Pepsico, Inc.v.Jay Pirincci

Trademark Trial and Appeal Board

Jun 25, 2012

No. 91187023 (T.T.A.B. Jun. 25, 2012)

MBA Mailed: June 25, 2012

Opposition No. 91187023

Pepsico, Inc.

v.

Jay Pirincci

Before Wellington, Shaw and Kuczma, Administrative Trademark
Judges

By the Board:
This case now comes up for consideration of opposer’s
motion for summary judgment on its claims of priority and
likelihood of confusion and dilution, filed November 4,
2011.1 While applicant filed a response to the motion on
December 22, 2011, applicant’s response brief failed to
comply with Board rules. Accordingly, in its December 27,
2011 order, the Board indicated that applicant’s brief would
be given no consideration, and, following applicant’s appeal
of that order via a Petition, the Director affirmed the
Board’s decision on May 16, 2012. However, pursuant to the
Board’s December 27, 2011 order, “opposer’s motion will not
be granted as conceded,” and “the Board may consider

1 Opposer filed an amended version of its brief, which is not
substantively different than the original, on November 7, 2011.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91187023
2
[applicant’s] evidence if appropriate.” As discussed
herein, we exercise our discretion to consider applicant’s
evidence in opposition to opposer’s motion.
The Pleadings
Applicant seeks registration of CAN DEW, in standard
characters, for “Nutritional drink mixes for use as a meal
replacement in a can plastic or bottle,” 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.”2 In its notice
of opposition, opposer alleges prior use and registration of
the trademarks MOUNTAIN DEW, DEW, DO THE DEW and variations
thereof for “various beverages,” as well as ancillary
products and services, and that use of applicant’s mark
would be likely to cause confusion with, and dilute,
opposer’s marks.3 Many of opposer’s pleaded registrations
are over five years old. In his answer, applicant admits
that opposer owns its pleaded registrations, but otherwise
denies the salient allegations in the notice of opposition.
The Parties’ Contentions
Opposer’s motion is based on the Declarations of Brett
O’Brien (“O’Brien Dec.”), its Vice President for Marketing,

2 Application Serial No. 77297998, filed October 6, 2007 based
on an alleged intent to use the mark in commerce.
3 Registration Nos. 820362, 1200615, 1932027, 2732061,
2946260, 2986575, 3118413, 3196801, 3392639, 3426588 and 3353706.

Opposition No. 91187023
3
Elizabeth N. Bilus (“Bilus Dec.”), its in-house Intellectual
Property Counsel, Lauren Beth Emerson (“Emerson Dec.”), one
of its outside attorneys and Hal Poret (“Poret Dec.”), its
expert witness, as well as Mr. Poret’s Expert Report on his
likelihood of confusion survey regarding applicant’s
involved mark. With respect to its likelihood of confusion
claim, opposer argues that its pleaded mark MOUNTAIN DEW is
exceedingly famous and strong, by virtue of extensive sales
and advertising and media recognition, that the parties’
goods are similar or related and “purchased on impulse,”
that the parties’ channels of trade are identical, that the
parties’ marks create similar overall commercial impressions
and that applicant adopted his mark in bad faith. Opposer
also relies on Mr. Poret’s survey, which found that “net
confusion” among those surveyed was 47.8%, and that
therefore applicant’s mark “for fruit or fruit flavored
drinks or for fruit flavored carbonated drinks is likely to
cause confusion with” opposer’s marks MOUNTAIN DEW and DEW.
With respect to its dilution claim, opposer argues that
MOUNTAIN DEW is “famous for dilution purposes” and that use
of applicant’s mark “would lessen the ability of the DEW
Marks to identify [opposer] as their source.”
Applicant submitted portions of the transcript of his
discovery deposition of Mr. Poret in opposition to opposer’s
motion, which we have exercised our discretion to consider.
Opposition No. 91187023
4
From the portions of the Poret transcript which applicant
submitted, it appears that applicant contends that confusion
is unlikely because the label he intends to use on his
contemplated product differentiates it from opposer’s mark,
trade dress and products. Applicant also appears to contend
that Mr. Poret’s survey should be given no weight because
survey participants were offered $2.00 to participate in the
survey, opposer paid Mr. Poret to conduct the survey raising
the possibility or likelihood of bias, the results from the
limited sample of people surveyed cannot be fairly
extrapolated to the population at large, acceptable consumer
survey standards are vague, the survey was conducted using
the “mall-intercept” method, Mr. Poret did not conduct the
survey directly or directly monitor those who did, Mr.
Poret’s methods of supervising the interviewers were
inadequate, the survey may have been leading and opposer’s
mark, rather than applicant’s, could have caused survey
participants to be confused.
Decision
Summary judgment is only appropriate where there are no
genuine disputes as to any material facts, thus allowing the
case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine dispute of
material fact, and that it is entitled to a judgment under
Opposition No. 91187023
5
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Products, 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Standing and Priority
There is no genuine dispute as to any material fact
relating to either standing or priority. Opposer’s pleaded
registrations establish its standing and priority is not an
issue. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d
943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s
Opposition No. 91187023
6
ownership of pleaded registration establishes standing);
Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (citing King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974))
(priority not at issue where opposer introduces registration
into evidence). Furthermore, applicant concedes that
opposer owns its pleaded registrations. Answer to Notice of
Opposition ¶ 9.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s goods originate from the same source as, or
are associated with,” opposer’s goods. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In considering the question on a motion
for summary judgment, we analyze all probative facts in
evidence which are relevant to the thirteen likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as
whether there are genuine disputes as to any of these
factors which would be material to a decision on the merits.
In this case, opposer has introduced evidence concerning the
fame of opposer’s mark MOUNTAIN DEW, the similarity between
the parties’ marks, goods and channels of trade, the degree
of care consumers are likely to exercise in purchasing the
Opposition No. 91187023
7
parties’ products, applicant’s intent and Mr. Poret’s
survey.
Turning first to the alleged fame of opposer’s MOUNTAIN
DEW mark, it is well-settled that where fame exists, it
“plays a ‘dominant role in the process of balancing the
DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide
latitude of legal protection.’” Bose Corp. v. QSC Audio
Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002)(quoting Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). Indeed, a strong mark
“casts a long shadow which competitors must avoid.” Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Furthermore, fame remains “a dominant factor in the
likelihood of confusion analysis … independent of the
consideration of the relatedness of the goods.” Recot, 214
F.3d 1322, 54 USPQ2d at 1898. In fact, “when a product
reaches the marketplace under a famous mark, special care is
necessary to appreciate that products not closely related
may nonetheless be confused as to source by the consumer
because of the fame of the mark.” Bose Corp., 293 F.3d
1367, 63 USPQ2d at 1310.
The “fame of a mark may be measured indirectly, among
other things, by the volume of sales of and advertising
expenditures for the goods traveling under the mark, and by
Opposition No. 91187023
8
the length of time those indicia of commercial awareness
have been evident.” Id., at 1305. Other relevant factors
include “length of use of the mark, market share, brand
awareness, licensing activities, and variety of goods
bearing the mark.” Coach Services Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Here, opposer has introduced substantial evidence that
MOUNTAIN DEW is an exceedingly famous mark. Specifically:
• since 1999, MOUNTAIN DEW has been
fourth in the U.S. among soft drinks
in sales volume and market share,
trailing only COKE, PEPSI and DIET
COKE; O’Brien Dec. ¶ 14 and Emerson
Dec. Ex. I;

• in 2006, DIET MOUNTAIN DEW “became
one of the top 10 carbonated soft
drinks in terms of market share” and
it “continues to hold such rankings
today;” O’Brien Dec. ¶ 17 and Emerson
Dec. Ex. I;

• since 2004, U.S. sales of products
sold under opposer’s DEW marks have
exceeded $5 billion annually, and
since 2009, U.S. sales of products
sold under these marks have exceeded
$6 billion annually; O’Brien Dec. ¶
25;

• from 1998-2009, opposer has spent, on
average, over $50 million per year
“promoting products sold under the
[DEW] marks;” id. ¶ 27 and Ex. L; and

• research agency Millward Brown asked
“frequent drinkers of regular
flavored carbonated beverages” about
“carbonated soft drinks you can think
of,” and 51% identified MOUNTAIN DEW
without prompting, while “[a]ided
Opposition No. 91187023
9
awareness rates in the same study
reached 98%,” 92% had tried MOUNTAIN
DEW and 46% indicated they drink the
product regularly; O’Brien Dec. ¶ 41.

In short, the evidence of record establishes that
opposer’s MOUNTAIN DEW mark is famous, and significantly so.
Moreover,
[t]he law has clearly been well settled
for a longer time than this court has
been dealing with the problem to the
effect that the field from which
trademarks can be selected is unlimited,
and there is therefore no excuse for
even approaching the well-known
trademark of a competitor, that to do so
raises “but one inference – that of
gaining advantage from the wide
reputation established by appellant in
the goods bearing its mark,” and that
all doubt as to whether confusion,
mistake, or deception is likely is to be
resolved against the newcomer,
especially where the established mark is
one which is famous and applied to an
inexpensive product bought by all kinds
of people without much care.

