Rudolf Wild GmbH & Co. KGv.Trans- National, Inc.

Trademark Trial and Appeal Board

Jul 3, 1997

OPP (T.T.A.B. Jul. 3, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 3, 1997
Hearing: Paper No. 37
November 20, 1996 EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rudolf Wild GmbH & Co. KG
v.
TransNational, Inc.
_____
Opposition No. 91,754
to application Serial No. 74/286,888
filed on June 22, 1992
_____
Susan A. Richards of Fish & Richardson, P.C. for Rudolf Wild
GmbH & Co. KG.
Gary D. Krugman of Sughrue, Mion, Zinn, MacPeak & Seas for
TransNational, Inc.
______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Rudolf Wild GmbH & Co. KG has opposed the application
of TransNational, Inc. to register CALIFORNIA SUN as a
trademark for cola and other carbonated soda beverages.1 As
grounds for opposition, opposer has alleged that it first

1 Application Serial No. 74/286,888, filed June 22, 1992, based
on an asserted bona fide intention to use the mark in commerce.
Opposition No. 91,754
2
used the mark CAPRI SUN for fruit drinks as early as
August 31, 1978, which date is earlier than the June 22,
1992 filing date of applicant's intent-to-use application;
that it has continuously used the mark in connection with
fruit drinks since 1978; that it owns a number of
registrations for marks consisting of or containing the
words CAPRI SUN for fruit drinks; that each of these marks
is part of a family of marks;2 that opposer began using its
CAPRI SUN family of marks prior to the filing date of
applicant's CALIFORNIA SUN application; that applicant's
mark CALIFORNIA SUN so resembles opposer's CAPRI SUN family
of marks as to be likely, when used on or in connection with
applicant's goods, to cause confusion, or to cause mistake,
or to deceive; and that CALIFORNIA in CALIFORNIA SUN
identifies a geographic area, as do the names MAUI and
PACIFIC which are elements of names used as flavor
designations in the CAPRI SUN line of fruit drinks.
In its answer applicant denied the salient allegations
of the notice of opposition.

2 Although opposer alleged a family of marks in its notice of
opposition, it made no reference to such a claim in its brief
and, indeed, it presented no evidence of the existence of a
family of marks, i.e., that it has promoted its marks together
in such a manner that the public would regard a particular
element of the marks as the family surname. It appears that
opposer has merely used "family of marks" as a phrase to refer
to its various CAPRI SUN marks. In any event, to the extent
that opposer was attempting to claim a family of marks, as that
term is understood in trademark law, we deem that claim to have
been waived.
Opposition No. 91,754
3
The record includes the pleadings; the file of the
opposed application; the testimony, with exhibits, of Robert
Sanguily, an associate product manager of Kraft Foods, Inc.
Opposer made of record, pursuant to notices of reliance,
status and title copies of the following registrations (with
the design marks shown in very reduced size) owned by
opposer:3
MARK GOODS
CAPRI-SUN
fruit drinks containing
water and orange juice4
CAPRI SUN APPLE and design
fruit drinks containing
water and apple juice5

3 The first eight of the listed registrations were pleaded in
the notice of opposition. Another of the registrations which
was pleaded in the notice of opposition and submitted under a
notice of reliance was subsequently cancelled for failure to
file a Section 8 affidavit of use. We have not listed this
registration since opposer cannot rely on any rights in it.
Opposer also submitted under a notice of reliance copies of
certain of its applications. Applicant has not objected to
their submission, and we have treated the pleadings as being
amended pursuant to Rule 15(b) of the Federal Rules of Civil
Procedure to include these applications, four of which matured
into registrations after opposer's notice of reliance was filed,
and which we have listed above as registrations. A fifth
application was abandoned for failure to file a statement of
use.
4 Registration No. 1,130,086, issued January 29, 1980; Section
8 affidavit accepted; Section 15 affidavit received.
5 Registration No. 1,187,978, issued January 26, 1982; Section
8 affidavit accepted; Section 15 affidavit received; "Natural
Fruit Drink," "Apple," and the representation of apples
disclaimed.
Opposition No. 91,754
4
CAPRI SUN ORANGE and design
fruit drinks containing
water and orange juice6
CAPRI SUN FRUIT PUNCH and
design
fruit juice drinks
containing water7
CAPRI SUN GRAPE DRINK and
design
fruit drink containing
water and grape juices8

