In Royal Crown Company and Dr Pepper/Seven Up Inc v The Coca-Cola Company, Opposition 91178927, each party opposed the other’s trademark applications containing the term ZERO for soft drinks, sports drinks and energy drinks. Although Coca-Cola was granted registration for most of its sought-after ZERO-component marks without disclaiming the word ‘zero’ based on acquired distinctiveness, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office ruled that Dr Pepper/Seven Up’s PURE ZERO and DIET RITE PURE ZERO marks were inherently distinctive and thus also registrable, with a disclaimer of ‘zero’.
In the consolidated proceedings brought before the board, Dr Pepper/Seven Up opposed 17 applications by Coca-Cola that included the term ZERO. Dr Pepper/Seven Up argued that ‘zero’ was either generic for zero-calorie soft beverages or, alternatively, descriptive and should be subject to a disclaimer. Coca-Cola opposed two applications by Dr Pepper/Seven Up for marks containing the term ZERO, arguing that the marks were likely to cause consumer confusion with Coca-Cola’s family of ZERO marks including COKE ZERO, SPRITE ZERO and FANTA ZERO.
Dr Pepper/Seven Up’s argument that ZERO is generic for soft drinks, sports drinks or energy drinks was unsuccessful. In determining whether the mark was generic, the board first identified the “genus of the goods or services at issue” and then discussed whether the relevant primary public understood the term to refer to that genus of goods or services. The board found that the relevant consumers did not use or understand ZERO to refer to the genus of soft drinks, energy drinks or sports drinks, particularly those with zero or few calories. Despite Dr Pepper/Seven Up’s submission of 27 third-party zero-calorie beverages with names that incorporate ‘zero’, the board noted that the total sales were very low. Additionally, those third-party uses did not constitute evidence that the public understands ZERO to be the name of a category of beverages. Dr Pepper/Seven Up’s final genericism argument noted that Coca-Cola’s advertisements used ZERO to refer “not to the source of the product, but to the zero-calorie nature of the product”. The board disagreed and held that although the uses of ZERO and 0 convey information about the calorie content of the beverages, they did not name the genus of those goods. It concluded that ZERO was descriptive and not generic.
The board found that Coca-Cola’s ZERO marks had acquired distinctiveness. Due to sales that exceeded $1 billion, extensive marketing expenditures and survey evidence which indicated that 61% of consumers associated ZERO with one company, Coca-Cola had established secondary meaning. Coca-Cola’s significant use of its ZERO line was found to be “substantially exclusive” despite Dr Pepper/Seven Up’s contention of third-party uses.
While Coca-Cola’s ZERO line of soft drinks, including sports drinks, had acquired secondary meaning, the board decided that Coca-Cola’s four applications for energy drinks had not acquired secondary meaning and therefore required disclaimers of the exclusive use of ZERO.
Contrary to Coca-Cola’s claims that Dr Pepper/Seven Up’s DIET RITE PURE ZERO and PURE ZERO marks were likely to cause confusion with Coca-Cola’s ZERO family of marks, the board found Dr Pepper/Seven Up’s two marks to be inherently distinctive and entitled to priority as of the application filing dates. At the time that Dr Pepper/Seven Up’s applications were filed, only one mark in Coca-Cola’s ZERO family had been registered. The board concluded that, without proof of priority, Coca-Cola’s likelihood of confusion argument must fail.
Coca-Cola does not have exclusive rights to use ZERO, but companies looking to market low or no-calorie soft drinks should be cautious of legal battles that could arise if they choose to incorporate ZERO in their marks.
This article first appeared on WTR Daily, part of World Trademark Review, in July 2016. For further information, please go to http://www.worldtrademarkreview.com.