Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1184085
`01/12/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`PepsiCo, Inc.
`
`Corporation
`
`700 ANDERSON HILL ROAD
`PURCHASE, NY 10577
`UNITED STATES
`
`Citizenship
`
`North Carolina
`
`PAUL A. LEE
`SENIOR TRADEMARK COUNSEL
`PEPSICO, INC.
`700 ANDERSON HILL ROAD
`PURCHASE, NY 10577
`UNITED STATES
`Primary email: trademarks@pepsico.com
`Secondary email(s): paul.lee@pepsico.com, donna.j.sanders@pepsico.com
`No phone number provided
`
`Applicant information
`
`Application no.
`
`90607986
`
`01/12/2022
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`12/14/2021
`
`Opposition period
`ends
`
`01/13/2022
`
`Freedman, Jessica L
`272 LEONARD STREET, APT #3
`BROOKLYN, NY 11211
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 032. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-alcoholic mixes used in the prepara-
`tion of alcoholic cocktails
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`824150
`
`Register
`
`Principal
`
`Application date
`
`09/09/1966
`
`Registration date
`
`02/14/1967
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`date
`
`PEPSI
`
`NONE
`
`Class 032. First use: First Use: 1911/11/21 First Use In Commerce: 1911/11/21
`SOFT DRINKS AND SYRUPS AND CONCENTRATESFOR THE PREPARA-
`TION THEREOF
`
`U.S. registration
`no.
`
`1317551
`
`Register
`
`Principal
`
`Registration date
`
`02/05/1985
`
`Application date
`
`09/29/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`PEPSI
`
`NONE
`
`Class 004. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00
`[ Candles ]
`Class 006. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00
`Key Chains
`Class 009. First use: First Use: 1977/00/00 First Use In Commerce: 1977/00/00
`[ Radios and Can Shaped Telephones]
`Class 011. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00
`Electric Lamps [ and Charcoal Burning Barbecue Grills ]
`Class 014. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00
`Clocks
`Class 016. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00
`[ Pencil Cases and ] Pens
`Class 018. First use: First Use: 1979/00/00 First Use In Commerce: 1979/00/00
`Umbrellas
`Class 020. First use: First Use: 1970/00/00 First Use In Commerce: 1970/00/00
`[ Mirrors and Bean Bag Chairs ]
`Class 021. First use: First Use: 1972/00/00 First Use In Commerce: 1972/00/00
`Drinking Glasses, [ Polyurethane Beverage Can Holders, Wastebaskets for Do-
`mestic Use, ] Insulated Bags for Food, Beverages and Ice
`Class 024. First use: First Use: 1974/00/00 First Use In Commerce: 1974/00/00
`Beach Towels
`Class 025. First use: First Use: 1974/00/00 First Use In Commerce: 1974/00/00
`T-Shirts, Sweatshirts, [ Jeans, Overalls, ] Baseball Caps [ , Knit Hats, Jackets,
`Aprons and Belts ]
`Class 026. First use: First Use: 1982/06/00 First Use In Commerce: 1982/06/00
`[ Embroidered Patches for Clothing ]
`Class 028. First use: First Use: 1975/00/00 First Use In Commerce: 1975/00/00
`[ Toy Can Banks, Toy Trucks, Toy Railroad Cars, Toy Soda Dispensers and Kal-
`eidoscopes ]
`
`U.S. registration
`
`1488547
`
`Application date
`
`12/04/1986
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`05/17/1988
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`PEPSI
`
`NONE
`
`Class 025. First use: First Use: 1986/10/00 First Use In Commerce: 1986/10/00
`CLOTHING, NAMELY SWEATSHIRTS, SWEAT BOTTOMS, T-SHIRTS, [
`SHIRTS, JEANS, SUSPENDER JEANS, JACKETS, PULLOVERS ] AND JER-
`SEYS
`
`U.S. registration
`no.
`
`3659286
`
`Register
`
`Principal
`
`Registration date
`
`07/21/2009
`
`Word mark
`
`Design mark
`
`PEPSI
`
`Application date
`
`10/06/2008
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "PEPSI" in a stylized format.
`
`Class 032. First use: First Use: 2008/12/00 First Use In Commerce: 2008/12/00
`Concentrates, syrups or powders used inthe preparation of soft drinks; Soft
`drinks
`
`Attachments
`
`77586010#TMSN.png( bytes )
`noo pepsi v pepy pl sig.pdf(401815 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Paul A. Lee/
`
`Paul A. Lee
`
`01/12/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`: PEPY
`: Jessica L. Freedman
`: 90/607,986
`: March 28, 2021
`
`: December 14, 2021
`
`Opposition No.
`
`
`IN THE MATTER OF APPLICATION:
`
`Mark
`
`Applicant
`Serial No.
`Filed
`
`Published in
`the Official Gazette
`
`_________________________________________ x
`
`
`
`
`
`
`
`:
`PEPSICO, INC.,
`
`
`
`
`:
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`
`
`
`
`
`
`:
`Opposer,
`
`
`
`:
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`
`
`:
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`
`
`
`
`:
`v.
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`
`
`
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`:
`
`
`JESSICA L. FREEDMAN,
`
`
`
`:
`
`
`
`
`
`
`
`:
`Applicant.
`
`
`
`:
`_________________________________________ x
`
`
`NOTICE OF OPPOSITION
`
`Opposer, PepsiCo, Inc. ("PepsiCo" or "Opposer"), a North Carolina corporation having a
`
`place of business at 700 Anderson Hill Road, Purchase, New York 10577, believes that it will be
`
`damaged by the registration of United States Trademark Application Serial No. 90/607,986, filed
`
`on March 28, 2021, in the name of Jessica L. Freedman (hereinafter "Applicant") for the mark
`
`PEPY based on an intent to use the mark on or in connection with “Non-alcoholic mixes used in
`
`the preparation of alcoholic cocktails” in International Class 32, and, having been previously
`
`granted an extension of time to oppose, hereby opposes the foregoing application.
`
`The specific grounds for this opposition are as follows:
`
`1
`
`
`

