Coca-Cola has Acquired Secondary Meaning in ZERO for Colas
In an opposition proceeding before the TTAB, Royal Crown (RC) and Dr. Pepper/Seven Up sought to prevent registration of seventeen applications filed by Coca-Cola to register marks incorporating the term “ZERO,” including “SPRITE ZERO” and “COKE ZERO.”
Opposers argued that ZERO is a generic term for zero-calorie soft-drinks, sports drinks and energy drinks. In the alternative, they argued that ZERO is a merely descriptive term without secondary meaning, and thus could not be registered without a disclaimer of the applicant’s exclusive right to the term.
In response, Coca-Cola opposed RC’s registration of two marks incorporating the term ZERO on the ground that the marks were likely to cause confusion with Coca-Cola’s family of ZERO marks, and claimed that its own ZERO marks had acquired secondary meaning (i.e. that consumers had come to recognize the mark as an indicator of source).
The Board first had to determine whether the term ZERO was generic in the context of zero-calorie soft-drinks. The Board concluded that the relevant genus at issue was soft drinks, sports drinks and energy drinks. It then concluded that consumers of these goods did not understand the term ZERO to primarily refer to such drinks, despite submitted evidence of the existence of 27 third-party zero-calorie soft drinks, sports drinks and energy drinks with names incorporating ZERO. Thus, the Board held ZERO is not a generic term, but is merely descriptive of zero-calorie soft-drinks.
The burden fell on Coca-Cola to prove that the term ZERO had acquired distinctiveness based on Coca-Cola’s extensive use. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Coca-Cola submitted evidence showing that it had spent over $150,000,000 advertising and promoting its ZERO family of products, had sales well over $1 billion, and had been the beneficiary of unsolicited media coverage of its product. In addition, Coca-Cola submitted an independent consumer survey showing that 61% of respondents associated the term ZERO with one company.
Opposers argued that Coca-Cola could not establish secondary meaning because its use of ZERO had not been substantially exclusive. The Board found that, other than RC’s use of DIET RITE PURE ZERO, the evidence of third-party use of ZERO for soft drinks was inconsequential. The Board ruled the “cumulative effect” of Coca-Cola’s use of ZERO for soft drinks was so extensive that it qualified as “substantially exclusive.” In light of Coca-Cola’s evidence of use, the Board concluded that Coca-Cola had acquired distinctiveness in the term ZERO when used as part of a mark for soft drinks, but not for energy drinks.
Finally, the Board considered whether RC’s marks using the term ZERO were likely to cause confusion as to the source of products bearing those marks. The Board found that the only mark in the Coca-Cola ZERO family that Coca-Cola used before RC’s filing dates for its own ZERO marks was SPRITE ZERO. As a result, Coca-Cola “had not established a family of marks indicating a single source of ZERO-formative soft drinks in the minds of the consuming public” at the time of RC’s filings. Thus, Coca-Cola failed to establish priority over RC in its likelihood of confusion claim, and therefore, could not prevail in its oppositions.
Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. v. The Coca-Cola Company, Opposition No. 91184434 (TTAB May 23, 2016) [Non-Precedential].
Tweets Don’t Fly as Independent Services
Florists’ Transworld Delivery’s (FTD) intent-to-use application to register the mark SAY IT YOUR WAY was refused on the ground that FTD failed to show the applied-for mark was used in connection with the identified services. FTD used the mark on Twitter to promote and advertise its flowers. FTD identified its services as “creating an online community for registered users to participate in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products and gifts.”
The Examining Attorney found that FTD was merely using Twitter to promote its retail services and had not independently created an online community. On that basis, the Examining Attorney concluded that the mark is not used in connection with the identified services.
On appeal to the TTAB, the Board agreed with the Examining Attorney, finding FTD did not create a platform “by which followers can create a profile, establish a homepage, and attract further followers.” Rather, the platform for the online community was created by Twitter, and FTD was merely utilizing that platform to promote its marks and services. The Board affirmed the refusal of the application for failure to show use of the mark in connection with the online social media services listed in FTD’s application.
In re Florists’ Transworld Delivery, Inc., Serial No. 85164876 (TTAB, May 11, 2016) [precedential].
THE BLOB Registration Sinks HOUSEBOAT BLOB
Fat Boys Water Sports LLC applied for registration of the mark HOUSEBOAT BLOB for an inflatable floating mattress for recreational use where the “user may be launched into the air and onto a body of water.” Although the applicant disclaimed the right to use BLOB apart from their mark, registration was refused on the bases the mark is merely descriptive and confusingly similar to three earlier registered marks—most importantly, a registration for THE BLOB. THE BLOB registration covers “giant, inflatable, floating air bags, constructed of PVC for use by commercial, institutional, for-profit and not-for-profit youth camps, church camps and other outdoor recreation business as a component of their aquatic recreational facilities.”
On appeal to the TTAB, the Board first considered the refusal on the ground that Applicant’s HOUSEBOAT BLOB mark was merely descriptive of the identified goods. With respect to “BLOB,” The Examining Attorney submitted various sources of evidence showing the term was used to describe aquatic equipment used in camping activities. In addition, Applicant had disclaimed the word “BLOB” on the ground that it was merely descriptive. Applicant had also claimed that the word HOUSEBOAT provided “no specific information about the nature of the goods.” The Board rejected this claim in view of the fact that Applicant’s own marketing materials identified the product as designed for use in houseboats. Thus, when considering the mark as a whole, the Board found it to be merely descriptive because the mark immediately identifies the purpose and nature of the goods—a blob designed for houseboats.
The Board next considered the refusal that Applicant’s mark was confusingly similar to any of the three cited registered trademarks, all of which were owned by the same registrant. The Board confined its analysis to the likelihood of confusion with the cited mark THE BLOB because that registration covered goods most similar to Applicant’s goods. The Board concluded the two marks were similar in both appearance and sound. The Board disagreed with Applicant’s argument that THE BLOB is a double-entendre which consumers will associate with the classic movie rather than an inflatable launching pad. The Board found no evidence of such double-entendre. Finally, the Board found the presence of “THE” in the registered mark did not meaningfully distinguish the two marks.
The description of the goods in the cited THE BLOB registration was relatively narrow; it included the specific types of uses and the material from which the goods were made. Nevertheless, the Board concluded that the goods were almost identical to Applicant’s goods. Both were flotation devices designed to launch individuals into bodies of water. Finally, the Board found the trade channels were legally identical—both goods are “offered to the same classes of customers.”
The Board affirmed the refusal to register the mark HOUSEBOAT BLOB on the ground that it was merely descriptive, and on the ground that it was confusingly similar to the prior registered mark THE BLOB.
In re Fat Boys Water Sports LLC, Serial No. 86490930 (TTAB, April 27, 2016) [precedential].