6 Registration No. 1,199,783, issued June 29, 1982; Section 8
affidavit accepted; Section 15 affidavit received; "Natural
Fruit Drink," "Orange" and the representation of oranges
disclaimed.
7 Registration No. 1,279,154, issued May 22, 1984; Section 8
affidavit accepted; Section 15 affidavit received; "Fruit Punch"
disclaimed.
8 Registration No. 1,287,165, issued July 24, 1984; Section 8
affidavit accepted; Section 15 affidavit received; "Grape Drink"
and the representation of grapes disclaimed.
Opposition No. 91,754
5
CAPRI SUN and design
fruit drink containing
lemon juice and water9
CAPRI SUN MAUI PUNCH and design
non-alcoholic fruit juice
drink10
CAPRI SUN and design
fruit drink containing
juice and water11
MAUI PUNCH non-alcoholic fruit drinks
or ice drinks12
CAPRI SUN MAUI PUNCH non-alcoholic fruit drinks
or ice drinks13

9 Registration No. 1,303,000, issued October 30, 1984; Section 8
affidavit accepted; Section 15 affidavit received; the design of
lemons is disclaimed.
10 Registration No. 1,567,441, issued November 21, 1989;
Section 8 affidavit accepted; Section 15 affidavit received;
"Maui Punch" disclaimed.
11 Registration No. 1,660,010, issued October 8, 1991.
12 Registration No. 1,874,097, issued January 17, 1995.
Opposition No. 91,754
6
CAPRI SUN MAUI PUNCH and design
beverages, namely soft
drinks, fruit drinks,
juice drinks or fruit
punch14
CAPRI SUN ALL NATURAL
(stylized)
beverages, namely soft
drinks, fruit drinks or
fruit punch15
Opposer also submitted a notice of reliance on certain
applications and registrations owned by opposer's licensee,
Capri Sun, Inc. for the marks PACIFIC COOLER16 , MOUNTAIN
COOLER17, SURFER COOLER18 and SAFARI PUNCH,19 all for goods
identified as "fruit drinks containing water, fruit juice,
soft drinks, soda waters and aerated waters.20

13 Registration No. 1,969,093, issued April 23, 1996; Section
2(f) as to "Maui Punch."
14 Registration No. 1,972,251, issued May 7, 1996; Section 2(f)
as to "Maui Punch."
15 Registration No. 1,990,220, issued July 30, 1996; "All
Natural" disclaimed.
16 Registration No. 1,866,532, issued December 6, 1994;
"Cooler" disclaimed.
17 Registration No. 1,869,857, issued December 27, 1994;
"Cooler" disclaimed.
18 Registration No. 1,909,411, issued August 1, 1995; "Cooler"
disclaimed.
19 Registration No. 1,928,917, issued October 24, 1995; "Punch"
disclaimed.
20 Two of the applications submitted with the notice of
reliance have since matured into registrations, and we have
accordingly listed them as registrations. Applicant has
objected to the registrations owned by Capri Sun, Inc. because
this company is not a party to the opposition. This objection
is not well taken. The registrations are, in fact, official
records, and therefore they are appropriate subject matter for a
Opposition No. 91,754
7
In addition, opposer has submitted a notice of reliance
on applicant's responses to certain of its
interrogatories.21
Applicant has relied on opposer's responses to certain
of applicant's interrogatories, and has made of record
numerous third-party registrations for marks which include
the term "SUN " as a suffix.

