After attempting (and initially succeeding) to trademark a number of soda names containing the word “ZERO,” a federal appeals court has remanded a lawsuit brought against Coca-Cola by Royal Crown Cola and Dr. Pepper/Seven Up Inc. back to the Trademark Trial and Appeal Board (TTAB).
Coca-Cola originally attempted to trademark a dozen soda names that included the term “ZERO” after the success of COKE ZERO, including SPRITE ZERO, PIBB ZERO, FANTA ZERO, and COKE ZERO ENERGY. RC Cola challenged the trademark in 2016, on the grounds that the term ZERO was generic, and therefore couldn’t be trademarked.
The TTAB initially ruled that the term ZERO was a “key aspect” of the product, making it eligible for trademark. RC Cola and Dr. Pepper/Seven Up Inc. argued that the term “ZERO” was too generic and would impede others’ ability to use the term for other zero-calorie products.
The Federal Circuit Court of Appeals found TTAB erred 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.
Essentially, if consumers are likely to associate the term “ZERO” with Coca-Cola and its family of zero-calorie products, Coca-Cola should get a monopoly on the term to prevent other firms from selling products consumers would mistake for being Coca-Cola products. (To use a clearer example, “hamburger” is a generic term that couldn’t be trademarked, but if someone called their hamburger a Big Mac, it could confuse consumers who believe they are consuming a McDonald’s product).
The Court found that TTAB had erred when considering if the term ZERO is closely associated with Coca-Cola, so it is still possible that Coca-Cola will receive the trademark.