Rudolf Wild GmbH & Co. KGv.1 Uno Espresso, Inc.

Trademark Trial and Appeal Board

Jun 5, 1998

No. 91093813 (T.T.A.B. Jun. 5, 1998)

Hearing: Paper No. 44
September 26, 1997 HANAK/MD/LB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 5, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rudolf Wild GmbH & Co. KG
v.
1 Uno Espresso, Inc., d/b/a Orlandi Specialty Foods and
d/b/a Caffe Mauro
_____
Opposition No. 93,813
to application Serial No. 74/320,679
filed on October 6, 1992
_____
Brendan J. O’Rourke of Paul, Hastings, Janofsky & Walker LLP
for Rudolf Wild GmbH & Co. KG.
Patrick Michael Dwyer of Dwyer Marquardt PLLC for 1 Uno
Espresso, Inc., d/b/a Orlandi Specialty Foods and d/b/a
Caffe Mauro.
______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
1 Uno Espresso, Inc. d/b/a Orlandi Specialty Foods and
d/b/a Caffe Mauro (applicant) seeks registration of CAPRI in
typed capital letters for “whole and ground coffee beans,
espresso and other coffee beverages.” The application was
Opposition No. 93,813
2
filed on October 6, 1992 with a claimed first use date of
July 24, 1991.
Rudolf Wild GmbH & Co. KG (opposer) filed a notice of
opposition on February 23, 1994 alleging that prior to July
24, 1991, opposer had both registered and, through a
licensee, “used the trademark CAPRI SUN in connection with
fruit drinks.” (Notice of opposition paragraphs 2 and 4).
Furthermore, opposer alleged that it owned a “CAPRI SUN
family of marks.” (Notice of opposition paragraphs 5, 11,
12 and 13). Finally, opposer alleged that “applicant’s mark
CAPRI consists of and comprises a mark which so resembles
[petitioner’s] aforesaid CAPRI SUN family of marks which are
registered in the U.S. Patent and Trademark Office, as to be
likely, when used on or in connection with goods of
applicant, to cause confusion, or to cause mistake, or to
deceive.” (Notice of opposition paragraph 14).
Subsequently, opposer realized that its original notice of
opposition was not accompanied by a duplicate copy for
service on applicant, and on March 15, 1994 opposer filed a
second notice of opposition (duplicating the first) which
this Board in an order dated June 28, 1994 characterized as
an “amended notice of opposition.” Thereafter, applicant
filed a timely answer which denied the essential allegations
of the notice of opposition.
Opposition No. 93,813
3
Opposer’s evidence in this case includes the testimony
depositions with exhibits of Kent Wilson (a brand manager at
Kraft Foods) and Monica Griesdorn (a senior brand manager at
Kraft Foods). In addition, opposer has properly made of
record by means of a notice of reliance dated August 15,
1995 certified status and title copies of seven
registrations in the name of opposer. They are:
(1) Registration No. 1,130,086 for CARPI-SUN for “fruit
drinks containing water and orange juice”; (2) Registration
No. 1,187,978 for CAPRI SUN NATURAL FRUIT DRINK APPLE and
design for “fruit drinks containing water and apple juice”;
(3) Registration No. 1,279,154 for CAPRI SUN FRUIT PUNCH and
design for “fruit juice drinks containing water”; (4)
Registration No. 1,287,165 for CAPRI SUN GRAPE DRINK and
design for “fruit drink containing water and grape juices”;
(5) Registration No. 1,303,000 for CAPRI SUN and design for
“fruit drink containing lemon juice and water”; (6)
Registration No. 1,567,441 for CAPRI SUN MAUI PUNCH and
design for “non-alcoholic fruit juice drink”; and (7)
Registration No. 1,660,010 for CAPRI SUN and design for
“fruit drink containing juice and water.” By the same
notice of reliance, opposer also made of record an eighth
registration, namely, Registration No. 1,199,783 for CAPRI
SUN NATURAL FRUIT DRINK ORANGE and design. However, the
owner of that registration is not opposer but rather Zick-
Opposition No. 93,813
4
Zack-Werk Rudolf Wild. Likewise, in its “amended notice of
opposition” dated March 15, 1994, opposer attached certified
status and title copies not only of the foregoing eight
registrations, but also a ninth registration, namely,
Registration No. 1,545,561 for CAPRI SUN 100% NATURAL for
“natural fruit drinks containing water.” This ninth
registration is in the name of opposer. We note that with
regard to this ninth registration, a Section 8 affidavit was
due on June 27, 1995, and that this ninth registration was
not included in opposer’s notice of reliance dated August
15, 1995. A check of PTO records revealed that it was
canceled for failure to file a Section 8 affidavit.