notice of reliance. See Trademark Rule 2.122(e). Moreover,
because opposer has shown that it is in privity with the owner
of the registrations, and that its claim of damage with respect
to the ground of likelihood of confusion is also based on these
registrations, it may rely on these registrations owned by its
exclusive licensee. See Jewelers Vigilance Comm., Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
21 This notice of reliance states that opposer is relying on
certain specimens of applicant's packaging and promotional
matter which were provided to opposer with applicant's responses
to certain of opposer's interrogatories and document production
requests. Applicant has objected to the introduction of these
materials because responses to document production requests
cannot be made of record pursuant to a notice of reliance. See
Trademark Rule 2.120(j)(3)(ii). Applicant's objection is well
taken. We have carefully considered applicant's responses to
the interrogatories, and find that the materials were not
submitted in response to these questions, but were provided in
response to the document production requests. Further, we are
not persuaded by opposer's argument that applicant has waived
its right to object to these materials by waiting until the
filing of its brief to raise the objection. Objections which
would not be curable if seasonably raised can be raised for the
first time in the party's brief. In this case, the rules do not
permit the filing of a notice of reliance on documents produced
in response to document production requests. As for opposer's
assertion that these materials were also made of record during
the testimony of its witness, that witness did not identify
these materials (nor is there reason to believe that he would be
in a position to authenticate the materials). On the contrary,
it was opposer's attorney who referred to these exhibits, and it
was he who stated that they were produced by applicant, and that
they would be made of record by notice of reliance.
Thus, although the responses to the interrogatories are
properly of record, the materials submitted with the notice of
reliance are not. We would also add that, even if these
materials were considered of record, they would not change our
decision herein.
Opposition No. 91,754
8
The parties have fully briefed the case, and both were
represented at an oral hearing before the Board.
Opposer's witness testified that he is an associate
product manager with Kraft Foods, Inc., and that "in 1990
Kraft Foods purchased the right to distribute the CAPRI SUN
trademark product in both name and package form in the
United States under a licensing agreement." He further
stated that Capri Sun, Inc. is a wholly owned subsidiary of
Kraft Foods, and is the company that has the license from
opposer.
CAPRI SUN is a trademark used for a single serve,
ready-to-drink juice drink beverage which comes in 6 3/4
ounce pouches into which one inserts a straw. There are
currently twelve flavors of this product, with the names
STRAWBERRY COOLER, MAUI PUNCH, YO-YOGI, PACIFIC COOLER,
FRUIT PUNCH, RED BERRY, GRAPE, WILD CHERRY, MOUNTAIN COOLER,
SURFER COOLER, SAFARI PUNCH and ORANGE. The pouches are
sold packaged in a 10-pack cardboard carton. The primary
consumers of the goods are children aged six to twelve, and
the primary purchasers of the product are the mothers of
these children.
According to Kraft Foods' business records, the CAPRI
SUN product has been distributed in the United States since
1979. It is sold throughout the United States, primarily in
grocery stores, but also in mass merchandisers such as
Wal-Mart; warehouse accounts such as Sam's or Price Club;
food service resellers who service restaurants, hotel
Opposition No. 91,754
9
chains, schools and institutions; and U.S. military
commissaries. Applicant's wholesale sales of its CAPRI SUN
fruit juice drinks rose from $65.5 million in 1989 to $161.4
million in 1994.22 In fact, its CAPRI SUN fruit punch
flavor is the best-selling flavor in the entire juice drink
single-serve sales category.
Opposer currently advertises the CAPRI SUN beverages on
television, and again its promotional figures are extensive,
with expenditures during the period of 1989 through 1994
being, with the exception of 1992 and 1993, in excess of
$1 million.23 CAPRI SUN pouches are packaged as part of
Oscar Mayer Lunchables food packs, and these Lunchables
items have been advertised in Sunday newspaper advertising
supplements. The beverages are also promoted through point
of sale ads, and aisle displays.
Applicant has not put in any evidence as to its own
marketing and sales; we note that the application was based
on an asserted intention to use the mark.
Priority is not in issue in view of opposer's
registrations. See King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover,
the evidence shows that opposer began using its CAPRI SUN
marks, as well as many of its flavor marks, prior to the

