Docket No. 2016-2375
NEWMAN, O’MALLEY, TARANTO
June 20, 2018
Brief Summary: FC panel concluded “the Board applied the incorrect legal standard in assessing whether TCCC’s ZERO marks are generic”, and vacated and remanded the dismissal of RCC’s oppositions.
Summary: RCC appealed TTAB (“Board”) decision dismissing its opposition to registration of The Coca-Cola Company’s (“TCCC’s”) trademarks including the term ZERO for various soft and sports drinks (used as an element of at least 12 different beverages sold in the US, e.g., SPRITE ZERO). The FC panel opinion explains that “[m]any other soft drink companies have applied to register ZERO-inclusive marks for various types of soft drinks”, including RCC which “disclaimed the term ZERO apart from the marks as a whole.” TCCC responded to an office action “requesting that TCCC disclaim the term ‘zero’ because…the term merely ‘describes a feature of the applicant’s goods’”. TCCC argued that “each of its marks using the term ZERO had acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), as part of a ‘family of ZERO marks,’ and refused to disclaim ZERO.” The PTO accepted TCCC’s arguments. RCC opposed the marks, arguing that “the term ZERO was merely descriptive” and “generic”, and therefore “cannot indicate the source of the goods.” The Board concluded that RCC failed to demonstrate genericness and “that TCCC had established, by a preponderance of the evidence, that is had acquired for soft drinks and sports drinks, but not energy drinks. The FC panel reviewed whether the Board applied the correct legal standard to the facts de novo (Princeton Vanguard, FC 2015; Hewlett-Packard, FC 2002) and its factual findings (“[w]hether an asserted mark is generic or descriptive”) for substantial evidence (Princeton Vanguard; Consol. Edison, US 1938). The FC panel concluded that “the Board erred in its legal framing and “should have first assessed the level of the mark’s descriptiveness” (i.e., generic, “whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question” (H. Marvin Ginn, FC 1986; In re Merrill Lynch, FC 1987; In re Cordua, FC 2016 (“if the relevant public…understands the term to refer to a key aspect of that genus” even without “understand[ing] the term to refer to the broad genus as a whole”)) “before determining whether TCCC satisfied its burden of establishing acquired distinctiveness” (In re Northland, FC 1985). The FC panel explained that the Board should have “consider[ed] whether the relevant consuming public would consider the term ZERO to be generic for…the subcategory…of drinks with few or no calories”. Since the Board did not do so, the FC panel wrote that “it is not possible for us to review on appeal whether the evidentiary record can support the Board’s finding of acquired distinctiveness” (“the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness” (Steelbuilding.com, FC 2005)). The FC panel also concluded that the Board did not consider all of the evidence properly (e.g., “[s]ales and advertising figures do not…demonstrate that a term is not” generic, questioned the value of TCCC’s expert survey of the public).