Rudolf Wild GmbH & Co.v.Coca-Cola Co.

Trademark Trial and Appeal Board

Jun 29, 1999

No. 91099709 (T.T.A.B. Jun. 29, 1999)

RLS/Johnson
Opposition No. 99,709
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 29, 99
Rudolf Wild GMBH & Co.
v.
The Coca-Cola Company
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
This case now comes up on a number of matters including
opposer’s motion to strike parts of applicant’s answer,
applicant’s motion for summary judgment and opposer’s
attempt to amend the notice of opposition.1
In the notice of opposition against applicant’s intent-
to-use application to register the mark MINUTE POUCH for
fruit drinks, fruit juices and concentrates (“POUCH”
disclaimed), opposer, a German limited partnership, asserts
that, through licensees, it has sold juice drinks in single-
serving packages unique to the juice and fruit drinks
category, which packages it has called “pouches.” Opposer
asserts that both the package and word “pouch” have come to

1 The delay in acting upon the foregoing matters is regretted.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 99,709
2
be associated in the minds of consumers with opposer and its
licensed juice drinks. Opposer further asserts that either
the term “pouch” is suggestive for the container for its
juice drinks or that it is descriptive thereof and has
acquired secondary meaning. In any event, opposer asserts
that applicant’s mark so resembles opposer’s “previously-
used mark” as to be likely to cause confusion, to cause
mistake or to deceive. As a separate “ground” for
opposition, opposer asserts that:
Applicant intends and is attempting to
generecize [sic] the word “pouch” in
connection with packaging for juice or
fruit drinks, causing it no longer to be
exclusively associated with Opposer, and
thus damaging Opposer and its marketing
of its juice drinks in competition with
Applicant.
Finally, opposer asserts that applicant has no intention of
using the word “pouch” for any of the fruit drink products
for which it seeks registration of the mark but instead
intends to identify only its packaging for such products
with the word “pouch.” On this basis, opposer alleges that
the application is void ab initio.
In its answer to the opposition applicant has denied
the essential allegations of the opposition but has admitted
that the term “POUCH” is descriptive of containers for fruit
juices of the types used by opposer and its licensees. As
defenses, applicant asserts that the opposition fails to
state a claim upon which relief can be granted; that the
Opposition No. 99,709
3
notice of opposition was not timely filed;2 that opposer
lacks standing; that opposer will not be damaged by issuance
of a registration for the mark MINUTE POUCH; that opposer
and its licensees have used the word “pouch” as a common
descriptive and/or generic term; and that to the extent that
opposer has any trademark rights in connection with juice
drink products, those trademark rights are not superior to
those of applicant.
Turning first to opposer’s motion to strike, opposer
seeks to strike applicant’s first four defenses (that the
opposition fails to state a claim, that the notice of
opposition was not timely filed, that opposer lacks standing
and that opposer will not be damaged by issuance of a
registration to applicant). It is opposer’s position that
it has pleaded its standing and grounds for opposition.
More particularly opposer asserts that it has a real
interest in the outcome of this proceeding because it has
pleaded that it is engaged in the production and sale of
juice drinks which are sold in packages called “pouches.”
These “pouches” have, according to opposer’s pleading, come
to be associated in the minds of consumers with opposer and
its juice drinks.

2 Applicant has subsequently withdrawn this defense after
learning that a second request for an extension of time in which
to oppose was granted after the notice of opposition was filed.
Such defense is accordingly stricken from applicant’s answer.
Opposition No. 99,709
4
When a party moves to strike an affirmative defense,
such as that the notice of opposition fails to state a
claim, the question to be determined is whether the notice
of opposition does indeed set forth facts which, if proved,
would entitle opposer to the relief it is seeking. A
plainiff may utilize the defendant’s assertion of failure to
state a claim to test the sufficiency of its pleading by
moving under Rule 12(f) of the Federal Rules of Civil
Procedure to strike this defense from the answer. S.C.
Johnson & Sons, Inc. v. GAF Corp., 177 USPQ 720 (TTAB 1973).
Because the essence of the issues presented by
opposer’s motion to strike are at the heart of applicant’s
motion for summary judgment, we shall turn to that motion
before resolving the motion to strike.
In its motion for summary judgment, applicant argues
that, because opposer has never used “pouch” as a trademark
and because the term is generic, opposer does not have a
sufficient commercial interest to demonstrate standing; that
opposer’s claim that applicant is attempting to “genericize”
the term “pouch” is not a recognizable basis for opposing
registration; and that the undisputed facts show that
applicant is using its asserted mark in commerce for the
goods specified in the application, so that opposer’s claim
that applicant lacks a bona fide intent to use the mark for
its goods is without merit.
Opposition No. 99,709
5
In particular, applicant maintains that opposer or its
licensees have never used the term “pouch” as a trademark
but rather have used it in a non-trademark manner.
Applicant points to the numerous appearances of this term on
the licensee’s packaging wherein the term is used
generically. See below. For example, “10 POUCHES” and
“…frozen Capri Sun® All Natural™ pouches…”, “Fun pouch…
Capri Sun® All Natural™ pouches…” Applicant points out that
while the brand name CAPRI SUN appears with the registration
symbol, the term “pouch” is generally in lower case
lettering without any indication of trademark significance.
Applicant argues, therefore, that even opposer uses the term
“pouch” as the name of a type of container.
Opposition No. 99,709
6
As further evidence of the generic nature of the term
“pouch,” applicant points to various third-party uses made
of record with its motion for summary judgment (see pages 9
and 10 of applicant’s brief), various patents showing pouch
technology where the term is used generically, media usage
and dictionaries. With respect to opposer’s trade dress
design, which is the subject of a registration, applicant
argues essentially that that trade dress is irrelevant to
the issues in this proceeding. (The use of that trade dress
is licensed to the maker of the CAPRI SUN fruit juice
drink.)
With respect to the “genericization” claim, applicant
argues that this is not a recognized ground for opposition.
Concerning the last ground for opposition (lack of bona fide
intent to use the mark on the goods), applicant asserts that
it uses its mark as a mark for the concentrate and that
there is no merit to this allegation.3
Opposer filed a brief in opposition to the motion as
well as a proposed amended notice of opposition which pleads
that applicant’s mark is merely descriptive (in that it may
mean “small pouch”) of applicant’s concentrate packaged in
bag-like containers for the food service industry. With
respect to the motion for summary judgment, opposer argues

