892 F.3d 1358
Fed. Cir.2018Background
- Royal Crown (part of Dr Pepper Snapple Group) opposed The Coca‑Cola Co.’s (TCCC) applications to register multiple marks that include the term ZERO (e.g., COCA‑COLA ZERO, COKE ZERO, SPRITE ZERO).
- PTO examiners required disclaimers of ZERO as merely descriptive (calorie/carbohydrate content); TCCC claimed distinctiveness under §2(f) and registrations issued without disclaimer.
- Royal Crown argued ZERO is generic for (or at least highly descriptive of) soft drinks, sports drinks, and energy drinks (or a subcategory of those with zero/near‑zero calories) and sought a disclaimer.
- The Trademark Trial and Appeal Board found Royal Crown failed to prove genericness and concluded TCCC had proven acquired distinctiveness for soft drinks (but not energy drinks); it dismissed the oppositions.
- The Federal Circuit vacated and remanded, holding the Board applied the wrong legal framing for genericness (failed to consider a sub‑genus/key‑aspect analysis) and failed to first determine how highly descriptive ZERO is before assessing acquired distinctiveness; remand required further factfinding and explanation.
Issues
| Issue | Plaintiff's Argument (Royal Crown) | Defendant's Argument (TCCC) | Held |
|---|---|---|---|
| Whether ZERO is generic for the claimed goods | ZERO is generic for the genus or at least for the sub‑category of zero/near‑zero calorie beverages | ZERO is not generic; it can serve as a descriptive element and has acquired distinctiveness | Vacated Board: remand for Board to consider whether ZERO is generic for a sub‑group/key aspect of the claimed genus (two‑step Marvin Ginn test applied properly) |
| Proper genus definition for genericness inquiry | Genus should include the relevant sub‑category (beverages with few/no calories) | Broad genus (soft, sports, energy drinks) suffices | Court held Board erred by only treating broad genus; must consider sub‑genus/key aspect analysis |
| Sufficiency of Royal Crown’s indirect evidence of genericness | Competitor use, registrations, packaging, and consumer usage evidence can show genericness without direct surveys | TCCC argued its sales/advertising and survey show lack of genericness | Court held Board improperly discounted indirect evidence and wrongly relied on sales/advertising in genericness inquiry; remand to reassess whole record |
| Whether Board properly assessed acquired distinctiveness | ZERO is highly descriptive and Royal Crown argued TCCC failed to meet higher evidentiary burden | TCCC relied on sales, advertising, and a consumer survey to show secondary meaning | Vacated: Board must first determine degree of descriptiveness (sliding‑scale burden) and then reassess whether evidence meets that burden; survey limitations noted |
Key Cases Cited
- Princeton Vanguard, LLC v. Frito‑Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir.) (standard for reviewing TTAB legal questions and substantial‑evidence review)
- In re Dial‑A‑Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir.) (definition of acquired distinctiveness/secondary meaning)
- In re Hotels.com, LP, 573 F.3d 1300 (Fed. Cir.) (substantial‑evidence review of genericness findings)
- In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir.) (term can be generic for a sub‑aspect/key aspect of a genus)
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir.) (two‑step genericness test)
- In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir.) (sliding scale: greater descriptiveness requires stronger proof of secondary meaning)
- In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir.) (applying elevated burden for highly descriptive marks)
- Merrill Lynch, Pierce, Fenner & Smith, Inc. v. The Commissioner, 828 F.2d 1567 (Fed. Cir.) (generic terms cannot acquire trademark protection)