On June 20, 2018, the Federal Circuit decided against the soft drink giant The Coca-Cola Company in their long-standing battle with Royal Crown Cola Company and Dr Pepper/Seven Up Inc.  These parties had opposed Coca-Cola’s registration of the “Zero” trademark, for various Coca-Cola products (Click Here for more details). In 2016 the U.S. Patent and Trademark Office had granted trademark rights to Coca-Cola for the term “Zero,” which is used for many of their low-calorie beverages such as “Cherry Coke Zero,” “Sprite Zero,” “Powerade Zero,” and more recently “Coca-Cola Zero Sugar.” Royal Crown contested the Board’s decision arguing that “Zero” is a generic term used by many other beverage companies to indicate the zero-calorie nature of their drinks, analogous to the terms “Diet” or “Light/Lite.”   They also questioned whether consumers instantly associated the term “Zero” with Coca-Cola. The Board dismissed Royal Crown’s opposition and preserved Coca-Cola’s rights to Zero. On appeal, the Federal Circuit vacated the decision, asserting that the Board erred in in their legal approach to examine whether Coca-Cola should claim exclusive trademark rights to the term “Zero.”

The Federal Circuit remanded, indicating that the Board should “apply [a] proper legal standard for genericness.” The Court explained that a term is generic if the public understands the type of beverage being designated or can refer to a sub-group just by looking at the term in combination with a beverage name, yet the Board did not properly take this fact into consideration. Moreover, the Court pointed out that even if the term Zero is not generic, the Board should thoroughly assess the acquired distinctiveness of the term because it is highly descriptive when used in connection with beverages. The Board previously relied on a 2008 survey, to conclude that the term had acquired distinctiveness. Now that the case has been returned to the Board, we look forward to seeing how the case will proceed and whether Coca-Cola will reclaim its trademark rights in “Zero.”

-Shin Hee Lee and Anthony Sabatelli, PhD, JD

Shin Hee Lee is a Ph.D. Candidate in the Chemistry Department at Yale University. She is currently associated with the Yale Energy Sciences Institute, where she specializes in organic synthesis of novel light-harvesting dye molecules for solar cells. Prior to attending Yale, Shin Hee obtained her B.S. in Chemistry with High Honors at the University of Michigan – Ann Arbor, during which she published patents and papers on developing synthetic methodologies for fluorinated small molecules.

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