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The US Court of Appeals for the Seventh Circuit affirmed a district court’s grant of summary judgement to Coca-Cola in a trademark dispute involving Coke’s “Zero” products.

Blue Springs Water Company sold bottled water using the brand name “Naturally Zero Canadian Natural Spring Water” from 1998 to 2004. About 500,000 bottles were sold in the Chicago area, southern Wisconsin, and Northwestern Indiana.

The company’s owner, Mirza Baig, filed an application for the mark “Naturally Zero Canadian Natural Spring Water” with the US Patent and Trademark Office (USPTO) in 1997. He later disclaimed the terms “Canadian Natural Spring Water.”

The USPTO told Baig to disclaim the phrase “Naturally Zero” and the numeral “0” because “zero” is “widely used and recognized [as] merely descriptive,” and “Naturally” is generic.

Baig continued to sell water using the unregistered mark until 2004, just as Coca-Cola’s Coke Zero and Sprite Zero were entering the drink market. For about one month, Baig’s water and the Coke products were sold at the same time.

The Trademark Infringement Case

Baig sued Coca-Cola for trademark infringement under the Lanham Act. Coca-Cola moved for summary judgment.

The District Court ruled that the phrase “Naturally Zero” was merely descriptive of bottled water and that Baig and his company could not establish that the phrase had developed secondary meaning. Also, the court ruled that plaintiffs had abandoned any rights by halting sales of the water in 2004.

Baig appealed, arguing that his mark had acquired secondary meaning, relying on 15 U.S.C. § 1052(f), which allows the USPTO to presume that a mark has acquired distinctiveness after five years of “substantially exclusive and continuous use.”

The Seventh Circuit disagreed with Baig noting that

this presumption applies only to applications to register a mark, not to suits to establish liability for infringement, and it is merely a permissive presumption even in that context… In trademark-infringement suits, instead of presuming secondary meaning from just the length and manner of use, courts consider several other factors: the exclusivity of use, amount and manner of advertising, volume of sales, number of customers, whether the product occupies an established place in the market, proof of intentional copying, and consumer testimony and surveys.

The court concluded that, considering all these factors, Baig had not produced evidence from which a rational jury could determine that his mark had established secondary meaning.

The case is Mirza Baig v. Coca-Cola Co.