PepsiCo Inc. owns trademarks for Dew® and Mountain Dew® for its famous soft drink. Soft drinks fall in international class 32:
|Word Mark||MOUNTAIN DEW|
|Goods and Services||IC 032. US 045 046 048. G & S: SOFT DRINKS. FIRST USE: 20050300. FIRST USE IN COMMERCE: 20050300|
|Word Mark||CAN DEW|
|Goods and Services||IC 005. US 006 018 044 046 051 052. G & S: Nutritional drink mixes for use as a meal replacement in a can plastic or bottle
IC 032. US 045 046 048. G & S: 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
Jay Pirincci filed an application to register his brand name Can Dew for “use with a nutritional drink mix for use as a meal replacement in a can or bottle” in International Class 5 and 32. He also described his drink product as a “motivational drink.”
The Trademark Office and the Trademark Trials and Appeals Board (TTAB) declined the application for registration on the basis of likelihood of confusion with what it deemed a famous mark. The TTAB also found that non-alcoholic beverages was a broad category and did not distinguish between nutritious and non-nutritious drinks, therefore, this was not a distinction that would adequately distinguish the two products in the mind of the consumer. Since there were other soft drink products and brands that did enter the nutritional drink niche, consumers would likely presume that the Can Dew product originated from the makers of Mountain Dew® (PepsiCo) or was somehow sponsored by it, especially because both were sold in the same channels of trade: grocery stores/supermarkets.
Jay Pirincci argued that his CAN DEW mark was used in connection with other elements on his product label including graphic images of the sun, clouds, horse, a caped warrior and a recognizable color scheme. However, the TTAB found these design elements irrelevant because the application for a standard character mark it did not claim any design elements and was not limited to use without them.
There are a few takeaways from this case:
- Tread carefully in the waters of major brands- they will protect their marks aggressively
- The fewer words used to describe your product, the broader the protection. If there is no mention of a feature or characteristic- the addition and absence of it are both covered with the vague (or broader) description.
- Standard character marks will be evaluated on the literal elements only. Other factors relating to use of the mark will not be relevant to a likelihood of confusion analysis.