Turn Back the Clock! TTAB Designates 2019 COKE ZERO Decision Precedential

The Board has reached back and deemed precedential its May 3, 2019 decision granting Coca-Cola's Rule 2.133 motion to amend sixteen pending and opposed applications for ZERO-formative marks by entering a disclaimer of the word ZERO. RC Cola and Dr. Pepper squawked because they had wanted a determination whether the word "zero" is generic or merely descriptive of soft drinks. The Board, however, agreed with Coke that the disclaimer of ZERO rendered the issue moot and so it dismissed the oppositions. In 2020, the CAFC dismissed the appeal from the 2019 Board decision, ruling that there was no case or controversy to decide. [TTABlogged here]. Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. v. The Coca-Cola Company, 2021 USPQ2d 387 (TTAB 2021) [precedential].

In its original decision in 2016, the Board had ruled that Coca-Cola's marks [E.g., COKE ZERO, SPRITE ZERO, and PIBB ZERO] could be registered with a disclaimer of ZERO because the marks had acquired distinctiveness. [TTABlogged here]. In 2018, the CAFC reversed, instructing the Board, on remand, to consider whether ZERO refers to a "key aspect" of the genus, and to make an express finding regarding the degree of the term's descriptiveness. [TTABlogged here]. When the case got back to the Board, Coke was allowed to enter its disclaimer of ZERO, and the Board dismissed the oppositions.

In the subsequent appeal from the dismissal, Royal Crown raised three challenges: that the Board's granting of the motion was procedurally improper, that the Board was required by the Administrative Procedure Act (APA) to render a reasoned decision on the merits, and that the disclaimers did not moot this appeal since Coca-Cola might file new ZERO applications in the future. The court, however, found that the Board did not abuse its discretion in granting the motion, and that entry of the disclaimer render the appeal moot.

Rule 2.133(a) allows the Board to grant amendments to an opposed application even without consent of the other party. Royal Crown offered no support for its argument that such motions are forbidden after trial, and the court found it "improbable" that the Board has no power to grant a motion entering a disclaimer when that is all the opposer seeks.

Royal Crown contended that because Coca-Cola did not concede whether ZERO is generic or merely descriptive, Coca-Cola may apply for other ZERO marks. The court observed that "litigation is conducted for the purpose of obtaining relief, not an advisory opinion." Although such an advisory opinion might be useful to Royal Crown, that interest is "too speculative to invoke the jurisdiction of this court."

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TTABlogger comment: I wonder what led the Board to re-visit its 2019 ruling?

Text Copyright John L. Welch 2021.