`

`1.
`
`PepsiCo, through its predecessors-in-interest, has been engaged in the beverage
`
`business for over 100 years and has become well and favorably known to members of the public,
`
`as well as to members of the beverage industry, for quality beverage products and related services.
`
`It owns a portfolio of brands that identify carbonated soft drinks, juices and juice drinks, ready-to-
`
`drink teas and coffee drinks, isotonic sports drinks, bottled water and enhanced waters, and related
`
`products and services, as well as other consumer merchandise.
`
`2.
`
`For over a century, PepsiCo has used the PEPSI mark in connection with various
`
`beverages and other products, as well as advertising, marketing, sales and promotional services to
`
`authorized bottlers and independent distributors and retailers of those products.
`
`3.
`
`Since long prior to the filing date of the application-at-issue, PEPSI has been
`
`identified with Opposer and has appeared on a tremendous amount of product packaging,
`
`advertising, in-store display racks, signage and point-of purchase material.
`
`4.
`
`Opposer's products bearing the PEPSI mark are marketed and sold in vast quantities
`
`on a nationwide basis, supported by hundreds of millions of dollars of advertising and promotion
`
`each year. Opposer's products are sold in almost every supermarket in the United States as well as
`
`in mass merchandise stores, numerous convenience stores, vending machines, and other outlets.
`
`5.
`
`The extensive commercial acceptance and success of many of Opposer's products
`
`bearing the PEPSI mark for many decades is due in large measure to the substantial advertising
`
`and marketing efforts of PepsiCo. Such efforts have included the use of celebrities and artists to
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`advance and promote the products. Opposer has, by virtue of such extensive usage, advertising
`
`and promotion, built up a very high level of consumer and trade recognition symbolized by its
`
`PEPSI mark. Retail sales of beverage products marketed under Opposer's PEPSI mark in the
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`United States alone have exceeded many billions of dollars.
`
`2
`
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`

