ZERO Not Generic for Soft Drinks, Says TTAB, In Multi-Mark Battle

This consolidated proceeding involved eight oppositions to Coca-Cola's attempted registration of various ZERO-containing marks for soft drinks sports drinks, and energy drinks, without a disclaimer of the term "zero," on the ground that the word is generic or merely descriptive of no-calories beverages, and Coca-Cola's opposition to registration of PURE ZERO and DIET-RITE PURE ZERO for soft drinks [ZERO disclaimed], on the ground of likelihood of confusion with Coca-Cola's alleged family of ZERO-formative marks. The Board dismissed RC's oppositions to 13 of Coca-Cola's applications, but as to four applications the board sustained the oppositions subject to TCCC filing a disclaimer of the word ZERO within two months. TCCC's Section 2(d) oppositions were dismissed due to failure to prove priority. Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, Oppositions Nos. 91178927, et al. (May 23, 2016) [not precedential].

Genericness: The Board found that the identifications of goods in TCCC’s applications adequately defined the genus of the goods at issue as soft drinks, sports drinks, and energy drinks. The question then was whether "ZERO" is understood by the relevant public primarily to refer to that genus of goods.

RC did not provide any direct evidence regarding consumer understanding of ZERO, nor any dictionary evidence associating ZERO with soft drinks. Its indirect evidence, which the Board found unpersuasive, included evidence of some 27 third-party zero-calorie soft drinks, sports drinks, and energy drinks with names that incorporate ZERO. However, "the overall use appears to be relatively minor in comparison to TCCC’s, representing a small fraction of TCCC’s use of the term for its goods." Crucially, none of the evidence showed that "ZERO" is a category of sports, energy, or soft drinks.

Third-party registrations for marks with "ZERO" disclaimed did not prove genericness, since words that are merely descriptive may also be disclaimed. A handful of public references to "zero" products spread over five years did not establish that ordinary consumers primarily use or understand the term ZERO to refer to the genus of soft drinks, sports drinks, or energy drinks. TCCC's own use of "ZERO" was "as part of a mark in product names."

The Board found that "RC has not met its burden to establish by a preponderance of the evidence that ZERO is generic for soft drinks, sports drinks, or energy drinks, even such drinks that contain no, or fewer than five, calories."

Acquired Distinctiveness: TCCC claimed acquired distinctiveness for "ZERO" in connection with its 17 applied-for marks. The question of whether the ZERO marks have acquired distinctiveness is determined on the basis of the facts existing as of the time registrability is being considered by the Board. Accordingly, the Board took into account evidence up to the time of close of the testimony periods.

TCCC's sales of beverages under the ZERO family of marks were in the billions of dollars, and advertising and promotion figures were in the hundreds of million dollars. Survey evidence from a prior proceeding supported the Section 2(f) claim.

RC argued that TCCC  could not establish acquired distinctiveness because its use of ZERO has not been substantially exclusive. However, the evidence concerning third-party use of ZERO (and RC's use as well) in a mark for soft drinks was "inconsequential, particularly when compared with the magnitude of TCCC’s use."

We find that the cumulative effect of TCCC’s use of ZERO in connection with its line of soft drinks is so extensive that it qualifies as “substantially exclusive” as required under Section 2(f), and that the use of ZERO by others is not so extensive as to rise to a level that invalidates TCCC’s claim of substantially exclusive use.

The Board concluded that TCCC had established acquired distinctiveness for soft drinks and for sports drinks. It found, however, that TCCC did not meet its burden to establish that it has acquired distinctiveness in the term ZERO for energy drink products. RC's oppositions as to those four applications were sustained, but TCCC was allowed two months from the date of this decision in which to file a motion "to amend these four applications to conform to the findings of the Board by stating that no claim is made to the exclusive right to use ZERO apart from the marks as shown for the applications and goods 'non-alcoholic beverages, namely, energy drinks' and 'syrups and concentrates for making energy drinks.'"

Likelihood of Confusion: As to TCCC's likelihood of confusion claims against two RC applications, the Board found that the two opposed marks are inherently distinctive as a whole, and therefore RC may rely on the filing dates of its applications as its constructive first use dates: February 28, 2005 for DIET RITE PURE ZERO, and March 7, 2005 for PURE ZERO.

TCCC did not assert likely confusion based on any of its individual marks, but claimed a family of ZERO marks. However, it had used only one mark before RC's filing dates. Therefore it could not rely on the family-of-marks argument to prove likelihood of confusion since it did not have a family of marks prior to RC's filing date.

And so the Board dismissed TCCC's claim for failure to prove priority.

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TTABlog comment: When you walk down the aisle of the supermarket, is there a sign that says "zero" in the soft drink aisle, where no-calorie drinks reside?

Text Copyright John L. Welch 2016.