ROYAL CROWN COMPANY, INC., DR PEPPER/SEVEN UP, INC., Appellants
THE COCA-COLA COMPANY, Appellee
from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in Nos. 91178927, 91180771, 91180772,
91183482, 91185755, 91186579, 91190658.
Popp-Rosenberg, Fross, Zelnick, Lehrman & Zissu, PC, New
York, NY, argued for appellants. Also represented by Barbara
Solomon, Emily Sarah Weiss.
William Baber, King & Spalding LLP, Atlanta, GA, argued
for appellee. Also represented by Daryl Joseffer, Paul
Alessio Mezzina, Washington, DC.
Newman, O'Malley, and Taranto, Circuit Judges.
O'Malley, Circuit Judge.
Crown Company, Inc. and Dr Pepper/Seven Up, Inc. (together,
"Royal Crown") appeal a decision of the Trademark
Trial and Appeal Board ("the Board") dismissing
Royal Crown's opposition to the registration of The Coca
Cola Company's ("TCCC") trademarks for various
soft drinks and sports drinks including the term ZERO.
Royal Crown Co. v. Coca-Cola Co. (TTAB
Decision), Opposition No. 91178927 (Parent Case), 2016
TTAB LEXIS 234 (T.T.A.B. May 23, 2016). Because we
conclude that the Board erred in its legal framing of the
question of the claimed genericness of TCCC'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.
Royal Crown appellants are members of the Dr Pepper Snapple
Group ("DPSG"). DPSG and TCCC compete in the
beverage market by manufacturing and distributing various
brands of beverages, including sparkling beverages, juices,
juice drinks, and ready-to-drink teas, among others. Both
companies manufacture and distribute beverages that use ZERO
as an element of their marks. Multiple companies market
beverages bearing ZERO as part of the brand name, including
Royal Crown and TCCC. Royal Crown sought trademark protection
for two marks that include the term ZERO: DIET RITE PURE ZERO
and PURE ZERO. Royal Crown disclaimed the term ZERO apart
from the marks as a whole. TCCC has used ZERO as an element
in its marks for at least twelve different beverage products
sold in the United States, including various versions of
COCA-COLA ZERO and COKE ZERO, SPRITE ZERO, FANTA ZERO, PIBB
ZERO, VAULT ZERO, POWERADE ZERO, and FULL THROTTLE ZERO. Many
other soft drink companies have applied to register
ZERO-inclusive marks for various types of soft drinks.
filed seventeen trademark applications for marks including
the term ZERO with the Patent and Trademark Office
("PTO"). In response to each of these applications,
the PTO issued an office action requesting that TCCC disclaim
the term "zero" because, in the examiner's
view, the term merely "describes a feature of the
applicant's goods, namely, calorie or carbohydrate
content of the goods." See, e.g., J.A. 1049-51
(Office Action for Application Serial No. 78580598 for
COCA-COLA ZERO). TCCC responded by claiming 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. Section 2(f) permits registration of
descriptive marks if the applicant proves that the mark
"has become distinctive of the applicant's goods in
commerce." Id. The PTO accepted TCCC's
Section 2(f) submissions and approved the marks for
publication without requiring disclaimer of ZERO.
