United States: Is ‘Zero' Generic Or Descriptive? Coca-Cola Loses Battle On Appeal To Federal Circuit

If you have ever had a Coke Zero, what do you understand ZERO to mean – "zero calories," "zero sugar," "zero carbohydrates" or some combination of each? If your friend who never had a Coke Zero asked you what the difference between it and a regular Coke was, how would you explain it? You might say that it is similar to a Coke, except without the sugar or carbohydrates or calories. Would you even mention the phrase "zero sugar," "zero carbohydrates" or "zero calories?" What is understood by ZERO when used in the context of Coke Zero and other soft drink products with the term ZERO?

That critical word "understand" is part of what the Trademark Trial and Appeal Board will need to consider after the U.S. Court of Appeals for the Federal Circuit's June 2018 decision in Royal Crown Company v. The Coca-Cola Company. In reversing the TTAB, the Federal Circuit ruled that the TTAB applied the wrong test when it decided that ZERO was not generic for soft drinks, sports drinks and energy drinks. Royal Crown Company, the owner of Dr. Pepper, 7UP sodas, RC Cola and Snapple, among others, argued that ZERO was generic or impermissibly descriptive of Coca-Cola's products.

The overarching question the TTAB will need to decide on remand is: What does the relevant public understand ZERO to mean in connection with soft drinks that have few or no calories, carbohydrates or sugar—regardless of whether the public actually uses or says "zero" to describe those drinks?

Procedural History

Coca-Cola filed 17 trademark applications in the mid-2000s for various soft drink and sports drink products with the term ZERO, such as COCA-COLA ZERO and COKE ZERO, SPRITE ZERO, FANTA ZERO and POWERADE ZERO, all of which it had been using in the United States during that same period. The trademark examiner assigned to the applications initially refused to register the marks, asking Coca-Cola to disclaim the term ZERO, because ZERO described an intrinsic feature of the drink, specifically, the number of calories or its carbohydrate or sugar content.

In response, Coca-Cola argued that even if the term ZERO was descriptive, the mark COKE ZERO (and Coca-Cola's other ZERO-based marks) was capable of registration without a disclaimer. According to Coca-Cola, the term ZERO had acquired distinctiveness in the context of Coca-Cola's products, giving the company the exclusive right to ZERO in connection with such beverages.

The Trademark Office agreed with Coca-Cola and published its ZERO-based applications without requiring Coca-Cola to disclaim ZERO.

Royal Crown originally applied for DIET RITE PURE ZERO and PURE ZERO in 2005, claiming first use of those marks in commerce in that same year. The Trademark Office granted registrations for DIET RITE PURE ZERO and PURE ZERO in 2017, but it required Royal Crown to disclaim ZERO. Royal Crown did not object to the disclaimer and includes the disclaimer as part of its registrations.

Royal Crown filed oppositions with the TTAB against Coca-Cola's various ZERO applications between 2007 and 2009, arguing that ZERO was descriptive, if not generic, when applied to beverages with no calories, carbohydrates or sugar. The TTAB disagreed and ruled that ZERO was not generic and, despite finding that ZERO was descriptive, determined that it had acquired distinctiveness, giving Coca-Cola the exclusive right to use and register its ZERO-based marks in connection with beverages. Royal Crown appealed those rulings to the Federal Circuit.

Generic Marks – Legal Background and the Federal Circuit's Ruling

"A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used," according to the Trademark Manual of Examining Procedure. To decide whether a mark is generic, the Trademark Office evaluates the following under the test set forth in H. Marvin Ginn v. International Association of Fire Chiefs: 1) What is the genus of the goods or services at issue; and 2) Does the relevant public understand that the mark refers primarily to that genus of goods or services?

A mark can be generic for a genus of products or services if the relevant public understands that the term refers to a key aspect, quality or characteristic of that genus. Evidence of the public's understanding can come from, among other things, consumer surveys, purchaser testimony, dictionary listings, trade journals and news publications. In an opposition proceeding, the opposer has the burden of proving genericness.

The Federal Circuit ruled that the TTAB failed to consider that ZERO can be generic for a key aspect, or subcategory, of soft drinks, sports drinks or energy drinks, specifically, beverages with few or no calories, carbohydrates or sugar. It doesn't matter if the relevant public uses or says "zero" when referring to such beverages, according the court. The key is whether the relevant public understands the meaning of ZERO when used in combination with the word COKE to refer to drinks that have zero calories, zero carbohydrates or zero sugar. If the public understands that ZERO refers to those kinds of drinks, then ZERO is generic.

On remand, the Federal Circuit instructed the TTAB, in determining the genericness of ZERO, to consider the public's understanding of the term ZERO in the context of soft drinks with zero calories, carbohydrates or sugar, as opposed to soft drinks generally—a test the TTAB incorrectly failed to resolve. If ZERO is deemed generic, then Coca-Cola will need to disclaim its right to use the term ZERO, except as used with COKE ZERO or its other brand-formative ZERO marks.

Descriptive Marks – Legal Background

Descriptive marks, which describe an ingredient, quality, characteristic, function, feature, purpose or use of the applied-for goods or services, are only protectable upon a showing of acquired distinctiveness. Such a showing requires the applicant to prove that the mark has become distinctive through use in commerce.