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984) (quoting
Planters Nut & Chocolate Co. v. Crown Nut Co., Inc. 305 F.2d
916, 134 USPQ 504, 511 (CCPA 1962)); see also, Kenner Parker
Toys, 963 F.2d at 350, 22 USPQ2d at 1456. In short, there
is no genuine dispute as to any material fact regarding the
fame of MOUNTAIN DEW, and this du Pont factor weighs heavily
in opposer’s favor.
Turning next to the similarity of the parties’ marks,
we consider the similarities and dissimilarities of the
Opposition No. 91187023
10
parties’ marks in appearance, sound, meaning, and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Moreover,
as the fame of a mark increases, and here opposer’s MOUNTAIN
DEW mark enjoys significant fame, the degree of similarity
between the marks necessary to support a conclusion of
likely confusion declines. Bose Corp., 293 F.3d 1367, 63
USPQ2d at 1311-12.
In this case, the parties’ marks both contain the word
DEW, and there is no evidence that DEW is anything other
than arbitrary for the parties’ goods.4 Furthermore, CAN is
not distinctive when used for applicant’s products, which
are offered in cans -- indeed, applicant’s identifications

4 While applicant’s mark may be understood as a novel spelling
of “can do,” we have no evidence that such a connotation will be
imparted on consumers or that it would significantly distinguish
the two marks.

Opposition No. 91187023
11
of goods, in both Class 5 and Class 32, specifically
indicate that applicant’s goods will be offered in “cans.”
It is well-settled that under these circumstances, the word
CAN may be given little weight. Cunningham, 222 F.3d at
943, 55 USPQ2d at 1846. To the extent that applicant argues
that the label for his products will differentiate them from
opposer’s products, this argument is not well-taken.
Applicant seeks registration of CAN DEW, in standard
characters, and that is the mark we must compare to
opposer’s pleaded marks. For all of these reasons, after
careful consideration of the appearance, sound, connotation
and commercial impression of the parties’ marks, Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005),
we find no genuine dispute as to any material fact remaining
for trial on the issue of similarity of the marks.
Turning to the parties’ goods, applicant seeks
registration of his mark for, among other things, “fruit
flavored carbonated beverages.” Opposer uses MOUNTAIN DEW
for, among other things, “citrus flavored soda” and “orange
flavored soda,” and both MOUNTAIN DEW and DEW are registered
for, among other things, “soft drinks.” O’Brien Dec. ¶ 4;
Bilus Dec. ¶¶ 4(i) and (ii) and Exs. B and C (Registration
Nos. 820362 and 1200615). Opposer’s “soft drinks” encompass
applicant’s “fruit flavored carbonated beverages,” and
Opposition No. 91187023
12
therefore there is no genuine dispute as to any material
fact with respect to the similarity of these goods. They
are legally identical. Therefore, with respect to the Class
32 goods in applicant’s involved application, this factor
weighs heavily in opposer’s favor.
The situation is different, however, with respect to
the Class 5 goods in applicant’s involved application, i.e.,
“Nutritional drink mixes for use as a meal replacement in a
can plastic or bottle.” Opposer has simply failed to submit
evidence sufficient to establish that its goods are similar
or related to nutritional drink mixes, for use as a meal
replacement. And opposer’s reliance on caselaw, and
specifically an unpublished decision, is misplaced, because
each case must be evaluated on the specific facts of record.
In short, we find that there is a genuine dispute of
material fact regarding whether opposer’s goods are similar
or related to applicant’s Class 5 goods.
Turning next to the parties’ channels of trade, the
analysis of this factor also turns on which goods are being
considered. With respect to applicant’s “fruit flavored
carbonated beverages” in Class 32, there is no genuine
dispute as to any material fact that the parties’ channels
of trade are legally identical.
The authority is legion that the
question of registrability of an
applicant’s mark must be decided on the
basis of the identification of goods set
Opposition No. 91187023
13
forth in the application, regardless of
what the record may reveal as to the
particular nature of an applicant’s
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.

Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see
also, Hewlett-Packard, 62 USPQ2d at 1005; Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”). There is a genuine dispute, however, with
respect to the channels of trade for applicant’s Class 5
goods, as there is no evidence that these goods are similar
or related to, or travel in the same channels of trade as,
the goods sold under opposer’s pleaded marks.
With respect to the degree of care consumers are likely
to exercise in purchasing the parties’ products, opposer has
introduced evidence that its “20 oz. single serve beverages
sell for approximately one to two dollars apiece.” O’Brien
Dec. ¶ 21. Applicant has not introduced any evidence to the
Opposition No. 91187023
14
contrary, and accordingly we find that consumers would not
exercise a great deal of care in purchasing the parties’
goods. There is therefore no genuine dispute as to any
material fact with respect to this factor, which weighs in
opposer’s favor. Recot, 214 F.3d 1322, 54 USPQ2d at 1899.
Turning to applicant’s intent, opposer introduced
evidence that applicant was “probably” aware of MOUNTAIN DEW
when he filed his involved application, and that applicant
has also sought to register FOESBOOK for a “website for
communication.” This evidence is insufficient to establish
the absence of any genuine dispute of material fact with
regard to whether applicant intended to trade upon opposer’s
goodwill, and this factor is therefore neutral.5
Finally, turning to Mr. Poret’s survey, opposer’s
evidence establishes that Mr. Poret has extensive experience
in conducting consumer surveys, and that several of his
surveys have been admitted into evidence in court
proceedings. Poret Dec. Ex. A. With respect to the
substance of the survey:
• it “covered consumers of fruit or
fruit-flavored drinks and fruit-
flavored carbonated drinks,”
excluding those employed in fields

5 However, applicant’s adoption of a mark including the
arbitrary and strong word DEW for beverages “certainly raises an
eyebrow,” and a “party which knowingly adopts a mark similar to
one used by another for the same or closely related goods does so
at its own peril.” Ava Enterprises Inc. v. Audio Boss USA Inc.,
77 USPQ2d 1783, 1787 (TTAB 2006).

Opposition No. 91187023
15
which might give them “special
knowledge or insight,” and those “who
had an immediate household member so
employed;”

• in total, 404 consumers participated
in the survey, conducted via the
“mall intercept” method, with 200
consumers participating in one of two
“test cells” and 204 consumers
participating in one of two “control
cells;”

• one test cell was questioned about
applicant’s involved mark “in the
context of fruit or fruit-flavored
drinks,” while the other was
questioned about applicant’s involved
mark “in the context of fruit
flavored carbonated soft drinks;”

• the control cells were similarly
divided between carbonated and non-
carbonated beverages, and consumers
in the control cells were questioned
not about applicant’s involved mark,
but instead about the “control mark”
CAN DO;

• respondents were shown a card bearing
the mark applicable to their
particular group, and asked a series
of questions, starting with whether
the respondent had “any opinion about
what company or brand makes or
distributes a drink with this name?;”

• respondents answering yes were then
asked which company or brand makes or
distributes a drink under the
applicable mark, followed by “what
makes you think so?”;

• respondents were then asked if they
had an opinion about “any other
product or products” which are “made
or distributed by the same company
that makes or distributes this
drink;”
Opposition No. 91187023
16

• those answering “yes” were next asked
“what other product or products do
you think are made or distributed by
the same company?,” followed by “what
is your reason for thinking” so;

• finally, respondents were asked
whether or not the drink is made
“with the permission of, or in
affiliation with any other company,”
and, if the answer was yes, “what
other company or brand?”