Crown filed oppositions to these marks between August 2007
and June 2009, arguing that: (1) the term ZERO was merely
descriptive of attributes of the associated products and
could not indicate the source of TCCC's goods, and (2)
the term ZERO is generic when applied to certain beverage
products and therefore cannot indicate the source of the
goods. The Board sustained in part and dismissed in part
Royal Crown's consolidated oppositions. TTAB
Decision, 2016 TTAB LEXIS 234, at *1. Relevant to this
appeal, the Board first examined Royal Crown's contention
that ZERO is generic and that the Board should require TCCC
to disclaim the term before permitting registration of these
of its inquiry, the Board found that the proper genus of the
goods is "the broad category of soft drinks (and sports
and energy drinks), which encompasses the narrower category
of soft drinks (and sports and energy drinks) containing
minimal or no calories." Id. at *20. The Board
then considered whether ZERO is understood by the relevant
public primarily to refer to soft drinks, energy drinks, or
sports drinks, particularly those drinks with zero or near
zero calories. The Board found that, as there are no
restrictions or limitations to channels of trade or classes
of consumers, the relevant consuming public is "ordinary
consumers who purchase and drink soft drinks, energy drinks,
or sports drinks." Id. at *22. Finally, the
Board noted that Royal Crown did not offer direct consumer
evidence (surveys or testimony), nor did it offer dictionary
evidence linking ZERO to soft drinks. Instead, Royal Crown
offered indirect evidence of competitor use of ZERO,
competitor trademark applications and registrations, consumer
use of ZERO, and TCCC's own use of ZERO. Based on these
findings, the Board concluded that Royal Crown had failed to
demonstrate that ZERO is generic for the genus of goods TCCC
identified in its applications. Id. at *39.
Board then assessed TCCC's claim of acquired
distinctiveness in its ZERO marks. Notably, while the Board
appeared to accept TCCC's concession that its use of ZERO
rendered its mark descriptive, the Board did not assess
whether the term was highly descriptive, rather than merely
descriptive. TCCC offered evidence of its sales and
advertising for ZERO products and what it described as
unsolicited media coverage of its ZERO products. TCCC also
submitted the deposition of Dr. Alex Simonson, who conducted
a consumer survey in 2008 asking respondents if they
"associated" the mark ZERO with one or more
particular companies. The Board explained that Dr.
Simonson's survey found that 61% of respondents
associated the term ZERO with one company, but only 6% of
respondents associated the control term DIET with one
company. And, a majority of respondents (52%) mentioned COKE,
COCA-COLA, or SPRITE when asked with which company's
products they "associated" the term ZERO. Although
it noted that the weight of the survey was somewhat
diminished because approximately five years had passed
between when the survey was conducted and the close of
testimony in this proceeding, the Board concluded that the
survey evidence supported TCCC's sales and advertising
evidence and indicated that TCCC's ZERO marks had
acquired distinctiveness. Id. at *45-46. The Board
also found that TCCC's 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 TCCC's
use." Id. at *46-48.
on this evidence, the Board found that TCCC had established,
by a preponderance of the evidence, that it has acquired
distinctiveness in the term ZERO when used as part of a mark
for soft drinks. Id. at *48. Although nearly all
of the evidence on acquired distinctive-ness addressed soft
drinks, the Board concluded that evidence filed under seal
showing sales and marketing expenditures for POWERADE ZERO
was sufficient to justify finding acquired distinctiveness as
to the term ZERO for TCCC's sports drinks as well.
Id. The Board dismissed Royal Crown's
oppositions to the applications for registration of the TCCC
marks for soft drinks and sports drinks without disclaimer of
Crown appeals the Board's determinations on genericness
and acquired distinctiveness. We have jurisdiction over this
appeal under Section 21(a)(1) of the Lanham Act, 15 U.S.C.
§ 1071(a)(1), and 28 U.S.C. § 1295(a)(4)(B).
the Board applied the correct legal standard to the facts is
a question of law. Princeton Vanguard, LLC v.
Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed. Cir.
2015) (citing In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 1345 (Fed. Cir. 2001)). We review the
Board's legal determinations de novo and without
deference. Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).
an asserted mark is generic or descriptive is a question of
fact. Princeton Vanguard, 786 F.3d at 964 (citing
In re Hotels.com, LP, 573 F.3d 1300, 1301 (Fed. Cir.
2009)); In re Bayer Aktiengesellschaft, 488 F.3d
960, 964 (Fed. Cir. 2007). "On appellate review of the
Board's factual finding of genericness, we determine
whether, on the entirety of the record, there was substantial
evidence to support the determination."
Hotels.com, 573 F.3d at 1302.
review the Board's factual findings for substantial
evidence, which requires "such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion." Consol. Edison Co. of N.Y. v.
N.L.R.B, 305 U.S. 197, 229 (1938). The Board's
analysis must ...