Applicant’s evidence includes the testimony depositions
with exhibits of Mauro Cipolla and Mario Cipolla, son and
father owners of applicant. In addition, by means of a
notice of reliance dated October 13, 1995, applicant
properly made of record third-party United States trademark
registrations and applications for various marks containing
the letters CAPRI. We use the term “letters” because in
certain of the marks the letters stand apart as the word
CAPRI and in other marks the letters are part of another
word (e.g. CAPRICE).
Opposer’s prior counsel (not current counsel) failed to
file opposer’s initial brief when due. Applicant filed its
brief in timely fashion. Because of certain actions and
Opposition No. 93,813
5
inactions on the part of opposer’s prior counsel, this Board
took the following action in an order dated May 24, 1996:
“Applicant’s request for sanctions in the form of dismissal
is denied but opposer is hereby sanctioned by being
precluded from filing any brief on the case, including a
reply to applicant’s brief, which is already of record … The
parties are allowed until 30 days from the mailing of this
order to file their requests, if any, for oral argument.”
Opposer sought reconsideration of the Board’s order of May
24, 1996, which was denied in a detailed opinion of this
Board dated December 9, 1996. Prior to that decision,
opposer’s prior counsel requested an oral argument which was
held before this Board on September 26, 1997. In attendance
at the oral argument were applicant’s counsel and opposer’s
current counsel. At the oral argument, this Board permitted
opposer’s current counsel to submit an “Index of Opposer’s
Cases.” This index consists of photocopies of thirty-one
reported Court and Board decisions relied upon by opposer at
the oral argument. In addition, opposer’s current counsel
was permitted to hand to the judges at the oral argument
copies of exhibits which opposer had made of record during
the depositions of Mr. Wilson and Ms. Griesdorn. Opposer’s
current counsel also submitted at the oral hearing other
“exhibits” which were not part of the record, but which
instead opposer had specially prepared for the hearing.
Opposition No. 93,813
6
While the Board judges saw these latter “exhibits,” they
were not considered in reaching our decision. However, what
was considered was all of opposer’s evidence and, to the
extent helpful, the “Index of Opposer’s Cases.” This index,
coupled with the oral comments of opposer’s current counsel,
essentially constituted a full presentation of opposer’s
arguments.
Turning to a consideration of opposer’s evidence, we
note at the outset that opposer has not made of record any
trademark license agreement or any other agreement between
opposer and Kraft Foods showing that the activities of Kraft
Foods in selling CAPRI SUN products in the United States
inure to the benefit of opposer. Both of opposer’s
witnesses (Mr. Wilson and Ms. Griesdorn) testified that they
were employees of Kraft Foods. Mr. Wilson stated that he
was the brand manager for “the CAPRI SUN brand.” (Wilson
dep. 6). Ms. Griesdorn testified that she was the senior
brand manager for Kraft Foods in the ready-to-drink area and
that this area included such brands as CAPRI SUN, KOOL-AID
BURSTS and MR. FREEZE. (Griesdorn dep. 5). However, the
testimony of both witnesses was extremely vague as to the
relationship, if any, between opposer and Kraft Foods. This
vagueness is demonstrated by the following question and
answer series which took place between opposer’s prior
Opposition No. 93,813
7
counsel and Ms. Griesdorn at pages 9 and 10 of her
deposition:
Q. Is it fair to say that you have spent
your career at Kraft in the beverage
field?
A. Yes.
Q. Are you familiar with a company
called Capri Sun, Inc.?
A. Yes.
Q. And what is that company?
A. It’s the company that allows us in the United
States to have the sole right to distribute
Capri Sun products through, I believe, a
licensing agreement.
Q. And with whom would that licensing agreement
be?
A. Wild Corporation.
Q. Would that be Rudolf Wild –-
A. Yes.
Q. –- Company?
Is Capri Sun, Inc. related to General Foods –-
I’m sorry, to Kraft Foods in any way that you’re
familiar with?
