The Royal Crown Company & Dr Pepper v The Coca Cola Company are still battling with ‘Zero’ result.

Recap

Coca-Cola were allowed to trademark the term ‘Zero’ in 2016 after a long battle with the Dr Pepper Snapple Group about the descriptiveness and apparent generic nature of the term ‘zero’ 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 ‘Zero’ is generic for the genus of goods Coca Cola identified in its applications.  They also said that the use of the ‘Zero’ 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 “magnitude of Coca Cola’s use”.

New ground

Now, the US Court of Appeals for the Federal Circuit have got involved and has halted the previous decision to let the term ‘zero’ be trademarked. The circuit judges named Newman, O’Malley and Taranto ruled that the previous decision was based on the wrong question being asked in assessing the alleged genericness of the ‘Zero’ 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 “erroneous” legal framing of the genericness inquiry.

Their judgment had some interesting points. O’Malley found that “Specifically, the board failed to consider that ‘a 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 genus’. It failed to examine whether ‘Zero’ 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 ‘Zero’. The judges also found that they should have first assessed the level of the marks’ descriptiveness before determining whether Coca Cola satisfied its burden of establishing acquired distinctiveness”

Finally, O’Malley ruled that “because we conclude that the board erred in its legal framing of the question of the claimed genericness of Coca-Cola’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive, we vacate the board’s determination and remand for further proceedings.”

The biggest point to be considered from this new judgment was that if the public understands ‘Zero’ when used in combination with a designated beverage name to refer to a sub-group or type of beverage that carries specific characteristics, “that would be enough to render the term generic”.