Coca-Cola Co.v.Country Club Industries (U.S.A.) Corp.

Trademark Trial and Appeal Board

Dec 16, 1998

No. 91102216 (T.T.A.B. Dec. 16, 1998)

Paper No. 22
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 17, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Coca-Cola Company
v.
Country Club Industries (U.S.A.) Corp.
_____
Opposition No. 102,216 to application Serial No. 74/674,081
filed on May 15, 1995
_____
Joan L. Dillon, Bruce W. Baber and Curtis L. Doster of King &
Spalding for The Coca-Cola Company.
Brian Q. Young for Country Club Industries (U.S.A.) Corp.
______
Before Simms, Cissel and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Country Club Industries (U.S.A.) Corp. has filed an
application to register the mark "SPORT POWERACE" for "bottled
drinking water".1
The Coca-Cola Company has opposed registration on the
ground that, since at least as early as 1989, it has adopted,
continuously used and federally registered the mark "POWERADE"

1 Ser. No. 74/674,081, filed on May 15, 1995, which alleges a bona fide
intention to use the mark in commerce.
Opposition No. 102,216
2
for "sports drinks and preparations and syrups for making the
same";2 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 opposer,
since at least as early as 1989, has adopted, continuously used
and is otherwise the owner of all rights, title and interest in
the mark "POWERADE" as applied to sports drinks and the
preparations and syrups for making the same; that opposer is the
owner of the registration therefor as pleaded in the notice of
opposition; that such registration is valid and in full force and
effect; that opposer’s goods are widely advertised and are
distributed through numerous channels of trade including
supermarkets, convenience stores, street vendors, and at
international and local sports events; that opposer’s "POWERADE"
product is among the leading brands of sports drinks available in
the United States; that opposer has made extensive sales of and
has extensively promoted its goods, so that the mark "POWERADE"
has come to be associated with opposer by the purchasing public;
and that the parties’ goods may be offered through the same,
substantially the same or related channels of trade and would be
sold to the same, substantially the same or related classes of
purchasers. Applicant, however, has otherwise denied the salient
allegations of the notice of opposition, including opposer’s
assertion that confusion is likely as to source or sponsorship of

2 Reg. No. 1,832,856, issued on April 26, 1994, which sets forth dates
of first use of October 16, 1989.
Opposition No. 102,216
3
the parties’ goods if such products are marketed under the
respective marks.
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 the senior brand manager of its
"POWERADE" products, Gregory A. Watson. Opposer, as the rest of
its case-in-chief, has submitted a notice of reliance upon (1) a
certified copy of its pleaded registration, showing that the
registration, as admitted by applicant, is subsisting and owned
by opposer; (2) opposer’s discovery deposition, and exhibits
thereto, of applicant’s president, Brian Q. Young; and (3)
applicant’s various responses to opposer’s interrogatories and
requests for production of documents.3 Applicant, however, did
not take testimony, nor did it otherwise introduce any evidence
in its behalf. Briefs have been filed, but an oral hearing was
not requested.
Opposer’s priority of use of its "POWERADE" mark is not
in issue inasmuch as the certified copy of its registration for
such mark shows, as admitted by applicant in its answer, that the
registration is subsisting and owned by 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

3 Although applicant has not interposed an objection thereto, it is
pointed out that, under Trademark Rule 2.120(j)(3)(i), responses to
requests for production of documents are not listed as constituting
proper subject matter for a notice of reliance. Nevertheless, we have
considered such responses, for the limited probative value thereof, as
if stipulated into the record.
Opposition No. 102,216
4
opposer is in fact the prior user of its "POWERADE" mark.4 The
only real issue to be determined, therefore, is whether
applicant’s "SPORT POWERACE" mark, when used in connection with
bottled drinking water, so resembles opposer’s "POWERADE" mark
for sports drinks and preparations and syrups for making such
drinks that confusion is likely as to the origin or affiliation
of the parties’ respective goods.
According to the record, the goods sold and promoted by
opposer under its "POWERADE" mark are known generically as
isotonic beverages or, more commonly, sports drinks. The primary
purpose or benefit of such a drink, as stated by opposer’s
witness, is that:
[I]t’s a thirst quencher. It provides ...
both a replenishment of ... natural fluids
and minerals that you lose as you’re
exercising and also just generally quenches
your thirst after ... any sort of physical
activity.
(Watson dep. at 6.) Mr. Watson additionally noted, however, that
"[w]ater would provide the same benefits". (Id.) In fact,
according to Mr. Watson, bottled water and opposer’s sports
drinks, which are non-carbonated, "absolutely can be" considered
substitutes for each other. (Id. at 9.)
Opposer sells its "POWERADE" products to consumers of
all ages, although it considers the target market for its goods

