The Value of ZERO – Expanding the Doctrine of Generic Trademarks

A “generic” term for a general class of products or services cannot be used as a trademark or service mark for the goods or services in those class(es), because the function of a trademark (or service mark) is to identify and distinguish the goods or services of one seller from those sold by all others. Terms such as “apple” cannot serve as trademarks for goods comprising the edible fruits of the apple tree, but other terms that were once valid trademarks, capable of identifying a single purveyor of certain goods or services, have also fallen victim to “genericide” and lost their trademark significance. Some are now so commonly used that the consuming public may not even recognize that these terms were once considered exclusive trademarks of individual companies, such as escalator, linoleum, thermos, and trampoline.

A group of Opposers, beverage producers within the Dr. Pepper Snapple Group, filed opposition proceedings against The Coca Cola Company’s trademark applications for its family of “ZERO” products, including COCA-COLA ZERO, COKE ZERO, SPRITE ZERO, FANTA ZERO, PIBB ZERO, VAULT ZERO, POWERADE ZERO, and FULL THROTTLE ZERO. Opposers’ request was that Coca-Cola be required to disclaim exclusive rights in the term ZERO with respect to these marks, arguing that the term ZERO is either generic for, or highly descriptive of, soft drinks and sports drinks not containing calories.

The oppositions have been simmering for over a decade. Recently, on June 20, 2018, the Federal Circuit vacated, and remanded, the Trademark Trial and Appeal Board’s decision that the term ZERO is not generic for soft drinks and sports drinks.

In so doing, the Court found that the Board applied the wrong standard in determining whether ZERO is generic. The Court found that, in assessing genericness, the key question to be asked is whether consumers viewed ZERO as referring to “a key aspect” of the beverages on which they were used. According to the Court, “a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.” The Court made clear that even if a term is generic only for a category or class of products “where some but not all of the goods identified in an application fall within that category,” it should not be treated any differently from other generic terms.

Thus, the Court instructed the Board to consider, on remand, whether ZERO is generic because it refers to a key aspect of at least a sub-group of the claimed beverage goods.

The Court also expressed several concerns with the Board’s treatment of the evidence. The Board, among other things, erred in discounting Opposers’ evidence of genericness regarding other parties’ use and registrations (with a disclaimer) of the ZERO marks. The Court pointed out that, despite the Board’s intimation otherwise, Opposers were actually not required to provide direct evidence of consumer perception, such as consumer survey or dictionary meanings, to support genericness. Thus, Opposers’ evidence, albeit indirect, should have received full evidentiary value in the consideration.

Also flawed, according to the Court, was the Board’s reasoning that the ubiquity of Applicant’s ZERO product, and high sales figures, proved that ZERO was not generic. After all, if a term is generic to begin with, it “cannot be rescued by proof of distinctiveness or secondary meaning, no matter how voluminous the proffered evidence may be.”

As a result, the Court remanded the case to the Board for further proceedings and the ultimate value of the term ZERO for soft drinks is still up for debate. In the meantime, the opening to the pit of “genericide” has grown slightly larger as a trap for the unwary trademark owner.

Linda Yang