TTAB Sustains Opposition to "PET C COLA" for Animal Supplements, Finding Likely Diluton of . . . . Guess What Famous Mark?

This quixotic attempt to register PET C COLA, in standard form, as a trademark for animal supplements was swept aside by Opposer PepsiCo, owner of the "exceedingly famous" mark PEPSI-COLA for soft drinks. Applicant's "test mode"  website indicated that it would be marketing itself as “the pet drink specialist” and it asserted that "Pet C Cola is the nutritional and super tasty drink for dogs and cats." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,' ... and is strong evidence of Applicant’s intent to copy and create an association with Opposer’s mark." And so, the Board sustained Pepsico's Section 43(c) dilution-by-blurring claim.  PepsiCo, Inc. v. Pet C Cola Corporation, Opposition No. 91255530 (June 1, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Opposer has continuously advertised and sold beverages under the mark PEPSI-COLA since 1898. It has frequently partnered with celebrities to market its PEPSI-COLA brand beverages, and has advertised during the Super Bowl, Academy Awards, Golden Globes, and Grammy Awards. Its Facebook page has more than 37 million followers, its Twitter account more than 3 million followers, and its Instagram page almost 2 million followers. Between the years 2017-2021 the PEPSI-COLA brand has fluctuated between being the 22nd and 28th best global brand. In sum, the evidence demonstrated that Opposer "has been an incredibly successfully business, and has for decades been a part of mainstream popular culture in the United States."

In order to prevail on its claim of dilution by blurring, Opposer had to prove that:

• (1) Opposer owns a famous mark that is distinctive,
• (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark,
• (3) Applicant’s use of its mark began after Opposer’s mark became famous, and
• (4) Applicant’s use of its mark is likely to cause dilution by blurring.

As to the Factor 1, there was no question that the PEPSI-COLA mark is distinctive. In determining whether the PEPSI-COLA mark is "famous" for dilution purposes, the Board found the evidence regarding advertising and publicity to be "overwhelming" and there was no doubt that PEPSI-COLA "is among the most widely recognized brands in the United States." In short, "by any and all measures" the mark is "exceedingly famous."

As to Factor 2, the fact that applicant has not used its mark in commerce "is of no moment." "[A]n application based on intent to use a mark in commerce under Trademark Act Section 1(b) satisfie[s] the commerce requirement." And as to Factor 3, there was no question that the  PEPSI-COLA mark became famous long before Applicant’s constructive use date of August 14, 2019.

As to Factor 4, the Board looked to Section 43(c)(2)(B)(i-vi) in considering:

• (i) the degree of similarity between Applicant’s mark and Opposer’s famous mark;
• (ii) the degree of inherent or acquired distinctiveness of Opposer’s mark;
• (iii) the extent to which Opposer’s is engaging in substantially exclusive use of its mark;
• (iv) the degree of recognition of Opposer’s mark;
• (v) whether Applicant’s intended to create an association with Opposer’s PEPSI-COLA mark; and
• (vi) any actual association between Applicant’s mark and Opposer’s mark.

Comparing the involved marks, the Board found that "the appearance of the marks overall is sufficiently similar that Applicant’s mark will 'trigger consumers to conjure up’ Opposer's famous mark. That is, consumers encountering Applicant's mark will immediately be reminded of Opposer’s famous [PEPSI-COLA] mark and associate the two."

The Board also found the PEPSI-COLA mark to be highly distinctive, and its use by Opposer "substantially exclusive." In fact, there was no evidence of "any third-party use of marks that would reduce the degree of Opposer's exclusivity of use." Moreover, the PEPSI-COLA mark is "extremely famous and widely recognized by the consumer public," a factor weighing heavily in Opposer's favor.

 

As to applicant's intent, there was no direct evidence that applicant intended to associate its mark with the PEPSI-COLA mark, but its intent may be "inferred from its slavish copying of Opposer's PEPSI-COLA script mark." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,'"

There are countless ways in which Applicant could display its mark on its website, including other ways to wrap the mark around a dog to incorporate the dog within the lettering,65 but its choice to display the mark in a script that immediately conjures up the famous PEPSI-COLA script mark supports an inference that Applicant’s desire was to have its mark stand out because of its striking similarity to Opposer’s famous mark. Equally notable is the striking similarity in the sound of Applicant’s mark to Opposer’s PEPSI-COLA mark when pronounced.

The Board therefore found that applicant was attempting to trade on the goodwill and fame of the PEPSI-COLA script mark.

Finally, since the opposed application was filed on an intent-to-use basis and applicant stated that it has not yet offered for sale any products bearing the mark. "there has been a limited opportunity for the public to make any actual association between the parties’ . . . marks." The Board deemed this factor neutral.

And so, the Board sustained Opposer's dilution-by-blurring claim.

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TTABlogger comment: The take-away: don't dilute Pepsi.

Text Copyright John L. Welch 2023.