TTAB Says No Can Dew to Pro Se Applicant

Author: Whitney Devin Cooke

In Pepsico v. Jay Pirincci, the TTAB sustained Pepsico Inc.’s opposition to Jay Pirincci’s application for CAN DEW covering “nutritional drink mixes for use as a meal replacement in a can or plastic bottle” in Class 5. The Board previously granted Pepsico’s motion for summary judgment on the likelihood of confusion with Pepsico’s famous DEW mark in relation to the Class 32 goods recited in Pirincci’s application.

In its latest decision, the Board held that Pepsico’s DEW mark, long used and promoted in connection with its MOUNTAIN DEW soft drink, was “clearly famous, at least with respect to soft drinks,” and found the parties’ goods to be related “to the extent that they are drinks (or mixes to make drinks) which might be nutritious.” Citing the evasive and argumentative conduct Applicant, who appeared pro se, exhibited during discovery, the Board stated it did not understand Applicant’s claim to offer a “motivational drink,” and wanted a clearer description of Applicant’s intended goods, customers, and channels of trade. Without such detail, the Board concluded that its Class 5 product could be combined “with a potable liquid, such as water, milk, or juice to make a beverage containing nutrients similar to what one might receive in a meal.” Turning to Pepsico’s goods, i.e., soft drinks, the Board took judicial notice of the fact that “this is a broad category of non-alcoholic beverages, typically served cold, and often (but not always) carbonated,” and noted that Pepsico’s soft drinks bear no limitation in terms of their nutritional nature or intended use, “which logically means that they include both nutritional and non-nutritional soft drinks.” The Board also relied upon Pepsico’s evidence of third party registrations covering both nutritional drink mixes and soft drinks to conclude that it is not unusual for such products to emanate from a common source.

The Board was not persuaded by Applicant’s claims that the parties’ marks were distinguishable because the CAN DEW mark appears in connection with other elements on labels, including a sun and clouds design, a horse and a caped warrior, and particular color scheme. The Board properly concluded that Applicant’s standard character application for CAN DEW encompassed none of these elements, and accordingly, such elements could not be considered in the likelihood of confusion analysis.

Regarding the other likelihood of confusion factors, the Board held that the consumers for the parties’ goods overlap, the goods travel in partly identical channels of trade (e.g., grocery stores, supermarkets), and the goods are relatively inexpensive and thus likely to be purchased with only ordinary care.

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