The US Court of Appeals for the Federal Circuit yesterday revived a trademark clash between Dr Pepper Snapple Group and Coca-Cola over the term ‘Zero’

The US Court of Appeals for the Federal Circuit yesterday revived a trademark clash between Dr Pepper Snapple Group and Coca-Cola over the term ‘Zero’.

Overturning a May 2016 decision by the Trademark Trial and Appeal Board (TTAB), the Federal Circuit remanded the case for further proceedings.

Coca-Cola first tried to register a trademark for ‘Zero’ in 2003 covering its zero-calorie drinks, including Coke Zero.

In total, Dr Pepper opposed 17 trademarks including ‘Cherry Coke Zero’ and ‘Vanilla Coke Zero’, claiming that the term ‘Zero’ was generic when applied to certain drinks and therefore couldn’t indicate the source of the goods.

Many companies sell drinks featuring the word ‘zero’ to describe an absence of calories or carbohydrates.

The US Patent and Trademark Office responded to each of Coca-Cola’s applications by requesting that the brand disclaim the term ‘Zero’ because the term “describes a feature of the applicant’s goods, namely, calorie or carbohydrate content of the goods”.

In response, Coca-Cola claimed that the mark had become distinctive and refused to disclaim ‘Zero’.

Then, in 2016, the TTAB said Coca-Cola’s use of the term had acquired distinctiveness in connection with soft drinks and could be registered as a trademark, while noting that the brand didn’t have exclusive rights to the term ‘Zero’.

The TTAB also said that Dr Pepper could trademark ‘Diet Rite Pure Zero’ because it was a full brand name, and not just the term ‘Zero’.

In the 3-0 precedential decision on Wednesday, the Federal Court concluded that the TTAB had erred in its “legal framing of the question of the claimed genericness” of Coca-Cola’s trademarks in the dispute.

Circuit Judge Kathleen O’Malley, on behalf of the court, concluded that the board had failed to consider whether the consuming public would believe the term ‘Zero’ to be generic for drinks with few or no calories or few or no carbohydrates.

The Federal Circuit ordered the TTAB to examine whether ‘Zero’ is generic because it “refers to a key aspect of at least a sub-group or type of the claimed beverage goods”.

O’Malley also said that Coca-Cola had failed to show that Dr Pepper’s “numerous sources of evidence” were “categorically insufficient to support a finding of genericness”.

The case has been vacated and remanded.