CSC Brands, Inc.

Trademark Trial and Appeal Board

Apr 7, 1999

No. 91105165 (T.T.A.B. Apr. 7, 1999)

Oral Hearing: Paper No. 21
July 2, 1998 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 7,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
CSC Brands, Inc.
v.
Jalil Tehranchi and Kambiz Tehranchi
_____
Opposition No. 105,165 to application Serial No. 75/027,430
filed on December 4, 1995
_____
Roberta Jacobs-Meadway and Karol A. Kepchar of Panitch Schwarze
Jacobs & Nadel, P.C. for CSC Brands, Inc.
Jay S. Kopelowitz of Kopelowitz & Associates for Jalil Tehranchi
and Kambiz Tehranchi.
______
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Jalil Tehranchi and
Kambiz Tehranchi1 to register the mark "G8" for "bread, breakfast

1 Throughout this opinion, the above individuals will be collectively
referred to in the singular as "applicant".
Opposition No. 105,165
2
cereals, granola-based snack bars, muffins, cookies, wheat-based
snack foods in bar form, [and] crackers".2
Registration has been opposed by CSC Brands, Inc. on
the ground that, since prior to the filing date of applicant’s
application, opposer and its predecessors in interest have
continuously used the mark "V8" for beverages, namely, "vegetable
juices"; that opposer is the owner of a registration for the mark
"V8," in the form reproduced below,
for "vegetable juices";3 and that applicant’s mark, when used in
connection with its goods, so resembles opposer’s mark as to be
likely to cause confusion, mistake or deception.
Applicant, in its answer, has admitted that it has not
used its mark prior to the filing date of its application, but
has otherwise denied the salient allegations of the opposition.4

2 Ser. No. 75/027,430, filed on December 4, 1995, which alleges a bona
fide intention to use the mark in commerce.
3 Reg. No. 507,653, issued on March 15, 1949, which sets forth dates of
first use of July 17, 1937; second renewal.
4 While applicant additionally asserted, as affirmative defenses, that
the opposition is barred by the doctrines of "laches,’ "estoppel,"
"acquiescence" and "unclean hands" and that opposer "is improperly
attempting to exclude others from using marks for goods and/or
services that are not closely related to the goods that Opposer
markets and sells," such defenses not only have not been properly
pleaded, in that the facts constituting each defense have not been
alleged, but in any event the defenses were neither tried nor raised
in the briefs. Accordingly, no further consideration will be given to
applicant’s putative affirmative defenses.
Opposition No. 105,165
3
The record includes the pleadings; the file of the
opposed application; and, as part of opposer’s case-in-chief, the
testimony, with exhibits, of Andrew J. Rosenbach, vice-president
for beverage products of opposer’s corporate parent, Campbell
Soup Company.5 As the rest of its case-in-chief, opposer has
submitted notices of reliance upon the following: (a) certified
copies of its pleaded registration and four other registrations,
involving the marks and goods which are set forth below, showing
that the registrations are subsisting and owned by opposer:6
(1) the mark "V8" and design, as
depicted below,
for a "combination of eight vegetable
juices";7
(2) the mark "V8" and vegetables design,
as illustrated below,

5 The stipulation to take such deposition on August 27, 1997 is
approved.
6 In accordance with Fed. R. Civ. P. 15(b), which is made applicable by
Trademark Rule 2.116(a), the pleadings are hereby deemed to be amended
to include the four additional registrations relied upon by opposer.
7 Reg. No. 354,003, issued on January 25, 1938, which sets forth dates
of first use of July 17, 1937; third renewal.
Opposition No. 105,165
4
for "canned mixed vegetable juices which may
be served cold or used as a soup
preparation";8
(3) the mark "V8" for "vegetable
juices";9 and
(4) the mark "V8 PICANTE" and design, as
shown below,
for "vegetable juice";10
(b) plain copies of a number of third-party registrations;11 (c)
applicant’s responses to certain of opposer’s interrogatories;
(d) various articles from printed publications of general

