Coca-Cola is widely known as the single most recognized trademark in the world. Neither Pepsi, Ford, nor even the golden arches of McDonald’s have been able to unseat the cursive script of the bright red and silver hallmark Coca-Cola soda can when it comes to international recognition. So then, why would the soft drink behemoth be so interested in trying to obtain a word mark registration as simple as the word “zero”?
The fight for the right to use “zero” began in 2005, when Coca-Cola filed a trademark registration with the PTO for “Coca-Cola Zero.” The registration application prompted a challenge from Dr Pepper Snapple Group in 2007 which argued that the word “zero” is generic and should not be registered because it is nothing more than a shortened way of saying “zero calories.”
Now, after nearly 13 years of battling with Dr Pepper, Coca-Cola may finally have its answer if, as expected, the U.S. Patent and Trademark Office (the “PTO”) issues a ruling later this summer. The dispute will be decided by the PTO’s Trademark Trial and Appeals Board (or “TTAB”) and will determine whether or not Coca-Cola can register the exclusive rights to the “zero” label for their products.
In its opposition briefs, Dr Pepper listed 32 “zero” beverage brands not owned by Coke, including Monster Energy Zero Ultra, Virgil’s Zero and Arnold Palmer Zero. Essentially, the argument is based on what is known as ‘genericism.’ Generic terms are common words or terms, often found in the dictionary, that identify products and services and are not specific to any particular source.
Generally speaking, it is not possible to register as a trademark a term that is generic for the goods and/or services identified in the application unless the term has achieved “secondary meaning” in the minds of consumers. In fact, if an established (or even registered) trademark becomes generic, often as a result of improper use, rights in the mark may no longer be enforceable.
Coke countered Dr Pepper’s arguments by claiming that “zero” is “exclusively associated” with its products in the minds of consumers because of “extensive advertising, promotion and sales.” (It’s important to remember that trademark laws are intended primarily to provide protection for consumers so that they can rely on trademarks as a “source identifier”.)
Should Coke win the TTAB proceeding, the company could sue others who might use the word in their own mark and who have infringed on their exclusive usage of the word, which is featured in the Coke Zero line of soft drinks. But, if Coke loses, it opens the door for competitors to use the word, such as Dr Pepper and its Diet Rite Pure Zero.
Why It Matters. From the date a trademark is registered with the PTO, the owner has exclusive rights of exploitation. A trademark can be registered for 10 years and protection can be renewed indefinitely. During this time the owner can use, sell, license or merchandise the trademark, and of course prevent its unauthorized use. Thus, Coke could enforce its mark against Dr Pepper and others and prevent them from offering their own “zero” beverages.