A. Not positive.
We are somewhat constrained in describing the vagueness of
Mr. Wilson’s testimony regarding the relationship, if any,
between opposer and Kraft Foods inasmuch as that portion of
his deposition (pages 20-23) was designated as confidential
by opposer’s prior counsel. However, suffice it to say that
Mr. Wilson -– who testified the he was the brand manager for
Opposition No. 93,813
8
only one product at Kraft Foods, namely, CAPRI SUN –-
conceded that he was not even familiar with a company known
as Capri Sun, Inc. (Wilson dep. 22, line 11 to 23, line 8).
Because of the absence of any agreement between opposer
and Kraft Foods, and because of the vagueness of the
testimony of Mr. Wilson and Ms. Griesdon as to the
relationship, if any, between opposer and Kraft Foods, we
simply cannot assume that the activities of Kraft Foods in
selling and advertising CAPRI SUN products in the United
States inured to the benefit of opposer. This determination
affects the opposer in one crucial respect, namely, in that
opposer has offered no evidence to support its contention,
as articulated by opposer’s current counsel at the oral
hearing, that opposer’s mark CAPRI SUN is famous in the
United States. Obviously, opposer’s registrations of CAPRI
SUN in various forms for various fruit juice drinks do not
constitute evidence that the mark CAPRI SUN is famous in the
United States (or elsewhere). Nevertheless, in the event
this determination is found in error on appeal, we will
consider at the conclusion of this opinion opposer’s claim
that its mark CAPRI SUN is famous in the United States under
the assumption that the sales and advertising of CAPRI SUN
products in the United States by Kraft Foods inured to
opposer’s benefit.
Opposition No. 93,813
9
Turning to the merits of the case, we note that there
is no dispute that priority rests with opposer because
opposer properly made of record its aforementioned
registrations for CAPRI SUN. Thus, the only issue before
this Board is whether there exists a likelihood of confusion
resulting from the contemporaneous use of opposer’s CAPRI
SUN mark for juice drink beverages and applicant’s CAPRI
mark for whole and ground coffee beans, espresso and other
coffee beverages. To be perfectly clear, as previously
noted, opposer alleged in its notice of opposition (and
“amended notice of opposition”) that it owned a “CAPRI SUN
family of marks.” Moreover, as previously noted, opposer
has made of record seven existing registrations, each of
which depicts the words CAPRI SUN (or CAPRI-SUN) in a
prominent fashion, six times with other wording and/or
designs and one time by itself. However, opposer has
totally failed to establish that it owns a family of CAPRI
SUN marks. Opposer has made of record no evidence showing
that it has advertised, promoted or even displayed its
various CAPRI SUN marks together. However, as a practical
matter, this failure of proof is of little consequence. All
of opposer’s registered marks have as their most prominent
feature the words CAPRI SUN. The other wording –- such as
grape drink, fruit punch etc. -- is almost exclusively
generic and has quite properly been disclaimed. Moreover,
Opposition No. 93,813
10
the design feature common to five of opposer’s registered
marks (pictured below) in no way serves to make any of
opposer’s marks more similar to applicant’s mark.
Indeed, said design feature only serves to make certain of
opposer’s CAPRI SUN registered marks more dissimilar from
applicant’s mark. Finally, we note that in the depositions
of Mr. Wilson and Ms. Griesdorn, there was no discussion
whatsoever of opposer’s various registered marks other than
the mark CAPRI SUN per se. Moreover, when sales and
advertising figures were given by Mr. Wilson for CAPRI SUN
juice drink beverages, these figures lumped all twelve
current flavors of CAPRI SUN juice drink beverages together.
Hence, in our likelihood of confusion analysis, we will
focus solely on a comparison of the marks CAPRI SUN for
juice drink beverages and CAPRI for whole and ground beans,
espresso and other coffee beverages.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by Section 2(d) goes to
Opposition No. 93,813
11
the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Opposer’s product and applicant’s products share
essentially only two common characteristics: (1) Both are
beverages (or can be made into beverages); and (2) both can
be purchased in grocery stores and supermarkets.
Opposer’s CAPRI SUN product was characterized by Mr.
Wilson as “a juice drink beverage; meaning it has some juice
in it but it’s not a hundred percent juice.” (Wilson dep.