8 Reg. No. 424,632, issued on October 15, 1946, which sets forth dates
of first use of July 17, 1937 and disclaims "THE REPRESENTATION OF THE
VEGETABLES"; second renewal.
9 Reg. No. 1,285,492, issued on July 10, 1984, which sets forth dates
of first use of July 17, 1937; combined affidavit §§8 and 15.
10 Reg. No. 1,846,906, issued on July 26, 1994, which sets forth dates
of first use of August 3, 1993 and disclaims "PICANTE". According to
the registration:
THE MARK "V8" APPEARS IN BLACK AND THE WORD "PICANTE"
APPEARS IN YELLOW ON A BACKGROUND DESIGN LINED FOR THE
COLORS PURPLE, YELLOW, ORANGE, GREEN AND PINK. THE
BACKGROUND DESIGN RESEMBLES A MEXICAN SERAPE.
11 Opposer states that it relies upon such registrations "to show that
it is common for companies to register the same marks for bakery
products and for juices."
Opposition No. 105,165
5
circulation, including those "available on the Nexis database,
and[/]or the Internet";12 and (e) applicant’s responses to certain
of opposer’s requests for admission.
Applicant, as its case-in-chief, has submitted a notice
of reliance upon copies of several third-party registrations,13
but it did not take any testimony. Opposer, in rebuttal, has
presented the testimony, with exhibits, of Lucetta M. McHugh, a
senior intellectual property specialist for the Campbell Soup
Company. Briefs have been filed, and an oral hearing, attended
only by counsel for opposer, was held.
Opposer’s priority of use of the marks upon which it
relies is not in issue inasmuch as the certified copies of the
registrations therefor show that such are subsisting and owned by

12 Opposer indicates that "such materials are introduced to show
recognition of the V8 mark ... and the availability of information on
sales and advertising and line extensions for the V8 product."
Although the articles from the "NEXIS" database and all but one of
those from the Internet websites are simply copies of articles which
have appeared in printed publications, and thus are plainly within the
purview of Trademark Rule 2.122(e), which permits the introduction by
means of a notice of reliance of "[p]rinted publications, such as
books and periodicals, available to the general public in libraries or
of general circulation among members of the public," whether the rule
covers information which is available solely in electronic form
through the Internet, such as the article from the website of the
American Heart Association, is questionable. In any event, inasmuch
as applicant, in its brief, has treated opposer’s evidence as forming
part of the record, the latter article is deemed to be of record
pursuant to Trademark Rule 2.123(b), which provides in relevant part
that "the facts in the case of any party may be stipulated." However,
it is pointed out that to the extent which opposer seeks to rely upon
such articles for the truth of the statements therein and not simply
for what they show on their face, the articles are inadmissible as
hearsay and have not been considered for such purpose. See Fed. R.
Evid. 801 and 802; and TBMP §708.
13 Applicant maintains that such registrations "show that there are
many other registrations [for marks] comprising a constant [sic,
should be consonant] followed by a numeral and that some of these
Opposition No. 105,165
6
opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). The record, in any
event, establishes that applicant has not commenced use of its
"G8" mark and that opposer has priority since it has used its
"V8" marks, including its "V8 PICANTE" mark, prior to the filing
date of the opposed application, which is the earliest upon which
applicant can rely in this proceeding.14 The only real issue to
be determined, therefore, is whether applicant’s "G8" mark, when
used in connection with bread, breakfast cereals, granola-based
snack bars, muffins, cookies, wheat-based snack foods in bar form
and crackers, so resembles opposer’s various "V8" marks for
vegetable juices that confusion is likely as to the origin or
affiliation of the parties’ respective goods.
According to the record, opposer is a "wholly owned
indirect subsidiary" of the Campbell Soup Company, which is "a
Fortune 500 ... manufacturer of many food products" and the
actual user of the registered "V8" marks owned and maintained by
opposer. (McHugh dep. at 6-7.) The Campbell Soup Company
presently markets three categories of beverages in the United
States: "the Campbell tomato juice line; the V8 vegetable juice
line; and a new line of V8 Splash, which is ... [a] fruit juice
blend". (Rosenbach dep. at 6.) It also produces and sells
various baked products, including its "Pepperidge Farm" brand of

