INTA Bulletin

September 1, 2012 Vol. 67 No. 15 Back to Bulletin Main Page

UNITED STATES: “No Can Do”—Partial Summary Judgment in MOUNTAIN DEW vs. CAN DEW

The Trademark Trial and Appeal Board (TTAB) granted a motion for summary judgment on the opposer’s claim of likelihood of confusion between the marks MOUNTAIN DEW and CAN DEW for goods in Class 32. However, the TTAB denied the motion with respect to Class 5 goods and dilution. Pepsico, Inc. v. Pirincci, Opposition No. 91187023 (T.T.A.B. June 25, 2012) (non-precedential).

Jay Pirincci sought registration of the mark CAN DEW for “Nutritional drink mixes for use as a meal replacement in a can plastic or bottle” in Class 5 and “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. Pepsico, Inc. opposed the application on the basis of its trademark MOUNTAIN DEW and variations thereof (collectively, the “DEW Marks”); the company also argued that registration of the CAN DEW mark would dilute the distinctiveness of its MOUNTAIN DEW trademark.

After discovery, Pepsico filed a motion for summary judgment, and Pirincci’s response brief failed to comply with TTAB rules. The TTAB held that his response brief would be given no consideration, and the Director of the U.S. Patent and Trademark Office affirmed the Board’s decision. However, the TTAB also said that the motion would not be granted as “conceded” and that it could “consider Applicant’s evidence if appropriate.”

Pepsico argued that summary judgment should be granted with respect to its likelihood-of-confusion claim because (1) MOUNTAIN DEW was a famous and strong mark by virtue of Pepsico’s extensive sales and advertising and media recognition; (2) the parties’ goods were similar or related and “purchased on impulse”; (3) the channels of trade were identical; (4) the marks created similar overall commercial impressions; and (5) the applicant adopted his mark in bad faith. With respect to dilution, Pepsico argued that MOUNTAIN DEW was a famous mark and that use of the applicant’s mark would “lessen the ability of the DEW Marks to identify [Pepsico] as their source.”

Pepsico submitted declarations, including one by an expert witness who testified regarding his likelihood-of-confusion survey, which showed “net confusion” of 47.8 percent. Pirincci argued there was no likelihood of confusion because the product labels of the parties’ goods were distinguishable, and he raised many objections to the admission of the survey evidence.

The TTAB found that Pepsico had introduced “substantial evidence that MOUNTAIN DEW [was] an exceedingly famous mark.” The Board further found that the parties’ marks were similar because both contained the arbitrary word DEW and the term CAN was not distinctive when used in connection with the applicant’s products. Although it acknowledged that the applicant’s mark could be viewed as a novel spelling of “CAN DO,” the TTAB stated that it had no evidence that such a connotation would be imparted to consumers or that the connotation would significantly distinguish the two marks.

The Board found that the parties’ Class 32 goods were legally identical and sold in legally identical channels of trade and that consumers would not exercise a great deal of care in purchasing those goods. In addition, it held that Pepsico’s survey evidence was “admissible and credible.” Therefore, the TTAB granted Pepsico’s motion for summary judgment with respect to a likelihood of confusion for Class 32 goods.

However, because Pepsico failed to submit evidence sufficient to establish that its goods were similar to the applicant’s Class 5 products, the TTAB found there was a genuine dispute of material fact regarding whether Pepsico’s goods were similar or related to Pirincci’s Class 5 goods and whether the goods traveled in the same channels of trade. Accordingly, the Board denied Pepsico’s motion with respect to goods in Class 5.

The TTAB then analyzed the dilution claim. It found that genuine disputes existed as to the extent to which Pepsico was engaged in “substantially exclusive use” of its marks, whether the applicant intended to create an association with Pepsico’s mark and whether there was any actual association between the parties’ marks. Thus, the TTAB denied summary judgment with respect to the dilution claim.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association