PepsiCo Inc. is getting a cold reception for its new Mountain Dew Ice brand.
The company rolled out Ice in January, describing it as “a crisp, clear, carbonated soft drink made with a splash of real juice that will keep Dew Nation charged and refreshed.” Six months before that, it had applied to register the name as a trademark.
That apparently didn’t sit well with Talking Rain Beverage Co., a Washington state company that sells a “Sparkling Ice” brand of flavored sparkling waters. The company lodged an opposition this week, saying the world was too small for two “Ice” beverages.
“Applicant’s proposed ‘Mtn Dew Ice’ mark subsumes opposer’s ‘Ice’ mark,” Talking Rain wrote. “Applicant’s proposed ‘Mtn Dew Ice’ mark and opposer’s ‘Sparkling Ice’ mark both contain the term ‘Ice.'”
Talking Rain is represented by Perkins Coie LLP. Pepsi is represented by its own attorneys. The case number is 91241364.
Spirits International BV, the company behind Stolichnaya vodka, kicked off another trademark fight this week.
The liquor company filed an opposition against Classic Liquor Importers Ltd. over that company’s application for “Royal Elite Vodka,” citing its own ultra-premium “Stolichnaya Elit” brand of vodka.
“The words ‘Elit’ and ‘Elite’ are identical in sound and commercial impression (though not in meaning, as “Elit” has no meaning in a living language), and are nearly identical in appearance,” the company wrote in its notice of opposition. “The addition of the highly suggestive, if not descriptive, laudatory term ‘Royal’ and the generic term ‘vodka’ does not sufficiently distinguish applicants mark from opposer’s Elit marks.”
A trademark dispute is hardly new territory for Spirits International.
The company, a privatized “successor” to the old Soviet firm that sold Stoli during the Cold War, has already been fighting for more than a decade against a Russian state-owned entity over the “Stolichnaya” name itself. Federal Treasury Enterprise Sojuzplodoimport claims Spirits International never actually took over control of the name.
Following a ruling in January by the Second Circuit that the foreign rival had standing to sue in U.S. court, Spirits International indicated it will appeal the case to the U.S. Supreme Court.
Labor rates keep rising, as well as all of the associated costs. The restaurant industry has been hit particularly hard by wage, mandatory paid leave and health insurance increases. The Labor Department is auditing to crack down on employees that are “under the table,” and failure to comply with laws regarding tip credits, employee breaks, employee meals and split shift pay. Homeland Security is investigating the food industry for undocumented workers. Eliminating or minimizing at least part of your workforce will yield bottom line savings.
With all of this, eliminating one or two employees seems like a good move. Self-pour technology offers the ability to replace servers with machines. A one-time investment yields long-term savings. Reports show that these self-pour machines are reliable, easy to use and are well-received by consumers. They also offer the advantage of eliminating product waste, overpouring and “free giveaways” by staff. This translates to higher profit margins and higher ROI.
Systems come in many styles and price ranges. They can be minimal with one or two taps or diverse with dozens of product offerings. Self-pour systems can be located along a wall or even at individual tables. Providers include iPourIt, Pour My Beer, Table Tap, and Drink Command.
I encourage you to check these technologies out at the next trade show or online. They seem like a good potential solution to one of the industry’s biggest problems in controlling costs.
Dierks Bentley and his Whiskey Row pub chain succeeded in a trademark infringement claim brought by The Row, a Nashville pub. The Row brought the case in federal court when Whiskey Row announced it would be opening a location in Nashville. The Row did not agree with the lower court judge’s decision and appealed and now Whiskey Row asks the appellate court to uphold the lower court decision claiming that it was unrealistic to think that customers would be confused between the two businesses and marks.
This case is interesting because one of the issues raised was that Whiskey Row filed its application more than a year before The Row filed. The argument was that since The Row had constructive knowledge of the earlier application and still proceeded to file its application for its mark, it inherently took the position that it was not confusingly similar when it sought to register its junior mark.
Another argument made by Whiskey Row’s attorneys was that the association of Whiskey Row with the country singer celebrity made confusion unlikely.
The United States Patent and Trademark Office’s website has some great information about confusingly similarity:
The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, it is not required that the marks and the goods/services be exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related such that consumers would mistakenly believe they come from the same source.
Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion. The following are some examples of marks that would be considered similar:
Although spelled differently, the marks sound alike; i.e., they are “phonetic equivalents.”
The marks look very similar, even though the one on the right uses a stylized font.
The marks are similar because, when the Italian word “LUPO” is translated into English, it means “WOLF.”
Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the right also includes words plus the design.
The marks convey a similar general meaning and produce the same mental reaction.
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.
The following are some examples of related goods and/or services:
Goods and Services
When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered. Therefore, it is critical that you conduct a search for conflicting marks before you file, as the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark.
The Tracy Jong Law Firm team can help your business obtain a federal, state or foreign trademark by working with you to develop a custom brand strategy for your company. We have significant experience working with small companies, as well as state and federal trademark agencies. For more information about our services, and how we can assist your company, please contact us at firstname.lastname@example.org.