registrations [are for goods which] are sold in stores that also carry
Opposer’s vegetable juice products."
14 See, e.g., Lone Star Manufacturing Co., Inc. v. Bill Beasley, Inc.,
498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974) and Columbia Steel Tank
Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA
1960).
Opposition No. 105,165
7
bread, crackers and cookies and its "Goldfish" brand of crackers,
cookies and snacks, and has done so for a number of years.
The "V8" line of beverages includes, in particular, the
original formulation, consisting of a blend of eight different
vegetable juices, which has been sold under the "V8" mark "for
approximately 50 years." (Id. at 17.) Other varieties of "V8"
vegetable juices are a "Lightly Tangy V8" blend, which "has been
available for a little under ten years," a "V8 Picante Mild
Flavor" variation, which has been offered for sale for "[a]bout
five years," a "V8 Healthy Request" version, which has been
available for about three months and thus is the "newest offering
in the V8 line," a "Spicy Hot V8" flavor, a "V8 Plus" vitamin
fortified version, and a "Low Sodium V8" formulation.15 (Id. at
18 and 19.)
"V8" brand products were extended in the Spring of 1997
to a line of fruit-carrot juice beverages, available in tropical
fruit, citrus fruit and strawberry-kiwi flavors, which are sold
under the "V8 Splash" mark. Research projects concerning further
extensions of the "V8" brand to "a V8 vegetable cracker line"
and, as recently as about February 1995, "a snack pack that would
be a combination of Pepperidge Farm crackers with a V8 beverage
product" have also been done. (Id. at 33.)
In addition, the Campbell Soup Company does "a lot" of
co-marketing of "V8" beverages with its other products, such as