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`6.
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`PepsiCo's use of the PEPSI mark also extends beyond beverages, per se, and
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`includes other products and services. Indeed, for many decades now, PepsiCo has been marketing
`
`and selling clothing, baseball caps, umbrellas, drinking glasses, beach towels, clocks, pens, key
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`chains, novelty items and other products under the PEPSI mark. The PEPSI mark is also used in
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`various high-profile entertainment and promotional venues involving sports, popular culture and
`
`musical entertainment.
`
`7.
`
`PepsiCo also maintains a strong and innovative internet presence, through which it
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`markets, advertises and promotes many of the foregoing products and services bearing the PEPSI
`
`mark, among others. PepsiCo’s websites include PEPSI.COM which is operational twenty-four
`
`hours a day, seven days a week. PepsiCo also maintains a Facebook page and YouTube Channel
`
`dedicated to promoting the PEPSI brand.
`
`8.
`
`Due to such extensive and continuous advertising, sale, use and promotion of soft
`
`drinks and related products and services under or in connection with Opposer’s PEPSI mark for
`
`many decades, these marks have not only acquired substantial public and consumer recognition
`
`throughout the United States, but have also enjoyed valuable goodwill, and become famous, solely
`
`signifying Opposer as the source of products and services of high quality.
`
`9.
`
`In addition to its prior common law rights in the PEPSI mark, Opposer is also the
`
`owner of numerous live United States trademark and service mark registrations, each of which
`
`incorporate the PEPSI mark or variants thereof, including, but not limited to, the following:
`
`MARK
`
`PEPSI
`
`REG. NO. REG. DATE FIRST
`USE
`DATE
`Feb. 14, 1967 November
`1911
`
`824150
`
`IDENTIFICATION OF
`GOODS
`
`Soft drinks and syrups and
`concentrates for the
`preparation thereof, in
`Class 32
`
`
`3
`
`
`

`

`PEPSI
`
`1317551
`
`Feb. 5, 1985
`
`1981
`1981
`1981
`1981
`1979
`1972
`
`
`
`1974
`1974
`
`
`PEPSI
`
`1488547
`
`May 17, 1988 October
`1986
`
`
`
`3659286
`
`Jul. 21, 2009 December
`2008
`
`Key chains, in Class 6
`Electric lamps, in Class 11
`Clocks, in Class 14
`Pens, in Class 16
`Umbrellas, in Class 18
`Drinking glasses,
`Insulated bags for food,
`beverages and ice, in
`Class 21
`Beach towels, in Class 24
`T-shirts, sweatshirts,
`baseball caps, in Class 25
`
`Clothing, namely
`sweatshirts, sweat
`bottoms, T-shirts and
`jerseys, in Class 25
`
`Concentrates, syrups or
`powders used in the
`preparation of soft drinks;
`Soft drinks, in Class 32
`
`
`
`10.
`
`Opposer's registrations for these marks are valid, subsisting, in full force and effect,
`
`uncancelled and unrevoked, and serve as evidence of Opposer's exclusive right to use such marks
`
`in commerce on or in connection with the goods or services identified in the registrations, as
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`provided by Section 33(a) of the United States Trademark (Lanham) Act, 15 U.S.C. § 1115(a).
`
`Further, many of Opposer's registrations have become incontestable pursuant to Section 15 of the
`
`Lanham Act, 15 U.S.C. § 1065. Hereinafter PepsiCo's foregoing marks, including those registered
`
`and/or used in commerce, are referred to individually and/or collectively as the "PEPSI Marks",
`
`unless otherwise specified.
`
`11.
`
`Use of the PEPSI Marks has been continuous and they have not been abandoned.
`
`As a result of the long, extensive and widespread use, advertising, promotion and registration of
`
`the PEPSI Marks on and in association with PepsiCo's various goods and services, consumers have
`
`4
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`

`

`become accustomed to associating marks consisting of or containing the term "PEPSI" with a
`
`single source, that is, PepsiCo.
`
`12.
`
`In view of such substantial usage, the PEPSI Marks, including PEPSI, became
`
`famous long prior to the filing date of the application at issue. Indeed, the PEPSI brand is one of
`
`the most renowned brands in the United States, representing assets of enormous goodwill and of
`
`inestimable value to PepsiCo.
`
`13.
`
`On information and belief, on March 28, 2021, Applicant Jessica L. Freedman, an
`
`individual having an address at 272 Leonard Street, Apt #3, Brooklyn, New York 11211, filed
`
`Application Serial No. 90/607,986 to register PEPY, based on an intent to use the mark on or in
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`connection with “Non-alcoholic mixes used in the preparation of alcoholic cocktails” in
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`International Class 32. Upon information and belief, at the time Applicant filed its application for
`
`the PEPY mark, it was or should have been fully aware of Opposer’s PEPSI Marks and its rights
`
`therein.
`
`14.
`
`Registration of Applicant’s alleged mark, which is the subject of the application-
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`in-opposition, is barred by the provisions of Section 2(d) of the Trademark Act of 1946 because
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`the said mark consists of or comprises a mark which so resembles Opposer's PEPSI Marks which
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`have been in use and are also the subject of prior registrations or previously filed applications to
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`register marks in the United States Patent and Trademark Office, as to be likely, when used in
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`connection with the alleged products of the Applicant to cause confusion, mistake or deception.
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`15.
`
`Opposer has priority over Applicant because Opposer's use, application filing dates
`
`and/or registration dates for the PEPSI Marks precede the Applicant’s filing date for its application
`
`at issue and/or any alleged date of first use of Applicant’s purported mark which is the subject of
`
`the application-in-opposition.
`
`5
`
`
`