4 Applicant, having failed to take testimony or otherwise present any
evidence in its behalf, is limited to the May 15, 1995 filing date of
its application as the earliest date on which it can rely in this
proceeding. 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. 102,216
5
to be primarily those who range in age from eight to 18 years
old. Its "POWERADE" sports drinks are currently available in six
different varieties, which it calls "Lemon-Lime," "Fruit Punch,"
"Orange-Tangerine," "Tidal Burst" (a blend of sour fruit
flavors), "Mountain Blast" (a blend of berry and other natural
flavors) and "Jagged Ice" (a blend of blackberry and raspberry
flavors). (Watson dep. Exs. 1A through 1F.) Such drinks are
packaged ready-to-drink in 20, 24, 32 and 64 fluid ounce bottles
and are also sold in a powdered form which, when mixed with
water, constitutes a beverage.
Opposer, in addition to sales through vending machines,
sells its "POWERADE" products in such channels of trade as
supermarkets, convenience stores, petroleum outlets, mass
merchandisers and club warehouse stores. Bottled water,
according to Mr. Watson’s testimony, is distributed in much the
same way, being sold through trade channels which include
supermarkets, convenience stores, petroleum outlets, mass
merchandisers and club warehouse stores. In addition, Mr. Watson
indicated that bottled water is typically "distributed ...
through coolers at airports ... where our products could possibly
be." (Watson dep. at 9.)
At the point of purchase in supermarkets, opposer’s
"POWERADE" sports beverage is typically sold in "the juice sports
drink aisle," while "[i]n convenience and petroleum stores, it’s
generally in a cooler which would ... contain sports drinks ...
[and] non[-]carbonated beverages such as juices and waters and
ready-to-drink teas ...." (Id.) Opposer’s sports drinks, like
Opposition No. 102,216
6
water for drinking, are generally sold in the same kinds of
packaging, consisting typically of bottles with push-pull caps.
Opposer advertises its "POWERADE" sports drinks in
print ads as well as through the use of point-of-sale items such
as pole signs, channel strips, banners, danglers, shelf talkers
and barrel coolers. In addition, at sports events opposer gives
away various promotional items bearing its "POWERADE" mark,
including T-shirts, caps, squeeze bottles, coolers, cups and
hats, to advertise and "develop the imagery of the brand". (Id.
at 14.) Opposer’s advertising of its POWERADE" products has been
continuous since the nationwide introduction of such brand, which
to the best of Mr. Watson’s knowledge occurred in March 1994.
Annual advertising expenditures by opposer to promote its
"POWERADE" sports drinks have ranged "anywhere from $5 million to
$15 million" and have been increasing. (Id. at 15.)
Sales of opposer’s "POWERADE" products in the United
States have totaled "on average anywhere from $130 million to
$170 million a year". (Id.) In the beverage field overall,
sales of opposer’s "POWERADE" sports drinks rank "within the top
... 20 brands" and such products are "the No. 2 brand in the
sports drink category."5 (Id. at 16.) Currently, opposer is the
only company in the sports drink field which incorporates the
term "POWER" in a mark used for such products. Opposer’s
"POWERADE" brand has been the official sports drink of the