15 As to the latter three varieties, Mr. Rosenbach testified that while
such are available, he did not know how long they have been offered.
Opposition No. 105,165
8
"Goldfish" crackers and "Campbell’s" soups, and does co-branding
with products of other companies. As an example of the latter,
Mr. Rosenbach testified that:
In January [1997,] we did a major promotion
with Kellogg’s joining our V8 brand with
their Complete brand [bran] flakes cereal
line. This included freestanding inserts,
using the back panel of their cereal, as well
as promotions on our product to promote the
two products.
(Id. at 34-35.)
According to Mr. Rosenbach, "’V8’ is a very famous mark
and one that is well recognized." (Id. at 23.) Independently
conducted market research in 1997, he noted, shows "nearly 100%
awareness of the V8 brand in the United States." (Id. at 31.)
Mr. Rosenbach also indicated that he is not familiar with any
other product, sold through the supermarket, in which the brand
name consists of a single letter combined with the number "8".
Currently, in terms of retail sales, "the "V8" brand
has about a 55% share of the vegetable juice category." (Id. at
36.) Over the past five years, annual sales of "V8" products in
the United States have been "approximately $250 million." (Id.
at 37.) As far as Mr. Rosenbach is aware, there has not been any
time during the past 50 years in which "V8" products have not
been sold. With respect to their manner of use, the "V8" marks
appear on product labels, shipping cases, shipping pallets and
point-of-sale materials, such as shelf talkers and display cards.
For at least the past 20 years, the primary means used
to by Campbell Soup Company to advertise "V8" brand products has
been national television ads. One of its "more noteworthy"
Opposition No. 105,165
9
television advertising campaigns featured the famous "tag line
of, ’Wow, I could have had a V8’," while its "most recent
advertising campaign is focused on living life on all eight
cylinders with V8." (Id. at 38.) Other methods utilized to
promote "V8" products include radio, magazine, newspaper and in-
store advertising. In particular, "V8" products have been
advertised in women’s magazines such as Good Housekeeping, in
senior citizens’ magazines such as Modern Maturity and in trade
publications such as Progressive Grocer. For the past five
years, the advertising budget for the "V8" brand "has been
approximately $10 million per year." (Id. at 41.)
Of the other promotional vehicles used by Campbell Soup
Company to support the "V8" brand, including advertising on the
Internet at its webpage, "the most popular" are "the Sunday
freestanding insert coupon programs," which are run in newspapers
from four to six times a year at an annual cost of "approximately
$750,000". (Id. at 41-42.) Coupons are also distributed to
consumers using point-of-sale and direct mail advertising. In
addition, Campbell Soup Company does cooperative advertising for
its "V8" products, spending "approximately $20 million a year" to
provide "ad slicks and suggested advertising layouts". (Id. at
49.)
While, according to Mr. Rosenbach, the trade channels
for "V8" products are "virtually any place that you can buy a
food and beverage product in the United States," he indicated
that "our primary distribution channel is supermarkets." (Id. at
52.) Other important trade channels "include club stores like
Opposition No. 105,165
10
Sam’s and Price Costco; convenience stores like 7-Eleven and
Wawa; mass merchandisers like K Mart and Target; drug stores like
Walgreen’s and CVS; [and] military bases and commissaries." (Id.
at 52-53.) Mr. Rosenbach also testified that Campbell Soup
Company sells "V8" products "through our food service channels,"
which "include everything from vending machines to schools to
restaurants." (Id. at 52.) As the list of outlets makes plain,
"V8" products are "bought and consumed by a broad composite of
the population from young to old, across various income and
ethnic groups." (Id. at 54.) The retail price of a "V8"
product, according to Mr. Rosenbach, is "most likely in the range
of 50 cents to $3.50," depending upon the package size. (Id. at
55.)
Mr. Rosenbach further noted that he is familiar with
instances where a company uses the same mark in connection with
both beverages and baked goods, naming as examples the house
marks "Starbucks" and "Dunkin’ Donuts". One of opposer’s notices
of reliance, for the most part, likewise shows a number of third-
party registrations for house marks which, in each instance, are
registered for both beverages and baked goods. Several of such
registrations in fact cover vegetable juice or tomato juice, on
the one hand, and bread, rolls and/or cookies, on the other.
Finally, the record shows that Campbell Soup Company
has actively policed opposer’s "V8" marks and the advertising
slogan, "Wow, I could have had a V8". In particular, a third
party was allowed to register the mark "B8" for "birdseed," but
only after it entered into a settlement agreement with opposer
Opposition No. 105,165
11
and Campbell Soup Company which prohibited use of such mark for
any food or beverage for human consumption. As a result, in
part, of such enforcement efforts, Ms. McHugh expressed the
opinion that the "V8" mark "has built up quite a large following
of consumers and it is well recognized throughout the country."
(McHugh dep. at 17.)
The only information of record concerning applicant and
its activities is contained in applicant’s responses to certain
of opposer’s discovery requests. The responses indicate that
while applicant intends to use the "G8" mark for "cereal, energy
bars, and bread" and to sell its "G8" products "[m]ostly [in]
supermarkets and wholesale food clubs," applicant has yet to use
such mark in the United States in connection with any food
product. (Responses to Interrogatory Nos. 1 and 10.) In this
regard, applicant has not made any advertising expenditures,
budgeted any funds for introducing any products, set any sales
projections, conducted any consumer surveys, hired any
advertising agencies or engaged any public relations firms to
promote its contemplated "G8" brand products.
In addition, applicant admits that, at the time the
involved application was filed, applicant was aware of opposer’s
use of the "V8" mark in connection with vegetable juices and
that, prior to such filing, a trademark investigation was
conducted. Applicant further admits that the "V8" mark has no
descriptive significance as applied to vegetable juices and that,
similarly, its "G8" mark has no descriptive significance as
applied to any of the products specified in the involved
Opposition No. 105,165
12
application, although it does suggest that applicant’s products
contain eight types of grains. Applicant also admits that its
intends to sell its "G8" brand goods to the general public
through such retail outlets for food products as grocery stores,
convenience stores, general merchandise stores and discount
shopping clubs.
Although applicant introduced copies of five third-
party registrations, including a registration for the mark "B8"
for "birdseed," none is for goods which are even arguably related
to vegetable juice products.16 Furthermore, applicant indicated
that it is not aware of any third-party use of a mark consisting
of a single consonant followed by the number "8" for food or
beverage products.
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), that confusion as to source or affiliation is
likely to occur. To begin with, we agree with opposer that, as
indicated in its initial brief, the similarities in sound and
appearance between several of its "V8" marks and applicant’s "G8"
mark "are self-evident." Opposer, in particular, accurately
points out in this regard that:
Each mark is composed of two syllables. The
syllables of each mark are composed of a

