We’ve had a lot of nothing — meaning zero, and the trademark meaning, if any, of zero — on our mind lately, so imagine my surprise to see this soap “brand” for the first time last week in a hotel:

Not sure how to pronounce it, but as we know, there really is no “correct” way to pronounce a trademark, so it could be Zero, or perhaps a telescoped version of Zero Percent, who knows?

What we do know for sure is that neither Zero nor Zero Percent functions as an inherently distinctive trademark to identify, distinguish, and indicate a single source of this body collection:

Why Applicant’s Mark is Deemed Descriptive

“Applicant seeks to register the designation “ZERO%” for bath soaps in liquid solid and gel form; Body lotions; Hair shampoos and conditioners; Shower Gel.” Had applicant not applied under 1(a) and submitted specimens of use consisting of the bottles for shampoo, conditioner, body lotion, shower gel and hair 2 in 1, the mark would likely not have been seen as descriptive.

However the specimen bottles show graphically just what “ZERO%” describes about the applicant’s product. On each bottle is the following legend, explaining the mark:

 “ZERO sulfates

 ZERO parabens

 ZERO phthalates

 ZERO artificial colours

 ZERO animal testing”        

Thus it appears that “ZERO%” refers to the ingredients that are NOT present in applicant’s soaps and hair care and body lotion and shower gel products.  Sulfates and parabens have long been regarded as suspect with respect to human skin. Testing on animals is considered cruel. The ZERO% describes a certain purity in applicant’s products and a certain ethical sensibility about not making money from suffering animals.

In a parallel situation Diet Coke did very well when Coca Cola produced a ZERO caffeine soda, with, of course, zero calories.  Both caffeine and calories are enemies of healthful ingestion.

Applicant is applying the same logic to its toiletries and hair care products. This is to be applauded, however, the mark chosen, “ZERO%,” even without benefit of an explanation on every bottle, would have to have referred to SOMEthing about the goods. “ZERO%” of what? would be the logical question. And there is the answer, front and center, on the bottle.

Another way to look at this is: if using the name of an ingredient of the goods is descriptive use, then surely using a term that indicates the absence of unhealthy or unethical ingredients would also be descriptive.

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).”

This descriptiveness refusal might be the most conversational and empathetic explanation I’ve seen over the course of my trademark career. Nicely done, USPTO Examining Attorney Jill C. Alt.

More than 6 years ago, Applicant Gilchrist & Soames, accepted the Examining Attorney’s invitation to amend to the Supplemental Register, for marks only “capable” of becoming distinctive.

In most cases, the attentive owner of a Supplemental Registration, in use for 5 consecutive years, already would have filed for Principal Registration, arguing in favor of acquired distinctiveness.

Gilchrist & Soames hasn’t (yet), and given what Zero has evolved to mean, will the noted parallel to Coca Cola’s Zero soda, cleanse zero to mean “incapable” of trademark status as a soap type?


In terms of zero sum games, in the trademark world, even if Zero and Zero Percent turn out to be generic, perhaps Gilchrist & Soames gained more in marketing than they would lose in trademark.

As we share another Labor Day together on DuetsBlog, we’re thankful for the emotional labor of those on this journey with us, and we hope you agree this effort is a win-win, no zero sum game.

Taking our discussion about Coke Zero a little further than Monday’s discussion, is it any wonder that “zero” stands for nothing, none, nada, when it comes to calories, given icons like this one:

In other words, it doesn’t and it can’t hold trademark significance for calorie-free, no-calorie, or zero-calorie food products and beverages, and spelling out “0” as ZERO can’t alter the equation:

So, in this context, it is pretty clear from the Nutritional Facts, that ZERO means, not only zero or no sugar, but also, zero or no calories, actually meaning zero and no trademark significance, right?

 

The above advertising billboard is plastered all over the Twin Cities at the moment, and it got me thinking, so here I am, once again, writing about Coke Zero, remember this can?

Coke obtained a favorable decision from the TTAB early last year, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

So, why on earth has Coke positioned SUGAR immediately next to the word ZERO beneath the Coca-Cola script in widespread billboard advertising and packaging?

Putting the key trademark issue aside, it doesn’t even look like there is a good business case for it?

Had the above billboard advertisement and depicted bottle been part of the TTAB case decided last year, instead of specimens like the above can, seems probable we’d have seen a different result.

Has Coke forgotten that like functionality for non-traditional trademarks, genericness can be raised as a validity challenge for word marks, at any time?

Coke Zero, welcome to the Genericide Watch.

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

MYMellowYellowLove the new bold look of the Mello Yello can, and it’s hard to miss the prominent abbreviation to MY, along with the trademark assertion: This is My World.

Actually, as we have written before, there are more than a few operating within the world of MY, and that’s not limited to our writing about pillows and other such talk.

