Did Pepsi really lose their trademark to an influencer?

Welcome back to another episode of Own Your Genius, where we empower entrepreneurs to use their education and experience to create dope stuff. I’m your host, Attorney LaConya Murray. How’s it going? Shout out first, to our newest team member, Janee, for bringing this story to my attention. I’m headed out to a volleyball game this weekend, but I wanted to give my two cents on this. First, let me ask you this question. Pepsi or Coke? 

 I remember back in the day people drew a line in the sand and they would only drink one or the other. But did that only apply to people who like the actual Pepsi and Coke or was it the same for their related products? I mean, like, I’m not a fan of either one, but I love me some Sprite, which is a Coke product, but I’m not married to it. So let me ask you this question. Are you ready for some legal tea? Legal tea is when we discuss what’s going on in pop culture but from a legal view. But before we get into today’s episode, make sure you subscribe to the podcast, so you don’t miss any insights on how to own your genius.  

Welcome back to the Own Your Genius podcast where we discuss building businesses, growing brands and what else? Only your genius. I’m your host, Attorney LaConya Murray, owner of Off The Mark IP Solutions. Off the Mark is a boutique intellectual property firm representing innovative entrepreneurs aka geniuses who are looking to protect their brand and grow their business with ongoing legal support and business mentorship. We have a good one for you today, so let’s get started. 

Here’s the tea. There’s an influencer named Cierra Mistt, and she alleges that she is the reason for the rebranding of Sierra Mist’s story. She said that after receiving a cease-and-desist letter from Pepsi, which basically said that, hey, your social media, which uses a variation of our name, her name is Cierra Mistt, spelled with a C instead of an S, and it has two T’s in Mist. They said, hey, your social media channel doesn’t represent our brand values. It doesn’t align with our brand values and using our name. So, therefore, we’re going to ask you to, we’re going to demand for you to stop and whatever other demands were in the letter. And she said that they were almost getting ready to comply when they did a search and realized that the copyright had expired.  

So, what do you do when you realize that the person is trying to sue you copyright expires? You buy it. Those are her words, not mine, not mine at all. I don’t even know where to start with all the things that are wrong with that story. And so, I guess I will start with trademarks. It’s a trademark, not a copyright. Copyrights protect original works that are in a fixed tangible form, so they have nothing to do with the name. She’s referring to the Pepsi’s trademark for Sierra Mist, that’s number one.  

Number two, let’s just talk about this trademark expiring. Because trademarks can expire, but so this is the thing. Trademarks cannot last if you provide that good or service associated with that registered trademark. However, you must be diligent in ensuring you maintain that paperwork on time. When you first get your trademark registered between your five and six after registration, then it’s ten years after registration and then every ten years after that. And if you don’t meet the deadline, you will have a six-month grace period. Then after that, boom, trademark canceled. Trademarks can be canceled, but they can be canceled, or they can expire. If they expire, then they will be canceled. But here’s the thing. You can’t buy an expired trademark. That’s not how that works. That’s just not how that works. What happens is if you happen to have a brand that’s providing good or service and has used the same or similar name now that name is available. Or is it because, let me also tell you this, just because someone’s registration lapse doesn’t mean that they can no longer use that trademark. They won’t have all the rights to a registered trademark.  

But remember, in the United States, we still have this thing called common law use, meaning as long as you’re using that mark to identify the source of a good or a service, then you can have priority in that geographical area. There’s that too. So I always tell my clients, when they see something like that, when they see a mark is dead or abandoned, because someone didn’t maintain the paperwork, you have to go and see, like do a little bit more research to see if they’re still actually using the trademark or are they not in business anymore. So that’s it.  

But you can’t buy an expired trademark. And the reason you can’t buy an expired trademark is because you have to have bona fide use. You must have an intent to provide a good or a service. And unless she plans on creating a soft drink company using Sierra Mist, like and if she did, she wouldn’t even buy the expired trademark. You would just start the trademark process from the beginning. You just know nothing about buying a trademark. There were so many challenges in that story.  

