Coca-Cola were allowed to trademark the term ÂZeroÂ in 2016 after a long battle with the Dr Pepper Snapple Group about the descriptiveness and apparent generic nature of the term ÂzeroÂ written on some of their beverages. The US Patent and Trade Mark Office held in their judgment through their Trade Mark Trial and Appeal Board, that Pepper had failed to demonstrate that ÂZeroÂ is generic for the genus of goods Coca Cola identified in its applications. Â They also said that the use of the ÂZeroÂ term in connection with soft drinks was substantially exclusive, because third-party use of Zero in a mark for soft drinks was inconsequential given the Âmagnitude of Coca ColaÂs useÂ.
Now, the US Court of Appeals for the Federal Circuit have got involved and has halted the previous decision to let the term ÂzeroÂ be trademarked. The circuit judges named Newman, OÂMalley and Taranto ruled that the previous decision was based on the wrong question being asked in assessing the alleged genericness of the ÂZeroÂ term and should have applied a better legal standard required for genericness so now it has and to be sent back for more examination.
More notably, the circuit explained that it could not make a ruling on the appeal due to the previous rulings ÂerroneousÂ legal framing of the genericness inquiry.
Their judgment had some interesting points. OÂMalley found that ÂSpecifically, the board failed to consider that Âa term can be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genusÂ. It failed to examine whether ÂZeroÂ identified a key aspect of the genus at issue, and it failed to examine how the relevant public understood the brand name at issue when used with the descriptive term ÂZeroÂ. The judges also found that they should have first assessed the level of the marksÂ descriptiveness before determining whether Coca Cola satisfied its burden of establishing acquired distinctivenessÂ
Finally, OÂMalley ruled that Âbecause we conclude that the board erred in its legal framing of the question of the claimed genericness of Coca-ColaÂs marks, and failed to determine whether, if not generic, the marks were at least highly descriptive, we vacate the boardÂs determination and remand for further proceedings.Â
The biggest point to be considered from this new judgment was that if the public understands ÂZeroÂ when used in combination with a designated beverage name to refer to a sub-group or type of beverage that carries specific characteristics, Âthat would be enough to render the term genericÂ.