Drink giant, Coca Cola has recently been halted in its attempts to register a number of marks containing the word ‘ZERO’.
After a surge of people moving towards a healthier lifestyle, a new demand has developed for our favourite soft drinks to be created with a minimal amount of calories.
Not being one to miss out on popular demand, The Coca-Cola Company have submitted an application for the registration of 17 marks containing the word ‘ZERO’ to represent the lack of calories.
However, this application was not plain sailing.
Royal Crown Company has opposed these applications stating that firstly, ZERO is a generic term used to indicate any drink that has no calories and therefore cannot be a registered trade mark that needs to be distinctive.
Secondly, they claim that even if the word ZERO was not generic, it was a mere description of the goods in question, again not distinctive.
The United States Patent and Trademark Office considered this case, focusing first on RCC’s oppositions to the applications.
In relation to deeming ‘ZERO’ generic, RCC failed to submit consumer surveys which are deemed the best evidence to suggest genericness. Therefore, the Oppositions Board deemed the word ‘ZERO’ as not generic, as RCC were looking to show.
In relation to the second part of RCC’s opposition, stating that even if it was not generic, ‘ZERO’ was a description of the goods and therefore not distinctive.
Considering evidence of the mark’s use, the board looked to see if it had acquired distinctiveness. Using sale figures, marketing expenditure and survey evidence, the Board found that ZERO had acquired distinctiveness for soft drinks and sport drinks but not for energy drinks. While this allowed the applications for the majority of Coca Cola’s marks to continue, there were four marks specifically for energy drinks which were rejected.
In relation to Coca-Cola’s counter oppositions, they claimed that RCC’s two marks containing ‘ZERO’ would cause confusion with their family of ‘ZERO’ marks.
The Board stated that RCC’s marks were distinct and were not descriptive as Coca-Cola claimed. In addition, they held that they did not affect Coca-Cola’s marks in a way to warrant their removal as the family of marks mentioned by Coca-Cola were not in use at the time of RCC’s registration. Only one of Coca-Cola’s ZERO marks was in use. Therefore, a family of marks had not been created and Coca-Cola’s opposition had failed.
Therefore, there was not a clear success here but Coca-Cola are free to still use ZERO as part of their growing empire but do not have the power to stop another’s use of it.