained the opposition to Pirincci's class 5 goods ("nutritional drink mixes for use as a meal replacement in a can plastic or bottle") on the ground of likelihood of confusion with Pepsico's famous DEW mark for soft drinks. The Board declined to reach Pepsico's dilution claim. In the first round [TTABlogged here], the Board sustained the opposition to Pirincci's class 32 goods, but denied Pepsico's motion for summary judgment as to the class 5 goods. Pepsico, Inc. v. Jay Pirincci, Opposition No. 91187023 (April 14, 2014) [not precedential].

The Board's treated its findings made in its prior decision as the law of the case. Pirincci, appearing pro se, shot himself in the foot by submitting an unverified declaration as his testimony. The parties had stipulated that testimony by declaration was acceptable, but Pirincci failed to verify his statement, and so the Board refused to consider it.

Next, the Board denied Pepsico's motion to strike Pirincci's brief at final hearing because it was filed one day late. Although the delay was unjustified, it was minimal in duration, caused no prejudice to opposer, had little impact on the proceeding, and apparently was not the result of bad faith.

Moving to the merits of the case, the Board went farther than in its earlier decision, here ruling that Pepsico's mark DEW is also famous for soft drinks. It found applicant's CAN DEW mark to be highly similar to Pepsico's DEW mark, and found the involved goods to be related "to the extent that they are drinks (or mixes to make drinks) which might be nutritious." Moreover, the Board inferred from third-party registrations that consumers might assume that the involved goods emanate from a single source.

The consumers for the involved goods overlap, and the goods travel in partly identical channels of trade (e.g., drugstores, grocery stores, and supermarkets). And the goods are inexpensive and likely to be purchased with only ordinary care.

Balancing the relevant duPont, the Board found confusion likely, and it sustained the opposition regarding Pirincci's class 5 goods, on the ground of likelihood of confusion.

[A]lthough opposer has not shown on this record that the parties’ goods share an especially close relationship, its strong showing on the other relevant factors — including the opposer’s fame and the similarity of the marks — more than makes up for its somewhat weaker showing on the second du Pont factor.

Read comments and post your comment here.

TTABlog note:  The well-written, 48-page opinion in this case discusses a number of interesting points raised by the parties: Pirinnci's intent in adopting the mark, his reliance on a statement supposedly made by the interlocutory attorney regarding the due date for the final brief, the motivation of Pepsico in bringing the opposition, the inapplicability of "file wrapper estoppel" to the interpretation of the identification of goods, among others. The footnotes alone are worth a careful reading.

Text Copyright John L. Welch 2014.


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