A recent decision of the United States Court of Appeals for the Federal Circuit may bring an end to the Coca Cola Company’s attempt to obtain trademark registrations for COCACOLA ZERO and COKE ZERO.
The Facts
In 2005 the Coca-Cola Company (TCCC) introduced COCA-COLA ZERO brand also known as COKE ZERO as a no-calorie cola. No doubt trademark applications were filed in many countries but for the purposes in hand we will focus on the UK, Canada and the US.
The UK
On April 4, 2006 TCCC filed an application to register a trademark essentially consisting of the word ZERO in association with mineral and aerated and non-alcoholic drinks and other related goods. The application was opposed by Pepsi Co Inc on the grounds that the trademark was devoid of any distinctive character and consisted exclusively of a sign or indication that could be used to indicate one or more characteristics of the goods in question.
The hearing officer agreed with the opponent and the application was refused.
TCCC appealed from this decision but without success,
Canada On December 15, 2008 TCCC filed an application to register the trademark ZERO in association with non-alcoholic beverages namely: carbonated soft drinks and other related goods. The application was opposed by Pepsi Co Inc. on the grounds that the trademark was clearly descriptive and non-distinctive. The hearing officer agreed with the applicant concerning the first ground of opposition. It was found that the term “zero” alone was not self-evident or plain or that it manifested an intrinsic character or quality of the applied for goods as a matter of first impression in the mind of a normal or reasonable person as the term could carry different meanings and connotations.
On the non-distinctiveness ground the hearing officer said that the applicant had not provided evidence to enable the hearing officer to conclude that the applied for mark would be recognized by the average consumer as a source identifier, rather than as a qualifier of some sort, within the context of the applicant’s goods. As a result the applied for mark was not shown to be to have become distinctive in Canada particularly since there was no evidence of use for promotion of the mark other than in conjunction with the applicant’s other trademarks. As a result the application was dismissed. It does not appear that an appeal was taken from this decision.
The US TCCC filed numerous trademark applications consisting of various well-known brand names in conjunction with the word zero for example COCA-COLA ZERO and COKE ZERO. The USPTO during the prosecution of the applications requested that TCCC disclaimed the term ZERO because the term merely described a feature of the applicant’s goods. TCCC refused to disclaim the term on the basis that it had acquired distinctiveness.
Royal Crown Company, Inc. opposed the applications on the basis that the term ZERO was merely descriptive of the attributes of the associated products and the term was generic. The Trademark Trial and Appeal Board (Board) found that TCCC had established that it had acquired distinctiveness in the term ZERO when used as part of the mark for soft drinks.
Royal Crown Company, Inc. appealed form this decision to the United States Court of Appeals for the Federal Circuit. The appeal was recently allowed. It was found that the Board applied an incorrect legal standard in assessing whether TCCC’s marks were generic. In a similar fashion the court set aside the Board’s acquired distinctiveness determination. The case was then remanded to the Board for further consideration.
The Rebrand
In July 2016 TCCC and announced a reformulated rebranded version COKE ZERO in association with the trademark COCA COLA ZERO SUGAR. Part of the reason for the change was that many consumers did not know that COKE ZERO did not contain any sugar.
Comment
The decisions of various courts involved all seem to make sense since it would not be appropriate to have one business be in a position to monopolize the use of a common and descriptive term, which is used by many traders.
On a business level it does seem odd that the Coca-Cola Company would move to an even more descriptive trademark. However, the point of comparison is to their very well-known and valuable COKE and COCA COLA trademarks and the remaining descriptive terms are of less importance.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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