Registering ZERO: Trademarks mean Nothing to Me

Royal Crown Dr. Pepper, and Seven Up v. Coca Cola (Fed. Cir. 2018)

This case stems from Royal Crown’s opposition of Coca-Cola’s attempt to register various trademarks with the term ZERO. These include, among others, SPRITE ZERO, FANTA ZERO, COKE ZERO, PIBB ZERO, and my favorite COKE ZERO ENERGY.

Coke uses the ZERO mark on zero calorie products — presumably to indicate the same.  Other companies, including Royal Crown have used the mark for the same purposes (See DIET RITE PURE ZERO).  Royal Crown argued that Coca-Cola should be required to disclaim the term ZERO since it a generic term is simply descriptive of the a feature of the goods.  The Federal Circuit has approved of the disclaimer process in the past: “Disclaiming unregistrable components prevents the applicant from asserting exclusive rights in the disclaimed unregistrable terms.” In re La. Fish Fry
Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015).

Coca-Cola argued that no disclaimer was necessary since its use of the ZERO mark was not generic and has acquired distinctiveness under Section 2(f) of the Lanham Act. The TTAB agreed with Coca-Cola and approved the marks for publication without any disclaimer.

On appeal, the Federal Circuit has VACATED and REMANDED — holding that the TTAB applied the wrong standard in determining whether the the marks are generic and did not fully consider the evidence presented.  The court also held that the TTAB had failed to sufficiently explain how the evidence presented meets the “precise burden” of acquired distinctiveness.

The word ZERO has lots of potential meanings that can vary by context.  In trademark law, we look particularly a mark’s use in the particular marketplace at issue (“genus of goods”) and consider how the the relevant public would understand the term with reference to that genus.   If the term is understood “to refer to a key aspect of that genus” then it is generic. In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016).  It was in the “key aspect” or sub-genus focus that the TTAB failed in its analysis:

The Board here failed to consider whether the relevant consuming public would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages—i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.

On remand, the TTAB will reconsider the issue with a focus on whether ZERO is generic for zero-calorie drinks.

Again, the focus of Trademark Law is the perception of relevant consumers.  A word or phrase that is seemingly descriptive of a product can still serve as a protectable mark if those consumers distinctively associate the mark with particular products or services (rather than the genus as a whole).  In cases where a mark is “highly descriptive” then “evidence of acquired distinctiveness must be exacting.”

Here, however, the TTAB “did not make any finding as to the degree of descriptiveness conveyed by the term ZERO” nor did it asses the evidence “through an exacting lens.”

Important decision: Read it here

What is really going on in the case: Coke could register these marks if it disclaimed protection to ZERO alone.  However, it appears that Coke is looking to use these marks as a stepping-stone for prohibiting any other ZERO soft drinks.

14 thoughts on “Registering ZERO: Trademarks mean Nothing to Me

  1. 8

    According to the write-up, others with national reach are also use “zero” to describe their zero calorie products.

    So where is Coke’s distinctiveness argument, aside from the full phrase “Coke Zero”?

    I also get heartburn over what are arguably only descriptive words being registered.

    What’s that you say, Hanes? Your shirts are tagless?

    Well, SURE THING, you can register that description as a mark on the principal register!

    (3183194, registration for “Tagless”)

  2. 7

    (Trying to get a comment in, but apparently some word or other is offending the filter. We could use a listing of forbidden words….)

  3. 6

    Personally, I when at the grocery store I always ask if they have

    “ground beef zero” if I want lean ground beef
    “milk zero” if I want skim milk
    “ketchup zero” if I am looking for ketchup with no sugar added
    “beer zero” if I’m looking for a low calorie beer

    No one EVER screws up their face at me, and why would they?

    So I’m guessing Coke Co. will be no disclaimer zero for this TM application.

    1. 5.1

      Awesome! This commercial does imply the is the major difference between Coke’s ZERO products and its DIET products. DIET tastes different from the regular HF corn-syrup version while ZERO is supposed to taste the same. (I’ll admit that I have not tried the ZERO products.)

      1. 5.1.1

        I am a fan of Coke Zero and have been perplexed by the fact that the ZERO seems to have been removed from the black cans lately. So thanks for this. I suppose it might be related.

        My first impression of Coke Zero was that it tastes exactly like old Coke (when it was made with sugar, as God intended). That’s why I’m a fan. I was expecting diet coke by another name and didn’t know it was supposed to be a tasted duplicate. However, I have never done a side by side comparison. I suspect that now I would find Coke Zero to taste different in some way If I did.

        1. 5.1.1.1

          Zero tastes a bit different from the normal version, not as sugary obviously. It’s a diff sweetner for sure.

  4. 4

    Just another reason for me to not buy Coke products…

  5. 3

    Can anyone distinguish between the legal concept of “generic use” and the mere fact of “obviously understood”(which can occur prior to any generic or actual use)?

  6. 2

    Marty: Gimme a Pepsi Free.
    Lou: You want a Pepsi, pal, you’re gonna pay for it.

  7. 1

    Nothing new here. Decades ago companies tried to trademark the word “Light” or “Lite” to describe low tar cigarettes, low calorie drinks and foods, etc. The courts in that era rightly rejected these attempts, reasoning that no one has the right to monopolize the use of a descriptive word like “light,” at least not by itself.

    Coke’s trademark on “Zero” alone should fail for the same reasons. They have no right to monopolize the use of that word; if Pepsi wants to come out with “Pepsi Zero,” they should be allowed to. If you don’t like that result, Coke, use a word that’s more arbitrary and not so descriptive and generic. You can’t own the English language, or even a small part of it.

    1. 1.1

      But Coke is the real thing, and Pepsi isn’t.

    2. 1.2

      You can’t own the English language, or even a small part of it.

      That’s not how trademarks work.

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