Case law has distinguished between generic terms and marks that are "so highly descriptive as to be incapable of exclusive appropriation as a trademark." Although the "highly descriptive" designation is not a statutory ground for refusal, the examiner may consider whether a mark is highly descriptive when evaluating whether a mark may be registered based on acquired distinctiveness.

In the opposition proceeding Royal Crown brought against Coca-Cola, Coca-Cola needed to demonstrate that ZERO had acquired distinctiveness in order to obtain a registration without a disclaimer. Coca-Cola's burden of proof increased with the level of descriptiveness deemed by the TTAB; the more descriptive the term, the more evidence of acquired distinctiveness required.

The Federal Circuit's Ruling on the Descriptiveness of ZERO

The Federal Circuit found that the TTAB never made a ruling as to the degree of descriptiveness of ZERO and vacated the TTAB's finding that Coca-Cola had acquired distinctiveness in the term ZERO as a result. On remand, the court instructed the TTAB to make an express finding that ZERO was descriptive and explain how the evidence supports that conclusion. Notably, during the appeal, Coca-Cola conceded that ZERO was at least merely descriptive, meaning that the only issue was whether ZERO had acquired distinctiveness.

To summarize, the TTAB will have to make findings according to the following process:

  1. Is ZERO generic for a "key aspect" of soft drinks or the genus of soft drinks with few or no calories, carbohydrates or sugar? Framed another way, does the public understand ZERO to refer to these types of soft drinks, making ZERO generic? If yes, then COKE ZERO and Coca-Cola's other ZERO-based applications cannot be registered as trademarks without a disclaimer, and there's nothing else for the board to decide.
  2. Is ZERO highly descriptive? If yes, then Coca-Cola's burden to submit evidence of acquired distinctiveness must be "elevated" or "exacting."
  3. Is ZERO merely descriptive? If yes (and the TTAB must answer "yes" because Coca-Cola conceded this on appeal), Coca-Cola has a lesser burden to prove acquired distinctiveness. The TTAB won't even reach this question if it answers "yes" to either of the first two questions.
  4. Has ZERO acquired distinctiveness? If yes, then Coca-Cola's ZERO-based applications can be registered as trademarks without a disclaimer, and Royal Crown loses.

The Federal Circuit's Ruling on the TTAB's Evidentiary Findings

The Federal Circuit determined that the TTAB incorrectly required Royal Crown to provide direct evidence of consumer perception to support its genericness challenge. The TTAB deemed insufficient Royal Crown's evidence that other companies used ZERO combined with their own soft drink names or marks, other registrations and applications of those names or marks, and third-party and even Coca-Cola's descriptive use of "zero" and "0" on packaging and marketing materials. The Federal Circuit disagreed and ruled that such evidence is never categorically insufficient to support a finding of genericness.

The Federal Circuit also found that the TTAB mistakenly favored Coca-Cola's evidence of its billions of dollars of sales of products bearing the term ZERO. Such evidence cannot be considered for generic terms. The TTAB could have allowed the evidence as probative of acquired distinctiveness only if ZERO was deemed non-generic and had gained recognition among consumers. Sales and advertising figures, the Federal Circuit ruled, cannot be used to show whether a mark is used or understood by the public to refer to a genus or subgroup of goods.

Takeaways from the Case

  • Coca-Cola illustrates that generic marks are never registrable. The Federal Circuit clarified the importance of consumers' understanding of a term, not the mere use of a term in everyday language, in evaluating whether a mark is generic. The opposer must identify the particular sub-class of goods or services at issue, as the burden of proving genericness is on the opposer.
  • In opposition disputes involving generic or descriptive marks, the TTAB will consider any competent evidence, such as consumer surveys, purchaser testimony, dictionary listings, trade journals and news publications, to prove genericness or descriptiveness.
  • Examiners can refuse an application based on genericness or if the mark is merely descriptive, but they cannot reject the application solely on the basis that a mark is highly descriptive. On the other hand, if the application is based on acquired distinctiveness, more evidence of distinctiveness is required for highly descriptive marks compared to merely descriptive marks. Examiners can consider whether a mark is highly descriptive when issuing a refusal based on acquired distinctiveness.
  • The TTAB can never consider evidence of acquired distinctiveness for generic marks. Even billions of dollars of sales over a number of years cannot overcome a genericness refusal.
  • Regardless of the outcome on remand, Coca-Cola will still end up with registrations for COKE ZERO and its other ZERO-based applications, but what rights will it have in those marks? It will only retain rights in the distinctive term COKE, as Coca-Cola will need to disclaim ZERO if it loses, similar to Royal Crown and its PURE ZERO and DIET RITE PURE ZERO registrations.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
10 Sep 2019, Speaking Engagement, California, United States

Benchmark Litigation and Managing IP will host their 3rd annual Autolex: Autonomous Vehicle Legal Forum.

17 Sep 2019, Speaking Engagement, California, United States

We are highlighting the importance of having a buttoned-up IP strategy and portfolio in two back-to-back panels. The first panel will be led by Fenwick’s David Hayes, one of the top IP attorneys in the US, along with noted IP strategist Shmuel Silverman of Multi-Innovation.

2 Dec 2019, Speaking Engagement, San Francisco, United States

With the revenue and lease standards in the rear-view mirror but CECL still to be adopted, it is as important as ever to keep up with new and evolving accounting standards and regulations especially given the SEC’s Disclosure Modernization and Simplification initiatives.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions