Decisions Calorie Free "Zero" Trademark Decision Results in Answers and Questions

  1. The Trademark Trial and Appeal Board (TTAB) ruled that while it would register trademarks for Coca-Cola Co., the company would not have the exclusive right to use the term "zero" to represent zero calorie soft drinks. While a trademark would be granted for registration of a soft drink such as "Coke Zero", it would not result in the preclusion of the registration of "Diet Rite Pure Zero". The Board found that the use of the word "zero" in such a fashion would not result in a likelihood of consumer confusion in the marketplace as to the origin and manufacturer of each respective beverage.

    Zero Calorie Soft Drink Trademark History


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    Since 2003, Coca-Cola Co. invested a tremendous amount of money to make an impact on consumers when they hear the word "zero." They wanted the zero calorie description to leave, etched in memory, an attachment to its soft drinks and sports drinks "Coca-Cola Zero", "Sprite Zero" and "Powerade Zero." Around the same time that Coca-Cola Zero was introduced, the Dr Pepper Snapple Group marketed their Diet Rite brand with the term "Pure Zero", associated with its calorie free soft drink offerings. Would the average consumer confuse the Diet Rite Pure Zero brand's zero calorie soft drinks as being a product of Coca-Cola when it is not?

    Trademark Law Basics


    According to the US Patent and Trademark Office (USPTO), trademark infringement is "the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services." When it comes to the use of unique or fanciful words such as "Exxon" or "Kodak", the issue of whether confusion likely exists is easy to resolve. This is because such words don't exist on their own and result from the creation of a unique combination of letters. The newly created word has only one definition - Exxon refers to the oil company using said name.

    But when common English words are used, it becomes more difficult to distinguish whether a trademark should be issued. "Apple" is an English word and can be used to describe a fruit that comes in different varieties or food products. But has no association with commercial goods such as shoes, clothing - or a computer manufacturer and software developer. Apple Computers has a separate meaning from just the word "apple." But in this Coke Zero case, how far away is the use of the word "zero" from it's plain English meaning when used in the context of a soft drink?

    The Coke Zero Trademark Decision


    Dr Pepper Snapple Group argued that the use of the term "zero" is generic and generally used to describe calorie free soft drinks. If a trademark was granted for Coke Zero, then it would make any soft drink using the plain English word "zero" in danger of being infringing of Coca-Cola's trademark. Other soft drink manufacturers might actually be precluded from using the word "zero" prominently in describing its zero calorie soft drink.

    The Board's split ruling was limited to determining the specific facts of this case. It ruled in favor of Coca-Cola that Dr Pepper Snapple Group couldn't prove that the word "zero" is used commonly in the marketplace and is "generic" for calorie free. It noted that the Zero brand had “acquired distinctiveness’’ and qualified as “substantially exclusive" as its usage along wasn't very common.

    But it also ruled for Dr Pepper Snapple Group that the use of the word "zero" was part of a longer series of words - the Diet Rite Pure Zero brand. And the series of words together made that brand "distinctive" and not likely to be confused with another company's attempt to associate a single word "zero" with just one company in the marketplace. As such, Dr Pepper Snapple Group could register the "Diet Rite Pure Zero" brand as a trademark as well.

    Impact of Trademark Decisions


    Trademark decisions can be most impacting on business and entrepreneurs in the same way as patent applications which are granted. When an entity acquires an intellectual property right there is an assumption that their brand, trade name or invention is granted legal protection over second comers. As a result, a new company name, brand or invention that is within even a whiff of an existing trademark or patent owner can easily invite an infringement lawsuit. Even though a trademark or patent owner knows that their lawsuit is of questionable merit, it is enough to scare away and chill businesses from entering the marketplace.

    An example of a broad trademark might include the word "fritos" which means "fried" in Spanish. Some might argue this common word could and should see general usage within the food marketplace. A trademark was granted to Frito-Lay North America Inc. for the word "fritos" as applicable to "CANNED FOODS-NAMELY, CHILI CONTAINING MEAT, TAMALES CONTAINING MEAT, MEAT, MEAT SAUCES AND FOR CONFECTIONS AND SNACK ITEMS-NAMELY, WAFERS, CORN CHIPS, CAKES, POTATO CHIPS, CANDY, AND SHELLED PEANUTS." As a result, the use of the word "fritos" regarding any food product included within the above description could infringe upon the trademark granted by the USPTO to Frito-Lay.

    While you may question whether this is a good result, the word "fritos" is trademarked. Unless a great deal of money is spent to challenge an intellectual property right such as a trademark or patent, it will stand. For this reason, trademark decisions about uses of generic words like "zero" for "Coke Zero", "Diet Rite Pure Zero" and other zero calorie and calorie free soft drinks becomes extremely important. While this particular case is decided, it leaves open the question of newcomers to the marketplace who use the word "zero" to describe their calorie free beverages. They should likely expect that clarification would require a future hearing on each individual matter.
    Legal Practice:
    IP - Trademark Application
    Jurisdiction:
    • US Federal
    Court of Law:
    Other Court

    Article Tags

    Michael M. Wechsler

    Michael M. Wechsler
    Michael M. Wechsler is an experienced attorney, founder of TheLaw.com and of-counsel to Kaplan, Williams & Graffeo, LLC. He was also an SVP and chief Internet strategist at Zedge.net and legal consultant at Kroll Ontrack, a leading service e-discovery and computer forensics service provider.

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