3 The record on summary judgment shows that applicant began
selling its goods in July 1995 and that the mark MINUTE POUCH
Opposition No. 99,709
7
that there are several disputes which prevent the entry of
summary judgment. These include whether the term “Pouch” is
generic, whether the relevant field for consideration is
juice beverages, and whether opposer has exclusive rights to
use “Pouch” for its goods as a result of long use and
ownership of the trade dress of a pouch and its registration
for that trade dress. Opposer argues that its licensee is
the only entity authorized to use this trade dress for juice
beverages; that opposer has substantially exclusive use of
this term in connection with its goods and that this term
has become distinctive of its goods. With respect to the
“genericization” claim, it is opposer’s position that this
claim is within the scope of a Lanham Act Section 2(d) claim
of likelihood of confusion. Finally, opposer argues that it
is entitled to Rule 56(f) discovery concerning applicant’s
intent to use its asserted mark at the time the application
was filed, in view of the evidence submitted by applicant on
summary judgment. Opposer also argues that the question of
intent is particularly unsuited to disposition by summary
judgment.
In reply, applicant argues, among other things, that
opposer has offered no evidence of the alleged acquired
distinctiveness of the term “Pouch,” that applicant
submitted its own evidence of use of MINUTE POUCH with its

appears on containers of MINUTE MAID brand frozen fruit juice
Opposition No. 99,709
8
summary judgment motion before it was required to make such
use under intent-to-use procedures in order to rebut
opposer’s claim of lack of intent to use, and that there is
no issue of fact concerning applicant’s intent to use the
mark. Accordingly, applicant argues that opposer is not
entitled to Rule 56(f) discovery.
Upon careful consideration of the materials of record
and the arguments of the parties, we deny opposer’s Rule
56(f) request for discovery for the reasons indicated by
applicant. We also agree with applicant that there are no
genuine issues of fact in dispute and that summary judgment
should be entered in favor of applicant. Specifically,
concerning the motion for summary judgment itself, while
opposer has listed what it regards as some alleged issues in
dispute, we do not believe that those issues are genuinely
in dispute. Although it is a fact that opposer has trade
dress rights in a configuration which one may call a
“pouch,” it does not follow that opposer has rights to the
generic term (“pouch”) which may be used to describe that
trade dress. There is no genuine issue that this term is in
fact generic, inasmuch as opposer itself is using this term
generically, and other evidence submitted by applicant
clearly shows that this term is generic.4 Suffice it to say

concentrate sold to commercial vendors.
4 The Board may determine that a term is not proprietary on
summary judgment. Teleflora, Inc. v. Florists Transworld
Opposition No. 99,709
9
that there is no genuine issue concerning opposer’s lack of
proprietary rights in the term “pouch.” Whether one views
this case in terms of the lack of standing on the part of
opposer (as does applicant) or as a failure to present a
claim of likelihood of confusion (there can logically be no
likelihood of confusion unless opposer has some rights in an
asserted term), applicant’s motion is well taken.
We also agree with applicant that opposer’s
“genericization” claim is not a cognizable claim for the
Board. Opposer has pointed to no authority recognizing this
alleged claim as a ground for opposition. Also, we agree
with applicant that there is no genuine issue with respect
to applicant’s intent to use its mark, for the reasons
stated by applicant. Applicant has in fact demonstrated
trademark use of its asserted mark for its concentrate.
See, for example, Exhibits A and G attached to the Taylor
affidavit submitted with applicant’s motion.
Finally, opposer’s belated attempt to avoid summary
judgment by its pleading of mere descriptiveness is of no
avail. We see no reason why this ground could not have been
asserted earlier since there was no evidence which applicant
submitted on summary judgment which would give rise to this
claim. A party should not be able to avoid the entry of

Delivery Association, 217 USPQ 1081 (C.D.Cal. 1981) and Data
National Corporation v. Bell South Corporation, 18 USPQ2d 1862
(TTAB 1994), aff’d., 60 F.3d 1565 (Fed. Cir. 1995).
Opposition No. 99,709
10
summary judgment by an amendment which is asserted after
undue delay, as the result of a dilatory motion or because
of its futility. See Moldea v. New York Times Co., 793 F.
Supp. 338 (D.D.C. 1982), Waldoboro Bank F.S.B. v. American
Casualty Co., 775 F. Supp. 432 (D.Me. 1991) and Martinez v.
Junta de Planificacion, 736 F. Supp. 413 (D.P.R. 1993).
In sum, opposer’s motion to strike is denied,
applicant’s motion for summary judgment is granted, and
opposer’s motion to amend is denied. The opposition is
dismissed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal
Board