`

`16.
`
`Applicant’s alleged PEPY mark, which is the subject of the application-in-
`
`opposition, is near-identical in sound, appearance, and commercial impression to Opposer’s PEPSI
`
`Marks. In addition, the words PEPY and PEPSI each contain two syllables, including three of the
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`same initial letters (PEP) making up the identical first syllable. The marks also share the same
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`ending Y or I sound, making them sound-alikes. On information and belief, the products in
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`connection with which Applicant’s alleged mark is used or applied for and the goods/services in
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`connection with which Opposer's PEPSI Marks are registered and/or used are identical, similar,
`
`complementary and/or related.
`
`17.
`
`Accordingly, Applicant’s alleged mark shown in the application-in-opposition so
`
`resembles Opposer's foregoing and previously used and/or registered PEPSI Marks, including
`
`PEPSI, as to be likely to cause confusion, to cause mistake or to deceive with consequent injury to
`
`Opposer. The likelihood of confusion, mistake or deception that would also arise from concurrent
`
`use and registration of the applied for PEPY mark with Opposer's use and registration of its PEPSI
`
`Marks is that (a) persons are likely to believe that Applicant’s products have their source in
`
`Opposer, or (b) that Applicant and its products are a version of Opposer's marks or are in some
`
`way legitimately connected or affiliated with, sponsored, approved, endorsed or licensed by
`
`Opposer when, in fact, they are not.
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`18.
`
`In view of the foregoing, registration of Applicant’s alleged PEPY mark, which is
`
`the subject of the application-in-opposition, is barred from registration because it consists of or
`
`comprises a mark which so resembles Opposer's previously used and/or registered PEPSI Marks,
`
`as to be likely, when used in connection with the alleged products of the Applicant, to cause
`
`confusion, mistake or deception.
`
`6
`
`
`

`

`19.
`
`Further, Opposer's inherently distinctive PEPSI Marks, including PEPSI, became
`
`famous prior to the filing date of Applicant’s application-in-opposition and/or any claimed date of
`
`first use by Applicant of the alleged mark shown in U.S. Application Serial No. 90/607,986.
`
`Registration and use of Applicant’s alleged mark would likely dilute Opposer's famous and
`
`inherently distinctive PEPSI Marks in violation of 15 U.S.C. § 1125(c). Accordingly, Applicant’s
`
`alleged PEPY mark is not entitled to registration under 15 U.S.C. § l052(f) and Section 13 of the
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`Lanham Act, 15 U.S.C. § 1063.
`
`20.
`
`PepsiCo will be damaged by the issuance of a registration sought by Applicant
`
`within the meaning of 15 U.S.C. § 1063 because such registration would support and assist
`
`Applicant in the confusing, misleading, deceptive and/or dilutive use of Applicant’s alleged PEPY
`
`mark and would give color of exclusive statutory rights to Applicant in violation and derogation
`
`of the prior and superior rights of PepsiCo.
`
`WHEREFORE, Opposer prays that this opposition be sustained in its favor, that
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`registration be denied to Applicant on its Application Serial No. 90/607,986 and that the Board
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`grant all further relief to Opposer that is necessary and just in these circumstances.
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`Dated: January __, 2022
`
`12
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`Respectfully submitted,
`
`PEPSICO, INC.
`
`
`
`
`
`
`
`
`
`Paul A. Lee
`Attorney-for-Opposer
`700 Anderson Hill Road
`Purchase, NY 10577
`(914) 253-3443
`
`By:
`
`
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`7
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