Yet, it looks like Coca-Cola was able to secure the stylized depiction of the MY abbreviation as a trademark for soft drinks, and the federal registration should issue any day now:

MYmelloyelloMy questions: Why no standard character trademark application for just the word MY too, or is Coca-Cola trying to avoid conflict with another MY in their soda space with a different style?

And, for our marketing types: Would you promote MY as an acronym or initialism, if you were Coca-Cola? And, would you eventually shed or diminish the originating words Mello Yello?

Seems to be a mixed message here: Coca-Cola appears to describe its mark as an initialism to the USPTO with “the letters ‘M’ and ‘Y’ in a stacked, stylized form,” but the message to consumers shown above in the billboard ad appears to invite seeing and reading the letters as an acronym and the word MY, meaning “of or belonging to” the speaker or writer.

Marketing has always been an exercise in getting consumers to make a connection with a brand.  As our friend Seth Godin once said “Marketing is no longer about the stuff that you make, but the story that you tell.”   With the widespread use of social media like Twitter, Facebook, and Instagram, those stories are getting more and more personal — and so is the packaging now.

There was the #ShareACoke campaign, with Coke cans with first names or words like “Soulmate” for you to share with a friend, family member, colleague, or stranger.   After launching this campaign, Coca-Cola says that they received about a 2% bump in sales.

Then recently Bud Light introduced cans for each of the NFL teams as part of its #MyTeamCan (a social media hashtag that seems like it could go awry any given Sunday).  Would a Bears, Vikings, or Packers colored can inspire you to buy Bud Light over Miller Light or Coors Light?  Are we going to see fantasy football team inspired packaging?

Another example is Snickers re-packaging as part of its #EatASnickers campaign.  Does anyone else wish that they made a “Hangry” one?

Snickers_Hunger_Bar_Print_Final[1]-1

Contrary to the Coke and Bud examples, Snickers appears to scrub any reference to its registered mark SNICKERS and relies solely on its trade dress — the brown background with the white parallelogram with a red border and blue lettering.  Based on a brief search of the U.S. Trademark Office records, no filing has been made to protect this trade dress, importantly without the SNICKERS name.  Someone please call the logo police.

Two years ago, I wrote about a potential  trend towards de-branding packaging, but we certainly didn’t see the “silent” branding take off.  Perhaps this personalized trend and its accompanying social media is its “loud” branding antithesis.

What do you think about this trend toward personalized products, from either a branding perspective or a supply chain management perspective?  Is personalized branding just a hot trend thanks to the popularity of Instagram and Twitter?  Of the three strategies mentioned in here, which do you think works best (for me its the Coke one)?

Brand signals have been described as meaning vessels before, and vessels of trust too. Does that make a branded product package, container, or configuration a vessel within vessel?

The tin cans below that have been recycled and transformed (as seen in the image I captured at the Minnesota State Fair), were most likely once brand vessels within vessels, but now, there is no trace left to the variety of brands that once adorned these physical vessels:

RecycledTinCans

No one of sane mind would question this vendor’s legal right to strip all brand recognition from these physical vessels and give them new life as creative hanging planters.

And, it also seems unlikely anyone would question Coca-Cola’s legal right to stop a vendor who refills a branded Coke bottle with something other than Coke, passing it off as genuine Coke.

But, the recognition of truth at these two extremes, brings me back to my post that rode the holiday weekend, questioning the level of control a brand owner has in controlling its branded packaging and containers downstream:

FireballCandle

RollingRockNightLight

What do you think, are the branded candles and nightlights closer to the Coke example than the tin can example? I think very much so, notwithstanding the reference on Candles by Brandles website to “recycled bottles.

What do you think, where do you draw the line of where the brand owner loses control, if ever?

Does your answer to the question hinge on the difficulty the brand owner has created in another removing all traces of the brand from the container, i.e., removing a paper label from a tin can, or grinding a glass bottle to remove the Coca-Cola logo?

Actually, the Coca-Cola bottle is a bad example, or perhaps a great example to illustrate another point, the contour of the Coke bottle, is a trademark itself, and it cannot be ground out or removed without destroying the bottle.

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.

Love the recent holiday billboard ad for the beloved Coca-Cola brand!

Having said that, whenever I see branding around the sound Mmm, for food and beverage products, even if it is only one Mmm, and not back-to-back Mmm, Mmms, I’m thinking old school: Campbell’s Soup.

No wonder, Campbell’s M’M! M’M! GOOD! slogan has lasted nearly 80 years, and it likely has inspired many others to perpetuate the Mmm sound in their branding, and even sing about it.

With that memorability, heritage and long-standing success it’s hard to understand how anyone could think differently about the M’M! M’M! GOOD! slogan, oh well.

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

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.

Yet, it 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 . . . .”