12). Of course, opposer has also made of record various
registrations containing the words CAPRI SUN. In these
registrations, the products are variously described as fruit
drinks containing water and orange juice; fruit drinks
containing water and apple juice; fruit juice drinks
containing water; fruit drink containing water and grape
juices; fruit drink containing lemon juice and water; non-
alcoholic fruit juice drink; and fruit drink containing
juice and water. Thus, despite the varying verbiage, Mr.
Wilson’s description of CAPRI SUN as a juice drink beverage
having some fruit juice is an accurate description which
essentially covers all of the products variously described
in opposer’s different registrations. Mr. Wilson went on to
note that Kraft Foods markets CAPRI SUN juice drink
beverages in twelve flavors, and that CAPRI SUN juice drink
Opposition No. 93,813
12
beverages are packaged in single serving pouches which are
typically sold in ten packs. (Wilson dep. 12). Mr. Wilson
stated that Kraft Foods markets CARPI SUN juice drink
beverages to children, primarily through television in what
Mr. Wilson termed “a kid buy.” (Wilson dep. 17 and 26).
Mr. Wilson explained that “a kid buy is where you’re going
to advertise on television programs whose target audience is
from between the ages of 4 and –- 4 and 11.” (Wilson dep.
26). Mr. Wilson further explained that television
advertising for CAPRI SUN juice drink beverages also
included “a teen buy” for children between the ages of 9 and
14. (Wilson dep. 26). Mr. Wilson testified that
approximately 80% of CAPRI SUN products are consumed by
“school age children,” with the remaining 20% being consumed
by adults. (Wilson dep. 27). When asked who were the
typical purchasers of CAPRI SUN products, Mr. Wilson replied
as follows: “I’d say mothers typically purchase CAPRI SUN
products.” (Wilson dep. 27).
In contrast, the record demonstrates that applicant’s
CAPRI whole and ground coffee beans, espresso and other
coffee beverages are marketed exclusively to and consumed
exclusively by adults. In addition, applicant’s primary
manager (Mauro Cipolla) testified that in its advertising,
applicant never pictured children, and never utilized
cartoon characters or animation of any type. (Mauro Cipolla
Opposition No. 93,813
13
dep. 28-29). The one television ad for CAPRI SUN juice
drink beverages made of record by opposer uses animation and
prominently features children promoting the product.
(Opposer’s exhibit 4).
Moreover, the record reflects that juice drink
beverages, on the one hand, and coffee beans, espresso and
other coffee beverages, on the other hand, are sold in
different sections of grocery stores. Ms. Griesdorn –- the
senior brand manager at Kraft Foods responsible for CAPRI
SUN products and other ready-to-drink products –- testified
that in a grocery store or supermarket, one would “most
often find CAPRI SUN located in the juice/juice drink aisle,
shelf-stable aisle.” (Griesdorn dep. 11). When asked to
name some products that would be sold adjacent to CAPRI SUN
products in grocery stores and supermarkets, Ms. Griesdorn
answered as follows: “HAWAIIAN PUNCH, HI-C, OCEAN SPRAY,
MINUTE MAID.” (Griesdorn dep. 12). Opposer put on
absolutely no evidence demonstrating that juice drink
beverages such as CAPRI SUN are sold anywhere near coffee
beans, espresso and other coffee beverages in grocery stores
and supermarkets. Moreover, the record demonstrates that
juice drink beverages and coffee beans are sold in totally
different types of packaging. Likewise, juice drink
beverages and espresso and other coffee beverages are sold
in different packaging. Although Ms. Griesdorn did identify
Opposition No. 93,813
14
two brands of “single serve iced coffee beverages” which
came in cans (Griesdorn dep. 17, opposer’s exhibit 7),
there was absolutely no testimony demonstrating the extent
to which coffee is served in ready-to-drink form in cans or
other containers in United States grocery stores and
supermarkets. Indeed, Ms. Griesdorn did not even testify
that the two products pictured in opposer’s exhibit 7 (cans
of ready-to-drink iced coffee) were products which were sold
in the United States. Moreover, when Mr. Mauro Cipolla was
cross-examined by former counsel for opposer, he stated that
he had never seen ready-to-drink canned or bottled coffees,
although he had a vague recollection of one company’s
possible venture into that area. (Mauro Cipolla dep. 64).
