Sierra Mist-Information: Trademarks, Copyrights, and Fact Checking

In this episode of Naming in an AI Age, NameStormers Director of Ops Ashley Elliott and CEO Mike Carr discuss a viral incident involving an influencer named Cierra Misst, who claimed PepsiCo sent her a cease and desist letter after rebranding their lemon-lime drink Sierra Mist to Starry. 

They clarify that while she alleged Pepsi let the trademark lapse, this was misleading; PepsiCo still owns the Sierra Mist trademark, as confirmed by the USPTO. Mike emphasizes the importance of maintaining trademarks in a crowded market, especially with AI creating similar names, and notes that trademarks can coexist across industries if they don't cause consumer confusion. They also recommend consulting a trademark attorney for portfolio management and stress the need for fact-checking claims in today's viral news landscape.

Chapters

• 0:00 Introduction
• 0:10 The Sierra Mist Rebranding
• 1:16 Clarifying Copyright vs. Trademark
• 4:10 Lapsing Trademark Rights
• 5:14 The Value of Trademarks
• 6:43 Classes of Goods and Services
• 7:54 Renewing Trademarks and Legal Strategies

Transcript

Ashley Elliott (00:10):

Well, hello and welcome to naming in an AI Age. So today we're coming at you with some viral content and some digging deeper, a little bit about what went viral. So in 2023, PepsiCo took their lemon lime drink, beloved known as Sierra Mist off the shelves, and rebranded the drink supposedly as starry. What we're here to talk about is not the rebranding, but the viral attention that this caught when a social media influencer named Sierra Mist claimed on TikTok that Pepsi showed up with a cease and desist letter telling her that they were going to sue her for copyright infringement, which is our first kind of key here. She said that she almost acquiesced the changing her name, but her and her lawyer discovered that PepsiCo had let the name rights to the brand lapse and she bought the rights to the copyright and used it to go after PepsiCo for infringement. This is just a convoluted claim here. So why does this whole situation seem unlikely, Mike?

Mike Carr (01:16):

Well, first of all, I think there's some confusion about copyright versus trademark, right? So really the conversation and the media that's been reporting on this should be talking about this is a trademark issue, not a copyright issue, and that's just hugely important. The laws are different, the types of things that are protected are different. So I think that's the first misstep in terms of the conversation.

Ashley Elliott (01:48):

Well, for sure, being the English teacher, we talk about copyrights a former English teacher. I mean, I guess I'm always a teacher, but we talk about copyrights being more of a written play or song or those type of things, not necessarily brands or products that you're going to be selling specifically. So what I did to try to double check this and really fact check, is I went to the U-S-B-T-O website. It contains all the information you need to know, and I looked up PepsiCo, I looked up Sierra Mist, and PepsiCo does in fact own the trademark rights to Sierra Mist. They have a live registered and renewed trademark. So for Sierra Mist. So regardless of if the product is on the shelves or not, they still do have those trademark rights.

Mike Carr (02:31):

The place to go to check is uspto.gov, and it's the coolest interface. They upgraded their interface a few months ago. It's pretty user-friendly, and while there are a lot of nuances into how to use it, if you would enter in something like Sierra Mist, you'd be able to see what's out there and that PepsiCo does have the registration. But just to reiterate what was saying, trademarks have to do with names. That's not what copyright has to do with copyright has to do with content. So the name of a song, the name of a product, the name of a company, if you're using those things to sell services, that's a trademark. If it's the content you've written or if it's the lyrics of the song, or if it's the text in a book that's written content that's protected by copyright law.

Ashley Elliott (03:39):

Let's say a situation like this did happen and a big company did just for some reason, let their trademark rights lapse. They didn't re-register or renew it. How likely is that to actually happen, in your opinion?

Mike Carr (03:53):

Well, it does happen. I mean, we've had folks over the years, especially with the larger companies that maybe have gone through some acquisitions, so they've acquired other companies and their portfolio of brands and not realized the value that that portfolio has. And since no one in the company or in the organization is assigned responsibility for products with names that have been discontinued or services that have been acquired and have names, but we're no longer calling it that thing, they don't worry about it. I can tell you as a professional namer that every trademark you own, especially if it's a short real word, is like a pot of gold. And the last thing you want to do is let those registrations expire and someone else come along and register that name either out from under you or in the same category or space that you're in. It's becoming increasingly difficult. I mean, a lot more challenging for even professionals to come up with really breakthrough, exciting, cool names. So if you own some of those, don't let 'em go. I guess that's my

Ashley Elliott (05:14):

Advice. Yeah, I mean, monitor that. I mean monitoring to make sure that you are renewing and you are keeping those maintained. But also if you are maintaining a trademark, do you have to maintain its use in commerce or how does that work? Do you know?

Mike Carr (05:28):

You do, and there's a lot of misunderstanding about this, that when you register a name as a trademark, it's for a specific thing that you're selling or a specific service that you're offering. It's not like a.com. There's only one owner of a.com worldwide, so we own name stormers.com. Nobody else in the world can own name stormers.com. Regardless of what they want to do with that name, we own it. Well, that's not the way Trademark Law works at all, right? You can have exactly the same name used over and over and over again and trademark over and over again for different classes of goods and services. So you might have Sierra Mist for a soft drink, but arguably you could have Sierra Mist for a perfume. Now, because PepsiCo is PepsiCo, they might attempt to prevent your using it for a perfume, and they might be successful.

(06:27):

They've got lots of money and they have an established brand. But for most smaller folks, that would not be a problem, right? That the likelihood of someone confusing a perfume, it's a different class of goods and services with a soft drink. I think most folks feel those are different enough animals that they could coexist, and there are lots of examples. Odyssey is a name that's registered hundreds of times around the world for all kinds of things. So it's not just the Honda minivan, it's all kinds of other stuff. So you can't register a mark for everything. You also cannot renew a mark a trademark unless you're still using it. If you are no longer using that name and you can no longer show that you're engaged in internet commerce, it's more challenging to renew that and sort of keep that name alive. And this is where I think a conversation with a trademark attorney, we're not lawyers. We can't give you legal advice, would really help you. So if you have that portfolio of names and you're not worried about those things expiring, and you've listening to this and you say, well, maybe I should pay a little bit more attention to that portfolio, often you can come up with a strategy that will allow you to renew that registration successfully and protect your ownership in that name.

Ashley Elliott (07:46):

I think this has been a very timely topic, thinking about the prevalence of ai, fake news, social commentary, everywhere these days. It's really important to fact check from a reliable source or check with an IP attorney or a government website like uspto.gov when you're checking on this type of stuff. Well, thank you, Mike, for all of your insight, and be careful as things go viral, because you never know what's true and what's not true. We'll talk to you next time. Bye.

Mike Carr (08:14):

See you guys. Bye-Bye.