Intellectual Property Attorney

CAPRI SUN®: A Case Study in Marketing and Trade Dress Registrations

CAPRI SUN®: A Case Study in Marketing and Trade Dress Registrations

Sold in over 100 countries, CAPRI SUN® brand fruit juice beverages are popular the world over. Since the mid-1980s, Deutsche SiSi-Werke Betriebs GmbH—the brand’s German-based parent company—has maintained a trade dress registration for the design of the brand’s well known flexible laminated pouches. (See U.S. Reg. No. 1418517).

Recently, SiSi filed suit against Minnesota based Faribault Foods—the largest private label supplier of pouched beverage products for children and teens. The reason? SiSi claims that juice pouches produced by Faribault Foods for Wal-Mart’s GREAT VALUE® brand mimic the size, shape and color scheme of CAPRI SUN® brand products.

Critically, SiSi filed a Section 15 Declaration of Incontestability several years ago. A Section 15 Declaration can be filed after a mark has been in use and listed on the Principal Register for at least five years. A Section 15 filing cannot be made if there have been any final decisions issued against the mark, if a challenge to the mark is pending, or if the mark has become generic. By having filed a Section 15 Declaration, SiSi now has the benefit that their laminated pouch trademark is conclusively presumed to be valid. This means that, barring some narrow exceptions, Faribault Foods cannot attack the validity of the laminated pouch trademark.

So what recourse does Faribault Foods have? Despite being “Incontestable” under Section 15, Faribault Foods can still attack the strength of SiSi’s mark by arguing that the scope of the mark’s protection is very narrow when determining the likelihood of confusion.

Undoubtedly in preemptive response to such arguments, SiSi has long been taking steps to ensure the greatest possible scope of protection for their pouch-mark. Arguably, the key to doing this is to try to associate the pouch-mark with the CAPRI SUN® brand as much as possible. A good IP attorney would recognize this, and might suggest that the best way to protect this valuable pouch registration is to emphasis the pouch itself in marketing campaigns. Unsurprisingly, this is exactly what the CAPRI SUN® brand has done.

In 2007, the CAPRI SUN® brand, applied for a trademark registration in the RESPECT THE POUCH® mark. CAPRI SUN® also launched an entire marketing campaign around this slogan. The campaign featured a popular commercial of two children drinking CAPRI SUN® juice pouches when one of the children decides to stomp on his pouch to make it pop. As soon as the child steps on the pouch the child—and not the pouch—explodes. The commercial ends with a humorous voice shouting “Respect the Pouch…Respect It!”

CAPRI SUN® brand’s campaign even included cartoons and an online videogame for children who could play a game as one of the “Disrespectoids” a group of animated characters who “disrespected” the CAPRI SUN® brand pouch in some way—leading to humorous consequences such as being transformed into a bobble head or a turtle.

Such pouch-centric campaigns further solidify the relationship between the CAPRI SUN® brand and laminated fruit drink pouches in the minds of consumers. The more consumers think “CAPRI SUN” when they see a laminated beverage pouch, the better the brand’s chances of showing that the scope of their incontestable laminated pouch registration is broad and, therefore, of preventing competitors from offering similar laminated pouches.

One of the worst things a company can do is invest a small fortune in time and resources into developing a product, slogan, or brand—only to discover that the new initiative infringes on someone else’s patents, trademarks or copyrights. Such unfortunate scenarios happen to companies large and small who forego proper preparation—and the results can be financially devastating. Synergistic development of marketing and intellectual property protection is an often overlooked necessity. The CAPRI SUN® brand’s recent marketing campaigns are a great example of how marketing and intellectual property can go hand-in-hand. Grimes LLC has decades of experience in helping clients navigate the Intellectual Property world. To learn more about Grimes LLC and how we can help protect your brand, contact us today for a free consultation.

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