In sum, we find that the only two things common to both
opposer’s products (as described in its registrations) and
applicant’s products (as described in its application) are
that both are beverages (or can be made into beverages) and
both are sold in supermarkets and grocery stores. However,
in all other respects, the products are different. They are
sold in different sections of grocery stores and
supermarkets; they are primarily advertised and marketed to
entirely different age groups; and they come in different
packaging in that there is no evidence that in the United
States, espresso and other coffee products are typically
Opposition No. 93,813
15
sold in supermarkets and grocery stores in ready-to-drink
form as are juice drink beverages.
Turning to a consideration of the marks, they are,
obviously, somewhat similar in terms of visual appearance
and pronunciation. Both marks consist of or contain the
word CAPRI. However, the word “capri” is not an arbitrary
word. Rather, it is the name of a famous island in the Bay
of Naples and the name for a pale dry wine originally made
on that island. Websters Third New International Dictionary
Unabridged (1976). Hence, it is not surprising that the
word CAPRI has been used as a mark by others (e.g. CAPRI
automobiles, CAPRI boats etc.). (Mauro Cipolla dep. 14;
Mario Cipolla dep. 13-14). As previously mentioned,
applicant properly made of record third-party registrations
featuring marks consisting of or containing CAPRI. These
registrations do not, of course, show that the various CAPRI
marks are in actual use. However, these registrations,
whether active or canceled, serve to show others have viewed
CAPRI as a positive word for use as a mark for various foods
and beverages. These third-party registrations include
CAPRI for cookies; CAFÉ CAPRI for flavored instant coffee
(canceled) and PIZZA CAPRI for pizza and related food items.
Considering the two marks in terms of meaning or
connotation, we find that their connotations are clearly
different, especially when the connotations are considered
Opposition No. 93,813
16
in connection with the products on which the marks are used.
Applicant’s mark CAPRI –- especially when used in
conjunction with whole and ground coffee beans, espresso and
other coffee beverages –- would bring to mind the Italian
island of Capri. Mr. Mauro Cipolla noted that there was a
distinction between “regular American coffees” and “espresso
blends.” (Mauro Cipolla dep. 18). We find that the use of
the mark CAPRI on coffee products would suggest to consumers
that said products are of European or Italian style. In
this regard, we note that when applicant uses its mark
CAPRI, said mark is followed by the following terminology:
“Southern Italian Blend Espresso.” Moreover, the packaging
for applicant’s CAPRI espresso contains the following
statement: “Fresh Roasted in Seattle in the finest of
Italian Traditions.”
On the other hand, there is no evidence whatsoever that
with regard to juice drink beverages, there is any
distinction between American juice drink beverages and juice
drink beverages from other parts of the world, including
specifically Europe or Italy. It is our view that the
typical purchasers of opposer’s CAPRI SUN juice drink
beverages, which according to Mr. Wilson are mothers, would
recognize the SUN portion of said mark as reinforcing the
notion that the product does indeed contain some fruit
juices and hence is a healthy beverage for their children.
Opposition No. 93,813
17
Moreover, we note that on the packaging for many flavors of
CAPRI SUN juice drink beverages, there appears in rather
prominent fashion a depiction of the sun. (Opposer’s
exhibit 1).
The differences in connotation between CAPRI for coffee
products and CAPRI SUN for juice drink beverages simply
outweigh the modest similarities between the two marks in
terms of visual appearance and pronunciation. In a similar
case, the Court noted the difference in connotation and held
that there was no likelihood of confusion resulting from the
use of DUVET on brandy and DUET on canned cocktails made
with brandy despite the fact that DUVET and DUET differ only
by the presence of an additional letter in the middle of
DUVET. National Distillers Corp. v. William Grant & Son,
Inc., 505 F.2d 719, 184 USPQ 34, 35 (CCPA 1974). With
regard to the visual appearance and pronunciation of DUET
and DUVET, the Court stated that “the similarities are
obvious but so are the differences.” 184 USPQ at 35. If
anything, CAPRI and CAPRI SUN are more dissimilar in visual
appearance (and perhaps pronunciation) than are DUET and
DUVET. Of course, it need hardly be said that coffee
products and juice drink beverages are more dissimilar than
are cocktails made with brandy and brandy itself.
