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Trade Mark Question: Can the word “Zero” be exclusively owned by one or by none?

The Coca-Cola Company (Coca-Cola) has been a globally known beverage corporation for over a century now. Its success greatly depends on the legal protection of its brand names through global trade mark filing and brand strategies.

In the mid-2000s, however, Coca-Cola’s competitor, Royal Crown Cola Co. (RC Cola) initiated a trade mark battle when RC Cola challenged Coco-Cola’s trade mark applications to obtain exclusive rights to use the word “Zero” for low calorie and sugar-free sports drinks and soft drinks.

RC Cola vs. Coca-Cola

The U.S. Patent and Trademark Office (USPTO) initially objected to Coca-Cola’s trade mark applications and took the position that “Zero” is a “generic” term because it referred to a feature of the product, specifically calorie or carbohydrate content. Therefore, Coca-Cola should disclaim the term because it merely described this content.

Coca-Cola successfully challenged the disclaimer requirement raised by the USPTO on the basis that the brand name had acquired distinctiveness under the Lanham Act, 15 U.S.C. 1052(f). Subsequently, the marks were published without any requirement for disclaimers.

RC Cola opposed the applications on the basis that the marks were generic and submitted evidence of the use of the term in the product names of rival companies, blogs, articles, and third-party registrations.

The USPTO’s Trademark Trial and Appeal Board (TTAB) dismissed the oppositions and granted registration of Coca-Cola’s marks without the disclaimer, ruling that RC Cola failed to prove that the trade marks were generic. RC Cola appealed this decision to the U.S. Federal Circuit Court.

The Federal Circuit’s Ruling

RC Cola claimed that the term “Zero” is generic. If it was not generic, then the term was highly descriptive and had not acquired a level of distinctiveness in the market to entitle it to exclusive use of the term.

To decide whether the term was generic, the U.S. Federal Circuit Court considered the issues were:

(1) to determine the genus or class of goods or services at issue; and
(2) to determine whether the term is understood and used by the public to refer to that genus or class.

Evidence of the public’s understanding of the meaning of that term can come from any competent source.

For the first part, TTAB classified the brand name belonged in the class of soft drinks, sports drinks and energy drinks. RC Cola challenged this designation, arguing that the TTAB should have classified the goods more specifically and not just within the general genus of drink products.

In June 2018, the U.S. Federal Circuit determined that the TTAB never made a decision as to the descriptiveness of the term “Zero”. The TTAB has failed to properly consider whether the term can be generic by reference to a subcategory of soft drinks, namely, sports drinks or energy drinks with few or no calories, carbohydrates or sugar.

To decide the question as to whether a term is generic, sales and advertising figures are not determinative.

The key question to ask is:

“Does the public understand “Zero,” when used in combination with the word Coke, to refer to drinks that have little to no calories, carbohydrates or sugar?”

If the answer is in the positive, then the term “Zero” is generic and cannot be exclusively owned by Coca-Cola.

Accordingly, the U.S. Federal Circuit reverted the question back to the TTAB to make an express ruling on the issue and to evaluate the evidence to support its decision.

Take away points

  • Generic marks are not registrable.
  • It is the understanding of consumers that determines the question, not the evidence of sales and advertising figures.
  • A term can be generic for a genus or sub-category of products if that is the understanding of the relevant public.
  • Any “competent” evidence can be evaluated including witness testimony, surverys, dictionaries, trade journals, newspapers and other publications.

Mary Rose “Mary” Dizon, B.A., ABA Paralegal

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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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