{"id":338,"date":"2018-06-20T11:14:43","date_gmt":"2018-06-20T15:14:43","guid":{"rendered":"https:\/\/trademarks.harnessip.com\/?p=338"},"modified":"2018-07-01T11:53:13","modified_gmt":"2018-07-01T15:53:13","slug":"ttab-scores-a-0-in-evaluating-genericness-and-acquired-distinctiveness","status":"publish","type":"post","link":"https:\/\/trademarks.harnessip.com\/?p=338","title":{"rendered":"TTAB Scores a 0 in Evaluating Genericness and Acquired Distinctiveness"},"content":{"rendered":"

In Royal Crown Company, Inc. v. The Coca-Cola Company<\/a>, [2016-2375] (June 20, 2018), the Federal Circuit vacated the TTAB’s\u00a0 dismissal of\u00a0Royal Crown\u2019s opposition to Coca-Cola’s registration of various ZERO marks for\u00a0soft drinks and sports drinks including the term ZERO.<\/p>\n

Noting that Royal Crown did not offer\u00a0direct consumer evidence (surveys or testimony), nor did it offer dictionary evidence linking ZERO to soft drinks, offering only indirect evidence of competitor\u00a0use of ZERO, the Board concluded\u00a0that Royal Crown had failed to demonstrate that\u00a0ZERO is generic for the genus of goods.\u00a0 On the issue of descriptiveness, the Board found the evidence, including a five year old survey, indicated that ZERO had acquired distinctiveness.<\/p>\n

On appeal, the Federal Circuit concluded that the Board\u00a0erred in its legal framing of
\nthe genericness inquiry in two ways\u2014it failed to examine\u00a0whether ZERO identified a key aspect of the genus at\u00a0issue, and it failed to examine how the relevant public\u00a0 understood the brand name at issue when used with the\u00a0descriptive term ZERO.\u00a0 The Federal Circuit further found that\u00a0that the Board\u00a0should have first assessed the level of the marks\u2019 descriptiveness\u00a0before determining whether Coca-Cola had shown acquired distinctiveness, because absent\u00a0such a finding, it would not be possible to review whether the evidentiary record can support a\u00a0finding of acquired distinctiveness.<\/p>\n

On genericness the Federal Circuit said the critical issue was whether members of the relevant\u00a0public primarily use or understand the term sought to be\u00a0protected to refer to the genus of goods or services in\u00a0question.\u00a0 The Federal Circuit said that evidence of the public\u2019s understanding of the term\u00a0may be obtained from any competent source, such as\u00a0purchaser testimony, consumer surveys, listings in dictionaries,\u00a0trade journals, newspapers and other publications.\u00a0 The Federal Circuit found the Board’s approach erroneous, asking\u00a0the wrong question in assessing the alleged genericness
\nof ZERO. The Federal Circuit said the Board’s approach failed to\u00a0consider that a term can be generic for a genus of goods\u00a0or services if the relevant public understands the term\u00a0to refer to a key aspect<\/em> of that genus.\u00a0 The test is not just whether the relevant public would use the term to describe the genus, but also whether the relevant public would understand the term to be generic.\u00a0 A term is\u00a0generic if the relevant public understands the term to\u00a0refer to part of the claimed genus of goods or services, even
\nif the public does not understand the term to refer to the\u00a0broad genus as a whole.<\/p>\n

The Federal Circuit found that the Board failed to consider whether the relevant
\nconsuming public would consider the term ZERO to\u00a0be generic for a subcategory of the claimed genus of\u00a0beverages i.e., the subcategory of the claimed beverages\u00a0 encompassing the specialty beverage categories of drinks\u00a0with few or no calories or few or no carbohydrates. The Federal Circuit remanded so that the Board could examine whether\u00a0the term ZERO, when appended to a beverage mark,\u00a0refers to a key aspect of the genus. The Court said ZERO need not be\u00a0equated by the general public with the entire broad genus\u00a0in order for the term to be generic.<\/p>\n

On acquired distinctiveness, the Federal Circuit said that Board erred by failing to first determine exactly what Coca-Cola’s burden was.\u00a0 An applicant\u2019s burden of\u00a0showing acquired distinctiveness increases with the level\u00a0of descriptiveness: a more descriptive term requires more\u00a0evidence of secondary meaning.\u00a0 However the Board\u00a0did not make any finding as to the\u00a0degree of descriptiveness conveyed by the term ZERO in\u00a0the marks and, thus did not\u00a0assess Coca-Cola’s evidence through an exacting lens.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Royal Crown Company, Inc. v. The Coca-Cola Company, [2016-2375] (June 20, 2018), the Federal Circuit vacated the TTAB’s\u00a0 dismissal of\u00a0Royal Crown\u2019s opposition to Coca-Cola’s registration of various ZERO marks for\u00a0soft drinks and sports drinks including the term ZERO. Noting … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-338","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"_links":{"self":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/338","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=338"}],"version-history":[{"count":1,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/338\/revisions"}],"predecessor-version":[{"id":339,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/338\/revisions\/339"}],"wp:attachment":[{"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=338"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=338"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/trademarks.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=338"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}