In sum, given the significant differences between
coffee products and juice drink beverages, we find that the
Opposition No. 93,813
18
limited similarities in the marks CAPRI and CAPRI SUN are
simply not great enough so as to result in a likelihood of
confusion. Indeed, coffee products and juice drink
beverages are so dissimilar that opposer was not able to
name even one company which marketed both products under the
same mark.
We will now consider opposer’s argument that its mark
CAPRI SUN is famous in the United States on the assumption
that the sales and advertising of CAPRI SUN products by
Kraft Foods inured to opposer’s benefit. We will also
consider applicant’s argument that despite over five of
years of contemporaneous use, there have been no instances
of actual confusion involving CAPRI SUN juice drink
beverages and CAPRI coffee products.
Opposer made of record approximate sales figures (in
terms of dollars and units) and advertising figures of
CAPRI SUN products (all flavors) marketed by Kraft Foods in
the United States for the years 1989 through 1995.
(Opposer’s exhibit 6). We are not at liberty to reveal
these figures inasmuch as prior counsel for opposer
submitted them under a protective order. However, simply
standing alone, the United States sales and advertising
figures for the CAPRI SUN products are not so great so as to
cause this Board to find that CAPRI SUN is a famous mark.
Moreover, opposer has failed to put the sales and
Opposition No. 93,813
19
advertising figures for CAPRI SUN products in perspective by
comparing them to sales and advertising figures for similar
products. To be perfectly clear, Ms. Griesdorn testified at
pages 12 and 13 of her deposition that CAPRI SUN outsold
certain other brands. However, Ms. Griesdorn’s testimony
was limited to a comparison of the sales of CAPRI SUN in
boxes (i.e. pouches) verses the sales of other brands in
boxes. Both Mr. Wilson and Ms. Griesdorn testified that
CAPRI SUN is available only in boxes (pouches). Ms.
Griesdorn further testified that many of the other brands
she selected for comparison purposes were sold in other
forms, such as liquid concentrate, bottles, cans and large
jugs. (Griesdorn dep. 12-13). Ms. Griesdorn never
testified that the total sales of CAPRI SUN products
exceeded the total sales of any other brand when all forms
of packaging were considered. Indeed, even when she focused
on sales of products solely in boxes (pouches), Ms.
Griesdorn testified that she did not know whether CAPRI SUN
outsold HI-C. (Griesdorn dep. 12).
If a party plaintiff in a Board proceeding is to rely
simply on sales and advertising figures in an effort to
establish that its mark is famous, then it is incumbent upon
that party plaintiff to place the sales and advertising
figures in some context, that is, to show that the product
is the leading product in its category, the second leading
Opposition No. 93,813
20
product in its category, etc. Raw sales and advertising
figures –- unless they are extraordinarily large, which is
not the case with CAPRI SUN products –- are simply not
sufficient by themselves to establish that the mark is
famous. If a party plaintiff wishes to establish that its
mark is famous and further wishes to rely simply upon its
sales and advertising figures, it should, at a minimum,
place such figures in context by showing the ranking of its
product. See General Mills Inc. v. Health Valley Foods, 24
USPQ2d 1270, 1277 (TTAB 1992). Of course, the better
practice is not to rely merely upon sales and advertising
figures, but also to submit consumer and trade testimony as
well as newspaper and magazine articles discussing the brand
in question. In this case, opposer has done none of the
foregoing or anything else to show that its CAPRI SUN mark
is famous. Hence, in finding that there exists no
likelihood of confusion, we have done so on the basis that
opposer has utterly failed to prove that its mark CAPRI SUN
is famous, even assuming that the activities of Kraft Foods
in marketing CAPRI SUN products in the United States inured
to opposer’s benefit. We will not speculate whether our
decision would have been different had opposer established
that its mark was famous in the United States.
We consider next applicant’s argument that there have
been no known instances of actual confusion involving CAPRI
Opposition No. 93,813
21
coffee products and CAPRI SUN juice drink beverages. Both
of applicant’s witnesses stated that they knew of no
instances of actual confusion, and that if instances of
actual confusion had existed, they would have been reported
to one or both of the witnesses. Moreover, opposer has
offered no evidence even suggesting that there have been
instances of actual confusion. Furthermore, Mr. Mauro
Cipolla testified that CAPRI was applicant’s most popular
brand, and that sales of CAPRI coffee products were made
across the country. (Mauro Cipolla dep. 18-19). Without
divulging the precise sales figures for CAPRI coffee
products, suffice it to say that they are by no means
minimal. In finding no likelihood of confusion resulting
from the contemporaneous use of a red stripe design on
champagne and a red stripe design and the words RED STRIPE
on beer, the Court noted “that despite over a decade of the
marketing by [applicant] of Red Stripe beer in certain of
these United States, [opposer] was unable to offer any
evidence of actual confusion. This too weighs against a
holding of a likelihood of confusion.” G.H. Mumm v.