And another thing I will say, and this is the biggest one, this is the biggest challenge in that story is that Sierra Mist, Sierra Mist at one point, there were 46 trademarks for Sierra Mist, but there are only three currently that are still registered. And that includes the name Sierra Mist for soft drinks. Well, she just told us that Sierra Mist was expired. So yes, 43 of the trademarks are expired, but that word mark Sierra Mist is not. There’s that, right? I don’t know. It’s just a lot. And at the end of the day, what you must realize is that Sierra Mist is. 

I don’t know, I think they say they launched in 2003 and it was created to compete with Sprite and 7up. But the thing is it never took off. Like me personally, I told you I like Sprite. I tried the Sierra Mist, you go to the drive-thru, and either they’re licensed for Pepsi or Coke, and if the license was Pepsi, they’re going to have Sierra Mist. I tried the Sierra Mist and I took a sip and then I poured it out because it was not for me, and I haven’t had a sip since I do not like Sierra Mist. And they tried a whole bunch of different things to try to make it work. They tried different flavors. They even changed the name to Twist Mist hoping that it would hit and it never did. And unfortunately for them Sprite has captured 7% of the 82-billion-dollar U.S. soda market. And that’s according to Bloomberg which I got this information from a USA story, and I’ll click that I’ll put that link in the show notes. But Sprite has 7% of the market for sodas. It’s an $82 billion industry, where Sierra Miss had 0.1%, not even 1%, 0.1%. Also, the revenue from Sierra Miss only accounted for about 0.2% of Pepsi’s total revenue. It doesn’t make sense for them to continue with a product that’s not doing well when they can just scrap it. It doesn’t matter what they do. 

 They can’t get it to take off, so just scrap it. And they’ll try something new, which is Starry. And you know, it not only does it have a new name, but it also has a new flavor, because I had some, again, do the drive-through. And I was like, oh, I can drink this, because I can. It was pretty good.  

And the other thing I’ll say, and this is the final thing, wrap up, is this Starry brand might be new to us, but it’s been in the works for a few years. Like the Intent to Use application was filed for Starry in 2019. If you don’t know what an intent to use application is, that’s simply an application that says, hey, I’m not using this mark in commerce yet, but I intend to use it. Remember with trademark registration, in order to have a registration, your mark has to be associated with a good or a service that’s in commerce. And if not, then you can’t have a trademark registered, but they do have this application that says intent to use.  

Now that application, even when you file it and tell them that, hey, I’m not using this right now, but I will use it. Your trademark won’t register until you’re using it. You’re getting priority over someone who might use the mark before you. It’s a great thing for companies who are preparing to launch, but there’s going to be a minute. And so you want to make sure that while you’re in this getting everything ready phase, that no one comes in with the name that’s same or similar to yours. Because what happens if you didn’t follow intent to use this, if someone came in with a name that was the same or similar to yours, and they launched and their product was good as in, as in commerce, then you will not be able to register your trademark. You will be infringing on theirs because they’re so prepared to launch and getting all the things together and all the marketing and the branding, that doesn’t count. You found this intent to use application so you can save your spot, so you can have priority and be like, hey,this is ours. So that’s why you do that. And they did, they did it in 2019, even though they didn’t launch until 2023. And that’s another thing. So you’re saying that CRMS rebrand to Starry because you bought their trademark, which we just, just told you that we go into USPTO, you see that they have a registered trademark and the reason they still have those three trademarks is because when they registered them early. The name, I know for, for a fact that the name was registered in 2006. And then they did their maintenance paperwork between year five and six. And then they did their 10 year paperwork. So that 10 year doesn’t expire until 2026. So that trademark is good until 2026. And at that time they have the opportunity and the chance to either file the paperwork necessary or let it be abandoned.  

The bottom line is that this whole rebranding story was a business move. It was not half to take over. It wasn’t an influencer. Still in Pepsi’s brand or anything of that nature. 

Thank you all for tuning in to this episode of Owning Your Genius. Remember, registering your trademark is only the beginning. To maintain your registration and brand’s reputation, you must enforce your rights and file the required paperwork on time. Geniuses, what are your takeaways from this week’s episode? If you find today’s podcast insightful, share it with fellow entrepreneurs and don’t forget to subscribe. 

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