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.