Law & Practice

UNITED STATES: Disclaimer on ‘ZERO’ Ends Coca-Cola’s Decade-Long Battle

Published: September 16, 2020

Rui W. Geissler Muncy, Geissler, Olds & Lowe, P.C. Fairfax, Virginia, USA INTA Bulletins—North America Subcommittee


Rachel Rudensky

Rachel Rudensky Akerman LLP West Palm Beach, Florida, USA INTA Bulletins—North America Subcommittee

A challenge to Coca-Cola’s registration of “ZERO” trademarks suffered a setback after Coca-Cola accepted a disclaimer in a battle over genericness.

On August 3, 2020, the U.S. Court of Appeals for the Federal Circuit (CAFC) dismissed the appeal as moot made by Royal Crown Company, Inc., and Dr. Pepper/Seven-Up, Inc. (collectively, “Royal Crown”) from a decision of the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office.  Royal Crown Company, Inc., and Dr. Pepper/Seven-Up, Inc. v. The Coca-Cola Company, Appeal No. 2019-2088 (Fed Cir. Aug. 3, 2020) [not precedential].

Starting from 2008, Royal Crown filed multiple oppositions against Coca-Cola Company (Coca-Cola) for its 16 trademark applications containing the term “ZERO”, claiming that each of the marks is “generic or merely descriptive of the zero-calorie features of the beverages,” and argued that each of the registrations must be denied “absent the entry of a disclaimer of the term ‘zero.’”

The TTAB first held that all the marks could be registered even without a disclaimer of ZERO, and dismissed Royal Crown’s oppositions because it failed to prove ZERO’s genericness for zero-calorie products while Coca-Cola has proved that it had acquired distinctiveness on ZERO.

Royal Crown appealed, and CAFC vacated the decision because the TTAB applied the wrong legal standard for genericness of the term “ZERO” and failed to make an “express finding” on the term’s descriptiveness “on the scale ranging from generic to merely descriptive.”

Following the remand, Coca-Cola filed a motion to add the disclaimer to each of its applications regarding ZERO. Noting that the disclaimer was the only relief requested by Royal Crown, the TTAB granted Coca-Cola’s motion and dismissed Royal Crown’s oppositions again.

Royal Crown then filed the current appeal claiming that granting Coca-Cola’s motion was “procedurally improper and thus arbitrary, capricious, and an abuse of discretion.” Second, Royal Crown argued that the TTAB neglected its obligation to render a reasoned decision. Finally, Royal Crown raised the possibility of Coca-Cola’s filing new applications for marks including the term “ZERO” again.

CAFC supported the TTAB’s decision on granting the disclaimer and stated that it was within the TTAB’s discretion and that Royal Crown had been “entirely fulfilled” with the only relief it had asked. The entry of the disclaimer therefore rendered the appeal moot. As regarding a future, possibly similar application, the CAFC stated that “litigation is conducted for the purpose of obtaining relief, not an advisory opinion.”

As there was no case or controversy to decide, CAFC dismissed the appeal.

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