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Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO (interestingly those applications all being opposed by RC Cola):

“Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.”

Yesterday, the Seventh Circuit Court of Appeals spoke on the subject, affirming the Northern District of Illinois’ grant of summary judgment in favor of Coca-Cola in the trademark infringement suit brought by Baig, reasoning:

“[W]e conclude that Baig has not provided evidence from which a rational jury could determine ‘Naturally Zero’ had established secondary meaning. . . . [It] was a tiny and brief entrant with negligible sales in the bottled-water portion of the beverage industry; its trivial role made it ‘difficult, maybe impossible’ for it to develop secondary meaning in the beverage industry for its mark. Moreover Baig’s narrow advertising efforts — limited to trade publications, which are primarily read by industry insiders, and some pamphlets handed out at gas stations — are also insufficient to show that a substantial segment of consumers associated ‘Naturally Zero’ with a single source. And Baig’s relatively insignificant and intermittent sales from 1998 to 2004 are insufficient for a finding that a substantial number of consumers would consider ‘Naturally Zero’ to be uniquely associated with Baig’s brand.” (case citations omitted).

Given the Court of Appeals’ agreement with Coca-Cola that no trial was necessary to address Baig’s claimed trademark infringement, and given the “tiny,” “brief,” “negligible,” “trivial,” “insignificant,” and “intermittent,” references characterizing Baig’s claimed use of “Naturally Zero,” one has to wonder whether attorney’s fees ought to be awarded Coca-Cola, at least on Baig’s pro se appeal of the case.

The beverage giant must be pleased with the win, but in the end, given all it has been forced to spend on defending this deep-pocket lawsuit, I’m guessing Coke may still be left with a bad aftertaste in its mouth on this one. Recall, the Seventh Circuit has shown a willingness to grant fees in trademark bullying fact patterns, and we know from 3M’s experience that Goliath can be bullied by David too, so relative size isn’t determinative.

In case you’re wondering about the status of the consolidated ZERO trademark oppositions brought by RC Cola (on genericness grounds) that Coca-Cola is currently defending at the TTAB, the parties are waiting for the Board to schedule a date for oral argument — this one might be worth attending, as I’ve written previously:

[I]t remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Stay tuned, hopefully we’ll know before the end of the year exactly where the meaning of ZERO stands.