5 As of his May 19, 1997 deposition, Mr. Watson indicated that the
sports drink market in the United States constituted an industry with
a sales volume of about a billion dollars a year.
Opposition No. 102,216
7
Olympic Games for the past four years and such status is expected
to continue for the foreseeable future.
Opposer’s "POWERADE" beverages compete with products
outside of the category of sports drinks. In particular,
opposer’s goods primarily compete with such non-carbonated
beverages as juices, ready-to drink teas, waters and fruit
juices. In addition, the record indicates that opposer conducts
appreciable promotional activities in connection with its
"POWERADE" products on the West Coast since "areas like
California and other markets out there are some of the stronger
sports drink markets ...." (Id. at 19.)
Applicant, on the other hand, is a small, closely held
California corporation which is engaged in the import-export
business. Applicant was incorporated on January 1, 1992 and has
its offices, and sole place of business, in Alhambra, California.
Currently, applicant imports and exports only office supplies,
such as pens and paper, from Southeast Asia, although it plans to
export cellular telephones. While, at one time, applicant also
exported wine, it has not done so since about 1994 or 1995.
Thus, other than its intent to import and export bottled drinking
water under its "SPORT POWERACE" mark, applicant presently is not
otherwise involved in the beverage industry in any way.
Applicant does not currently manufacture any of the
products which it sells, although it claims to have plans to do
so with respect to bottled water, pens and combs. In particular,
as to producing bottled water, applicant asserts that it is
waiting for allowance of its involved application before
Opposition No. 102,216
8
proceeding with any specific manufacturing plans. Presently,
however, applicant does not have a warehouse facility; it does
not have a source for the water for its "SPORT POWERACE" product;
and it does not have any specific business plans, marketing
strategies or channels of distribution for such a product.
According to Mr. Young, applicant does not know whether
the bottled water which it intends to market under its "SPORT
POWERACE" mark will be carbonated or not, although he expects
that, unlike opposer’s "POWERACE" sports drinks, applicant’s
product will not have flavors. Mr. Young further noted, however,
that in the future, he "might consider" different flavors for
applicant’s "SPORT POWERACE" bottled water as well as adding
sweetener to such product. (Young dep. at 35.) Moreover, while
applicant, prior to selecting its mark, did not engage in any
market studies, research or surveys and was not aware of
opposer’s "POWERADE" mark, applicant knew, before filing its
involved application, that there is a sports drink industry in
the United States and was familiar with the "GATORADE" brand of
sports drink products. Applicant, at such time, had heard of
opposer, but thought that opposer made just soft drink beverages.
Applicant’s first had actual knowledge of opposer’s "POWERADE"
mark when it received a copy of the notice of opposition in this
matter from the Patent and Trademark Office.
Applicant intends to sell its "SPORT POWERACE" bottled
drinking water to "the normal regular customer. The people."
(Id. at 31.) As to whether such beverage would be a sports
drink, Mr. Young testified as follows:
Opposition No. 102,216
9
Q What was the idea behind the Sport
Powerace name? In other words, were you
anticipating it would be a sports drink to be
marketed and sold to people engaged in
sporting activities?
A Not just sport activity. For
regular consumer.
Q Would it be straight water or would
there be anything else in it?
A I believe straight water.
Q Similar to Crystal Geyser water or
Evian water or something like that?
A Yes.
(Id. at 24.) Applicant intends to compete with other bottled
beverages and anticipates selling its drinking water through both
wholesale and retail channels of trade, including liquor stores
and mass merchandisers such as K Mart and Target. Applicant,
however, has not licensed or otherwise commenced use of its
"SPORT POWERACE" mark.
As to the reason why applicant’s mark contains the word
"SPORT," Mr. Young testified as follows:
Q Let me ... clarify my question.
What’s the effect of having sport here?
What does that have to do with the product?
A Sport is for somebody that ... do
some of the sport [activities] and also
people who are walking, or [do] work. So
they ... all ... can drink this water. It’s
like energy.
(Id. at 40.) Mr. Young added that applicant’s water will provide
energy to consumers thereof because it "[p]robably" will be
"spring water". (Id. at 41.) Furthermore, while conceding that
the parties’ respective goods are similar in that both constitute
Opposition No. 102,216
10
water and share the word "POWER" in their marks, Mr. Young
indicated that confusion as to source or sponsorship was not
likely because, in addition to differences in the respective
marks, opposer’s "POWERADE" sports drink is essentially a soft
drink, rather than "just water" like applicant’s "SPORT POWERACE"
product, and is sold chiefly to people who participate in sports
activities, instead of to "the regular customer" as applicant’s
bottled drinking water will be. (Id. at 57-58.)
In terms of the volume of its import-export business,
applicant had gross annual revenues of between $30,000 and
$40,000 in 1994 and 1995, with net revenue of $20,000 in 1995.
Despite a net loss in 1996, applicant expects its gross annual
revenue to be in the same range as that for the previous two
years. Applicant advertises its import-export business only in
the local Yellow Pages and has not done any advertising, press
releases or other promotional activities with respect to
introducing its "SPORT POWERACE" product into the marketplace.
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. As a starting point, it is well settled that
the issue of likelihood of confusion must be determined in light
of the goods set forth in the opposed application and pleaded
registration and, in the absence of any specific limitations
therein, on the basis of all normal and usual channels of trade
and methods of distribution for such goods. See, e.g., CBS Inc.
Opposition No. 102,216
11
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, applicant’s goods are broadly identified in its
application as "bottled drinking water," a description which
encompasses not only plain or non-carbonated water but, like
opposer’s sports drinks, also includes flavored and/or sweetened
water. The respective goods, in any event, can be considered as
substitutes for each other in that both beverages provide the
same benefits in terms of quenching thirst and replenishing
fluids and minerals lost by the body during exercise or sports
activities. Moreover, as admitted by applicant, the parties’
goods may be offered through the same, substantially the same or
related channels of trade, such as supermarkets, convenience
stores, petroleum outlets, mass merchandisers, club warehouse
stores, airport coolers and vending machines, and would be sold
to the same, substantially the same or related classes of
purchasers, including sports participants, athletes, teenagers
and adults in general. Furthermore, both opposer’s sports drinks
and applicant’s bottled drinking water would typically be sold,
like juices, flavored water, ready-to-drink teas and other non-
carbonated drinks, in the same aisles or cooler displays of
retail beverage outlets and would be packaged in the same types
of push-pull capped containers for convenient consumption.
Clearly, if such closely related, fungible goods as sports drinks
and bottled drinking water were to be sold under the same or
Opposition No. 102,216
12
similar marks, confusion as to the origin or affiliation thereof
would be likely to occur.
Applicant contends, however, that despite the fact that
the respective marks contain the formative term "POWER,"
confusion is not likely because, principally in light of the
presence of the word "SPORT" in its mark, the parties’ marks are
otherwise dissimilar in sound, appearance, connotation and
commercial impression.6 We agree with opposer, however, that
when the marks "POWERADE" and "SPORT POWERACE" are considered in
their entireties, the marks are highly similar aurally, visually
and connotatively and project substantially the same overall
commercial impression. Specifically, as pointed out by opposer,
the term "POWERACE" in applicant’s mark differs from opposer’s
"POWERADE" mark by just a single letter, while the additional
word "SPORT" in applicant’s mark "is merely descriptive of the
fact that its product is designed for use by persons who are
’do[ing] some of [the] sport’" or exercise activities and thus
would utilize applicant’s bottled drinking water as a kind of
sports drink. Plainly, when respectively used in connection with
bottled drinking water and sports drinks, which are products that