Desnoes, 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir.
1990). Of course, in this case, the period of
contemporaneous use was not over a decade, but closer to
five years. Accordingly, in reaching our conclusion that
there is no likelihood of confusion, we have accorded very
Opposition No. 93,813
22
minimal weight to the fact that there has been no evidence
of actual confusion. In any event, given the significant
differences in the products of opposer and applicant and the
differences in the marks, we would find that there is no
likelihood of confusion even in the absence of evidence
showing that no actual confusion has occurred.
Decision: The opposition is dismissed.
E. W. Hanak
Administrative Trademark Judge,
Trademark Trial and Appeal Board
E. J. Seeherman and T. J. Quinn, Administrative Trademark
Judges, concurring:
We are in agreement with our colleague’s ultimate
conclusion on the merits of the likelihood of confusion
issue in this case. We are compelled, however, to comment
on what we view as an inappropriate proffer at the oral
hearing.
As recounted in our colleague’s opinion, opposer, due
to certain actions and inactions of prior counsel, was
sanctioned in this case by being precluded from filing any
final brief or any reply brief. Opposer’s current counsel
who appeared at the oral hearing was allowed to submit to
the judges copies of exhibits which opposer had properly
Opposition No. 93,813
23
introduced during the trial phase of this proceeding.
Opposer’s current counsel also attempted to offer at the
hearing other “exhibits” which were not part of the trial
record, but which instead opposer had prepared expressly for
use at the hearing.
Although these latter “exhibits” were not considered in
reaching our decision, one of the “exhibits” produced at the
oral hearing deserves particular mention. Counsel produced
a photograph of a mock-up of opposer’s unusual foil pouch
container but with applicant’s mark appearing thereon.1
Only after showing this photograph to the Board did
opposer’s counsel acknowledge that the photograph was not of
record.
The Board will generally allow certain types of
materials, such as graphs, schedules, or charts, to be used
at the oral hearing, either for clarification or to
eliminate the need for extended description, when such
materials are based on evidence properly of record.
Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126-
27 at n. 5 (TTAB 1990); and Trademark Trial and Appeal Board
Manual of Procedure (TBMP), § 802.07. For example, opposer
at the oral hearing in this case used a summary of its
pleaded registrations which also were properly introduced at

1 In point of fact, the container shape is the subject of
opposer’s Registration No. 1,418,517, issued under Section 2(f),
Opposition No. 93,813
24

for “fruit juice drinks containing water.” No mention of this
fact was made at the oral hearing.
Opposition No. 93,813
25
trial. This is the type of demonstrative exhibit
contemplated by the case law and the TBMP.
We find, however, that the mock-up photograph, which
was never made of record but rather was prepared expressly
for the oral hearing, to be an extreme example of matter
that is inappropriate for use at an oral hearing before the
Board. Demonstrative exhibits that are displayed at an oral
hearing, when the exhibits are based on evidence of record,
can be of aid to the Board in its consideration of a case.
To the contrary, when an “exhibit” is not based on evidence
properly of record, as is the case here with the photograph
of the mock-up showing applicant’s mark on opposer’s
container, the shape of which is a registered trademark,
there is no useful purpose served by its use inasmuch as the
Board cannot consider the “exhibit.”2 We can presume only
that the proffer of such materials not of record, but which
instead were prepared specially for use at an oral hearing,
is made with the hope of somehow subliminally affecting the
Board’s thinking in a case.

2 So as to be clear, we also should point out that there is no
evidence to suggest that coffee beverages are being sold in any
foil pouch containers, let alone in the foil pouch container used
by and registered as a trademark by opposer.
Opposition No. 93,813
26
The Board disapproves of, and discourages, the use of
such materials in future oral hearings.
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges,
Trademark Trial and Appeal Board