16 The other registrations pertain to the marks "B8" for stapling
machines, "V6" and design for medicated and non-medicated chewing gum,
"V8" and design for thermometers, and a highly stylized "D8" for
digital magnetic recorders and/or players for digital data, unrecorded
magnetic tapes and floppy discs.
Opposition No. 105,165
13
single capital letter, followed by the number
"8". Each capital letter incorporates the
long "E" vowel sound. Neither mark uses
punctuation to separate the single capital
letter from the numeral. The second syllable
of each mark is the number "8" and is
therefore identical, both when seen and when
spoken.
In comparison with applicant’s "G8" mark, the same observations
are likewise true with respect to the "V8" element in both
opposer’s "V8" and vegetables design mark and its "V8 PICANTE"
mark, given the prominence in which such element is displayed in
those marks and the descriptiveness of the term "PICANTE".
Furthermore, in terms of connotation and overall
commercial impression, opposer’s "V8" marks and applicant’s "G8"
mark are substantially similar inasmuch as the letter "V," as
opposer notes in its initial brief, "suggests an element of the
product (vegetables)," while the letter "G," as applicant has
admitted, suggests the presence of grain-based products. In each
of the marks, moreover, the numeral "8" refers to the number of
different kinds of vegetable juices or types of grains
respectively present in the parties’ goods. In view thereof, and
in light of the appreciable similarities in sound and appearance
which have previously been mentioned, the respective marks
engender substantially the same overall commercial impression
when considered in their entireties. Consequently, if such marks
were to be used in connection with the same or closely related
food products, confusion as to the source or sponsorship thereof
would be likely to occur.
Opposition No. 105,165
14
The record, in addition, is sufficient to establish
that opposer’s "V8" mark is a famous mark for vegetable juices.
As opposer, quoting from Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992), cert. denied, 506 U.S. 862, 113 S.Ct. 181 (1992), stresses
in its initial brief:
Where the prior mark is ... famous, the
mark’s renown becomes the primary du Pont
factor in the likelihood of confusion
assessment: "The [...] fame of the prior
mark [...] plays a dominant role in cases
featuring a famous or strong mark. Famous or
strong marks enjoy a wide latitude of legal
protection."
Here, the record shows, opposer’s "V8" mark has been continuously
used in connection with vegetable juices for at least 50 years;
there is nearly 100% awareness of such brand among consumers in
the United States; the mark has been actively policed; and there
is no other product sold through supermarkets in which the brand
name thereof consists of a single letter combined with the number
"8". Moreover, the "V8" brand, in terms of retail sales, is
currently the top seller in its product category, commanding
about a 55% share of the vegetable juice market. Annual sales of
"V8" brand products in the United States, over the past five
years, have amounted, furthermore, to approximately $250 million
and advertising expenditures therefor, at a rate of about $10
million yearly, have totaled in the neighborhood of $50 million
during the same period. "V8" brand products, in addition to
principally being nationally advertised on television with such
noteworthy ad campaigns as the one featuring the tag line of
Opposition No. 105,165
15
"Wow, I could have had a V8," have been promoted through radio,
magazine, newspaper, in-store and direct-mail advertising. In
view thereof, and inasmuch as "V8" brand vegetable juices are
available virtually anywhere that food and beverage products are
sold, there is no doubt that such mark is famous for vegetable
juices and therefore merits a wide latitude of protection from
imitators.. See, e.g., Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992).
Given the substantial similarities, as previously