6 While differences are concededly apparent on the basis of a side-by-
side comparison, such a comparison is not the proper test to be used
in determining the issue of likelihood of confusion since it is not
the ordinary manner in which consumers will be exposed to the marks.
Rather, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, given the
fallibility of memory and the consequent lack of perfect recall,
whether confusion as to source or sponsorship is likely. The proper
emphasis is thus on the recollection of the average purchaser, who
normally retains a general rather that a specific impression of
trademarks or service marks. See, e.g., In re United Service
Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986); and In re Solar
Energy Corp., 217 USPQ 743, 745 (TTAB 1983).
Opposition No. 102,216
13
typically are not bought with care since by their nature they are
frequently replaced and often subject to impulse purchase, the
marks "SPORTS POWERACE" and "POWERADE" are likely to cause
confusion. Such would especially be the case inasmuch as opposer
is the only company in the field of sports beverages which uses a
mark incorporating the term "POWER".
Moreover, as a final, if not dispositive, factor,
applicant has conceded in its brief that opposer’s "POWERADE mark
is a well-known mark"; that opposer’s "POWERADE sports drink
product is widely advertised nationally"; and that opposer’s
sales thereof "have been significant." Applicant, as noted
previously, also admitted in its answer that opposer’s goods are
widely advertised and are distributed through numerous channels
of trade; that opposer’s "POWERADE" product is among the leading
brands of sports drinks available in the United States; and that
opposer has made extensive sales of and has extensively promoted
its goods, so that the mark "POWERADE" has come to be associated
with opposer by the purchasing public. In any event, the record
establishes that opposer has continuously advertised its
"POWERADE" products since their nationwide introduction in March
1994; that annual advertising expenditures to promote its
"POWERADE" sports drinks have ranged in the neighborhood of $5
million to $15 million and have been increasing; that sales of
such products in the United States have averaged from $130
million to $170 million a year in a marketplace with annual sales
of around $1 billion; that the "POWERADE" product has been the

Opposition No. 102,216
14
official sports drink of the Olympic Games for the past four
years; and that, in the beverage field, opposer’s "POWERADE"
sports drinks are one of the top 20 brands and are the second
most popular brand in the sports drink category.
Consequently, even if opposer’s "POWERADE" mark cannot
be said to be famous generally, it has clearly become well known
to consumers in the sports drink field and, as a strong mark, it
is entitled to a correspondingly broad scope of protection from
imitation. As emphasized by our principal reviewing court in
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 113
S.Ct. 181 (1992):
The fifth duPont factor, 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.
In view of the renown of opposer’s "POWERADE" mark for sports
drinks, purchasers and prospective customers, particularly in the
absence of any third-party uses of marks containing the term
"POWER" in connection with beverages, could reasonably believe,
upon encountering applicant’s "SPORT POWERACE" mark on such a
closely related, energy-enhancing substitute as bottled drinking
water, that such goods constitute a new or expanded line of
beverage products from the same source as opposer’s "POWERADE"
sports drinks. The widespread recognition of opposer’s mark thus
weighs decisively in its favor inasmuch as it serves to magnify
the appreciable overall similarities in sound, appearance,
connotation and commercial impression between such mark and
Opposition No. 102,216
15
applicant’s "SPORT POWERACE" mark. See Kenner Parker Toys Inc.
v. Rose Art Industries Inc., supra at 1458.
We accordingly conclude that customers who are familiar
with opposer’s well known "POWERADE" mark for sports drinks would
be likely to believe, upon encountering applicant’s highly
similar "SPORT POWERACE" mark in connection with bottled drinking
water, 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. L. Simms
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board