ZERO-ing in on the Right Legal Test for Genericness

June 27, 2018
Post by Blog Staff

In Royal Crown Co. v. The Coca-Cola Co., the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Trademark Trial and Appeal Board (TTAB) dismissing Royal Crown’s opposition to the registration of Coca-Cola’s trademarks for soft drinks and sports drinks with the term ZERO. The CAFC concluded that the TTAB used the wrong legal test to determine whether ZERO is generic, or if not generic at least highly descriptive, vacated the TTAB’s decision, and remanded.

Multiple companies, including those involved in this matter, use the term ZERO as an element in a mark for beverage products. Indeed, Royal Crown has trademark protection for two marks that include the term ZERO, however ZERO was disclaimed from the marks as a whole. Coca-Cola refused to disclaim ZERO and successfully argued that as part of a family of ZERO marks, the term ZERO acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), and the marks were approved. Royal Crown filed oppositions to the marks arguing that ZERO is merely descriptive of attributes of the products and the term is generic when applied to certain beverages. Royal Crown, in its opposition, seeks for Coca-Cola to be required to disclaim the term ZERO. Upon review, the TTAB found ZERO not generic and Coca-Cola had indeed acquired distinctiveness in that term. Royal Crown appealed the TTAB’s determination.

The CAFC concluded that the TTAB erred by failing to examine whether ZERO is generic in reference to a key aspect of the claimed beverages and how the relevant public understands the brand name at issue when used with ZERO. Additionally, the CAFC found that the TTAB also failed to first assess the level of the term’s descriptiveness before determining whether Coca-Cola satisfied its burden of establishing acquired distinctiveness. The burden of showing acquired distinctiveness increases with the level of descriptiveness with a highly descriptive term requiring more exacting evidence of secondary meaning.

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