22 Although opposer submitted its sales and advertising figures
as "confidential" material, it referred to the above figures in
its (non-confidential) brief. Accordingly, we see no reason not
to repeat these figures in our opinion.
23 See footnote 4.
Opposition No. 91,754
10
filing date of applicant's application which, in the absence
of any other evidence of use, is the earliest date on which
applicant can rely.
With respect to the issue of likelihood of confusion,
we turn first to a consideration of the marks. The only
common elements of opposer's CAPRI SUN marks and applicant's
CALIFORNIA SUN mark is that both start with the letter "C,"
and have SUN as the second word. SUN, however, is a
suggestive term for beverages, as shown by the numerous
third-party registrations made of record by applicant.24
While these registrations do not prove that the marks shown
in the registrations are in use (and, indeed, some of the
registrations have been cancelled or have expired), they are
competent, in the same manner as dictionary definitions, to
show that a particular term has a particular significance
for those in the beverage industry, and that the term has
been adopted by those in the field to convey that
significance. See Mead John & Company v. Peter Eckes, 197
USPQ 187 (TTAB 1977). Accordingly, the mere fact that SUN
has been included in applicant's and opposer's marks is not,

24 These registrations include TEX SUN for canned fruit juices
for food purposes; WHOLE SUN for canned single strength citrus
fruit juices and frozen concentrates; DAILY SUN for canned and
frozen citrus juices; ROYAL SUN for orange flavored food drink;
DAILY SUN for canned and frozen citrus juices; SOUTHERN SUN for
fresh and reconstituted orange juice and fresh and reconstituted
fruit and vegetable juices; ALLSUN for concentrated fruit juice;
HAWAIIAN SUN for fruit drinks containing water and fruit punch
containing water; FLORIDA SUN for citrus-flavored fruit juices
and frozen fruit juice concentrate; GEORGIA SUN and design for
frozen concentrated fruit juices; ORCHARD SUN for fruit juice
drinks containing water; and MOUNTAIN SUN for natural fruit
juice drinks.
Opposition No. 91,754
11
of itself, a sufficient basis on which to find likelihood of
confusion. See, Cutter Laboratories, Inc. v. Air Products
and Chemicals, Inc.̧ 189 USPQ 108 (TTAB 1975).
When the marks are considered in their entireties, we
find that they are different in appearance, pronunciation
and connotation. We are not persuaded by opposer's argument
that the marks convey similar commercial impressions. As
the dictionary definition referred to by opposer states,25
"Capri" is "an island in ... the Bay of Naples," which is
part of Italy. California, on the other hand, is a state of
the United States. The connotation between an Italian
island and a state of the United States is very different.
Nor do we think that opposer's use of MAUI PUNCH or CAPRI
SUN MAUI PUNCH as "geographically suggestive flavor
designations" causes its marks and applicant's mark to have
similar commercial impressions. The mark MAUI PUNCH has the
geographic significance of Hawaii, while CAPRI SUN MAUI
PUNCH will either conjure up the combination of Italy and
Hawaii, or will seem to be merely an odd juxtaposition of
geographic places. In neither case do these marks suggest
the "feeling of the west coast of the United States," as
opposer suggests.
Opposer also points to its flavor designation PACIFIC
COOLER in support of its position that its marks refer to

25 The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd. 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91,754
12
the west coast of the United States and particularly to
California. It is manifest that there are significant
differences between the mark CALIFORNIA SUN and the mark
PACIFIC COOLER per se. Nor do we find that when PACIFIC
COOLER is used as a flavor designation with CAPRI SUN, the
overall impression of these two marks conjures up
California, such that CALIFORNIA SUN and CAPRI SUN PACIFIC
COOLER can be said to be similar in appearance,
pronunciation, connotation or commercial impression. While
we recognize that the state of California is located on the
Pacific Ocean, "Pacific" is not the equivalent of
"California." To the extent that the flavor designation
PACIFIC COOLER on opposer's CAPRI SUN juice packages would
have a geographic connotation, it would be of the Pacific
Ocean and not California per se. Moreover, because this
flavor designation is used with CAPRI SUN, it will, in the
same manner as CAPRI SUN MAUI PUNCH, either conjure up the
combination of Italy and the Pacific Ocean, or will seem to
be merely an odd juxtaposition of geographic places.
Because of the significant differences in the marks, we
find that applicant's use of CALIFORNIA SUN for cola and
other carbonated soda beverages is not likely to cause
confusion with opposer's marks for its identified goods.
While we have considered all the other relevant duPont
factors, in this case we find that the differences between
the marks are so great that this factor outweighs all the
Opposition No. 91,754
13
others. See Kellogg Company v. Pack-em Enterprises, Inc.,
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Opposition No. 91,754
14
Decision: The opposition is dismissed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board