noted, in the parties’ marks and the long-standing public
recognition and fame of opposer’s "V8" marks for vegetable
juices, confusion is likely to occur inasmuch applicant’s "G8"
goods would be considered by ordinary consumers to be closely
related to the vegetable juice products sold under opposer’s "V8"
marks. While applicant argues in its brief that "[s]taple foods
such as bakery products are vastly different than light beverages
such as juices," the record demonstrates that not only are the
respective products sold or offered for sale to the general
public in the same channels of trade, including supermarkets,
grocery stores, convenience stores, mass merchandisers and
discount shopping clubs, but at least several third parties have,
in each instance, adopted and registered the same mark for baked
items, such as bread, rolls and/or cookies, as well as for
vegetable or tomato juices. Although such registrations are
admittedly not evidence that the marks shown therein are in use
or that consumers are familiar with them, they nevertheless have
some probative value to the extent that they serve to suggest
Opposition No. 105,165
16
that the goods listed therein are of a kind which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Moreover, not only does opposer’s parent, Campbell Soup
Company, make and sell, albeit under other marks, such baked
products as bread, crackers, cookies and snacks in addition to
the vegetable juice products which it markets under opposer’s
"V8" marks, but it has done considerable co-marketing of "V8"
beverages with, for example, its "Goldfish" crackers as well as
co-branding of such beverages with products of other companies,
including a recent promotion with Kellogg’s "Complete" bran
flakes cereal. Furthermore, to state the obvious, vegetable
juices, like other beverages, are complementary food products to
applicant’s bread, breakfast cereals, granola-based snack bars,
muffins, cookies, wheat-based snack foods in bar form and
crackers due to the fact that they are often consumed together at
the same meal or as a snack.
Consumers, therefore, would clearly regard the parties’
goods as closely related products. In view thereof, and given
the often hurried environment in which shopping occurs and the
relatively inexpensive nature of the parties’ goods, ordinary
purchasers could reasonably believe that applicant’s bread,
breakfast cereals, grain-based snack bars, muffins, cookies and
crackers, if sold under the "G8" mark, emanate from or are
sponsored by the same source which markets the vegetable juices
sold under opposer’s famous "V8" marks. Indeed, even if
Opposition No. 105,165
17
consumers were to notice the differences in the respective marks,
they would still be justified in assuming, as would be likely,
that the producer of "V8" vegetable juice products had expanded
its offerings to a new but closely related "G8" line of baked
products, especially since there is no evidence in this record of
any third-party use for food products of marks which consist of a
consonant and the numeral "8". The fame of the "V8" mark for
vegetable juices would serve, in particular, to magnify the
substantial overall similarities in sound, appearance,
connotation and commercial impression between such mark and
applicant’s "G8" mark. See Kenner Parker Toys Inc. v. Rose Art
Industries Inc., supra at 1458.
Accordingly, we conclude that consumers who are
familiar with opposer’s "V8" marks for vegetable juices would be
likely to believe, upon encountering applicant’s substantially
similar "G8" mark for bread, breakfast cereals, granola-based
snack bars, muffins, cookies, wheat-based snack foods in bar form
and crackers, that such closely related goods emanate from, or
are otherwise sponsored by or affiliated with, the same source.
Decision: The opposition is sustained and registration
to applicant is refused.
R. F. Cissel
G. D. Hohein
C. E. Walters
Opposition No. 105,165
18
Administrative Trademark Judges,
Trademark Trial and Appeal Board