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Is ZERO Generic for Coke (ZERO)?

For more than 13 years, a battle has raged over the brand name COKE ZERO. At its core, the dispute centered on whether the term “zero” was generic or descriptive for purposes of trademark law. These two trademark types have important implications for the abilities of companies to protect their intellectual property.

If the term was deemed generic, that would mean it could not be registered and it could be used in commerce by anyone – including Coca Cola’s competitors. If, on the other hand, the term was found to be descriptive (i.e., it could be uniquely recognized by consumers as a Coke product), then Coca Cola could obtain registration for the term ZERO as part of its trademark and prevent competitors from using that word as part of a brand name for their soft drinks.

The preeminent legal scholar on trademark law, Professor J. Thomas McCarthy, explained what’s at stake behind these designations:

Every trademark lawyer knows that the line between generic and descriptive is worth fighting over. If the designation is put into the “generic name” category, then it’s neither registerable as a mark nor protectable as a common law mark.… If it’s “descriptive,” proving a secondary meaning can establish trademark rights.

And trademark rights are what everyone is after when it comes to protecting a company’s claim over a valuable brand name.

The Coca-Cola Company and several other competing soft drink brands have been involved in a trademark fight for the ages since they first sought to register trademarks for their low-calorie sodas containing the term ZERO in 2005. The dispute eventually made its way to the Court of Appeals for the Federal Circuit (CAFC). Unfortunately, many scholars believe the CAFC ruling has blurred the lines between trademarks that are generic versus descriptive. In this article, I’ll present a brief history of the case and consider its implications for companies seeking new trademarks in the future.

The History of ZERO

Rewind to 2005: several Coca Cola competitors (including RC Cola, Dr. Pepper, and Seven Up – referred to collectively in this article as “RC”) filed Trademark Applications for products called DIET PURE RITE ZERO and PURE ZERO.

The United States Patent and Trademark Office (USPTO) rejected those applications, saying that the ZERO part of the proposed trademark was simply a label for the characteristics of the drink (e.g., zero calories), making it generic. The USPTO requested that RC “disclaim” that portion of the mark. Essentially, this means that they were required to include a statement (disclaimer) in the trademark registration(s) stating that the company does not claim any exclusive rights to that part of the mark (in this case, the word ZERO).

That same year, Coca-Cola also filed 17 separate trademark applications for products including the word ZERO, including COKE ZERO and other iterations. As it had with RC, the USPTO asked Coca-Cola to disclaim the ZERO in the trademark registration. Coca-Cola wasn’t willing to make that concession, arguing that ZERO was a brand characteristic that consumers saw as distinct to its products. The USPTO agreed and revoked the request for Coca-Cola to disclaim ZERO from its marks.

Perhaps predictably, RC appealed that decision to the Trademark Trial and Appeal Board, arguing that the term ZERO was either: (a) generic, and thus ineligible for trademark registration; or (b) merely descriptive, meaning that Coca-Cola would need to show that the ZERO mark had achieved secondary meaning in the minds of consumers. In other words, Coca-Cola would have to prove that consumers associated ZERO exclusively with Coke in the context of sodas.

The dispute continued for over a decade, eventually culminating in a rather confusing and oft-criticized ruling by the CAFC in June 2018. The full ruling is lengthy and complex. In simple terms, the court ruled that Coke could obtain a trademark registration for COKE ZERO, but it also allowed other groups like Dr. Pepper to register trademarks with the term “zero” in them.

Throwing it back to Professor McCarthy, “The CAFC’s ZERO decision … smudged that crucial line [between generic and descriptive marks] and in doing so, made it easier to put words into the generic name category, free for all to use.”

In other words, the biggest impact of the COKE ZERO ruling is that it broadens the scope of what is considered a generic name. Although the CAFC ordered further proceedings in this matter, it’s entirely possible that the courts may determine that ZERO is simply a generic name for an extremely low-calorie soda. Following this case, any words that describe (but don’t specifically name) the goods may be more likely to be considered generic and therefore ineligible for trademark registration.

Future Implications of the Coke ZERO Ruling

The COKE ZERO ruling changes the legal landscape for those seeking to obtain new trademark registrations. Trademarks that arguably apply to a whole class of products (like low-calorie sodas) will certainly face greater scrutiny for being generic.

Companies that are in the process of registering new trademarks should seek legal counsel to help navigate the generic versus descriptive maze. If you need assistance protecting your product in the market, let’s talk. I can help you with the entire trademark registration process to make sure that your intellectual property stays safe.

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