Id. After subtracting the 14.7% of control cell respondents
who named MOUNTAIN DEW, i.e. the “noise level,” from the
62.5% of test cell respondents who were confused, Mr. Poret
found that “net confusion” was 47.8%, which he characterized
as “very high.” Id. Significantly, “[a]ll of the 125
confused respondents gave answers indicating that the word
‘Dew’ was the reason for their confusion.” Id. Mr. Poret
concluded: “the mark CAN DEW for fruit or fruit flavored
drinks or for fruit-flavored carbonated drinks is likely to
cause confusion with [opposer’s] Mountain Dew and Dew
marks.” Id. The survey did not address applicant’s Class 5
goods, however.
We find that Mr. Poret’s survey, which used the “mall
intercept” method, surveyed approximately 400 respondents
divided into control and test groups, displayed the test and
control marks on cards, and asked a series of questions and
follow-up questions in a well-accepted format, is admissible
and credible. In fact, the survey is quite similar in
Opposition No. 91187023
17
design and execution to surveys we and federal courts have
previously held to be persuasive. See e.g., Starbucks U.S.
Brands LLC v. Ruben, 78 USPQ2d 1741, 1753 (TTAB 2006); Ava
Enterprises, 77 USPQ2d at 1786-87; Carl Karcher Enterprises
Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1131-32
(TTAB 1995); see also, Union Carbide Corporation v. Ever-
Ready, 531 F.2d 366, 188 USPQ 623, 640-43 (7th Cir. 1976).
With respect to applicant’s Class 32 goods, we find that the
survey weighs in favor of a finding of likelihood of
confusion.
Applicant’s challenges to the survey are not
persuasive. Applicant has not established, through evidence
or caselaw, that opposer’s survey is inherently unreliable.
To the contrary, as the cases cited above illustrate,
opposer’s survey is a useful piece of evidence, albeit one
which is subject to any survey’s inherent limitations, many
of which applicant points out, and which we have taken into
account. As we stated in Carl Karcher, “[c]ourts and the
Board long have recognized that there is no such thing as a
perfect survey … Be that as it may, the survey results
support opposer’s position on the issue of likelihood of
confusion.” Carl Karcher, 35 USPQ2d at 1132. And here, as
in Ava Enterprises, opposer’s survey “is not necessary to
reach a conclusion that there is a likelihood of confusion.”
Ava Enterprises, 77 USPQ2d at 1787. In other words, even if
Opposition No. 91187023
18
we had excluded opposer’s survey and given it no
consideration whatsoever, our ultimate conclusions about
whether there is a likelihood of confusion between the
parties’ marks would be exactly the same.
Weighing all of the likelihood of confusion factors
together, and after a careful review of all evidence of
record and the parties’ arguments, only some of which have
been specifically addressed here, we find that there are no
genuine disputes of material fact that a likelihood of
confusion exists between at least opposer’s mark MOUNTAIN
DEW and applicant’s involved mark for applicant’s Class 32
goods. Indeed, the fame of opposer’s mark, the similarities
between the parties’ marks, services and channels of trade,
and the degree of care consumers are likely to exercise in
purchasing the parties’ goods all weigh in favor of a
finding of likelihood of confusion. Accordingly, opposer’s
motion for summary judgment on its claim of priority and
likelihood of confusion is hereby GRANTED with respect to
applicant’s Class 32 goods. However, opposer’s motion for
summary judgment on its claim of priority and likelihood of
confusion is hereby DENIED with respect to applicant’s Class
5 goods. With respect to those goods, at a minimum, we find
that genuine disputes exist as to whether the parties’
goods, customers and channels of trade are similar or
related.
Opposition No. 91187023
19
Dilution
With respect to opposer’s dilution claim, on the record
presented, we find that there are genuine disputes as to
material facts remaining for trial. At a minimum, genuine
disputes exist as to whether applicant’s mark will blur the
distinctiveness of opposer’s marks. More specifically,
genuine disputes exist as to the “extent to which [opposer]
is engaging in substantially exclusive use” of its marks,
whether applicant “intended to create an association with”
opposer’s mark and whether there is “[a]ny actual
association” between the parties’ marks. 15 U.S.C.
§ 1125(c)(2)(B)(iii), (v) and (vi).6 Accordingly, opposer’s
motion for summary judgment is hereby DENIED with respect to
its dilution claim.
Conclusion
Opposer’s motion is granted in part, specifically with
respect to its claim of priority and likelihood of confusion
against applicant’s Class 32 goods, and otherwise denied.7

6 While opposer’s likelihood of confusion survey appears to
establish that there may be some association between the parties’
marks, there is a genuine dispute as to the extent of any such
association and whether any such association will ultimately
impair the distinctiveness of opposer’s marks. See Rolex Watch
U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1196-97 (TTAB
2011). We acknowledge that where, as apparently is the case
here, an applicant has “not engaged in any actual use of the
junior mark, it is impossible to present any evidence of actual
association between the marks in the marketplace.” National Pork
Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1498
(TTAB 2010).
7 The parties should note that the evidence submitted in
connection with the motion for summary judgment is of record only
Opposition No. 91187023
20
Proceedings herein are resumed for trial with respect to
applicant’s Class 5 goods, and trial dates are reset as
follows:
Discovery Closes CLOSED

Plaintiff's Pretrial Disclosures July 9, 2012

Plaintiff's 30-day Trial Period Ends

August 23, 2012

Defendant's Pretrial Disclosures September 7, 2012

Defendant's 30-day Trial Period Ends October 22, 2012

Plaintiff's Rebuttal Disclosures November 6, 2012

Plaintiff's 15-day Rebuttal Period Ends December 6, 2012

In each instance, a copy of the transcript of testimony
together with copies of documentary exhibits, must be served
on the adverse party within thirty days after completion of
the taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.l29.
***

for consideration of that motion. To be considered at final
hearing, any such evidence must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss &
Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993);
Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB (1983); American Meat
Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981).
Furthermore, the fact that we have identified certain genuine
disputes as to material facts sufficient to deny in part
opposer’s motion should not be construed as a finding that these
are necessarily the only disputes which remain for trial.