Preliminary matters: In an initial skirmish, AMBEV tried to keep out Coke's survey evidence, asserting that Coke's expert had been identified only as a rebuttal witness and that his survey testimony went beyond rebuttal because it was not limited to the question posed by AMBEV's expert witness in his survey. The Board overruled the objection, accepting the evidence to the extent that his evidence and testimony "deny, explain or discredit" AMBEV's survey and testimony.
The Board refused to consider the issue of genericness because it was not properly pleaded nor tried by consent. It likewise refused to consider Coke's assertion that ZERO was inherently distinctive or suggestive because Coke had accepted publication under Section 2(f) without preserving these arguments.
Acquired Distinctiveness: Coke enjoyed a presumption that the Examining Attorney had found a prima facie case of acquired distinctiveness. AMDEV had the initial burden to come forward with evidence overcoming that prima facie case. The burden would then be on Coke to present additional evidence and argument to rebut AMDEV's prima facie case. The "ultimate burden of persuasion" is on the Applicant, Coke.
Although descriptiveness was not an issue, it was necessary for the Board to determine the degree of descriptiveness of the word ZERO in order to determine the amount of evidence needed to prove acquired distinctiveness. The more descriptive the term, the more evidence required.
There was no doubt that "zero" is commonly used in the industry "in direct association with nutritional facts or the names of ingredients such as 'calories,' 'carbohydrates,' 'carbs,' or 'sugar' to identify the contents of soft drinks." A number of third-party registrations were submitted for beverage marks that include the disclaimed term ZERO. Coke introduced a number of registrations for beverage marks that include the word ZERO without a disclaimer.
The Board therefore noted that "when ZERO is not used in direct association with beverage ingredients, the treatment of ZERO as merely descriptive is mixed, at best."
The evidence indicates that while ZERO may describe the particular amount of an ingredient or the nutritional content, by itself, ZERO only describes a general absence of some ingredient normally present. Thus, we are convinced that while ZERO merely describes a feature or characteristic of soft drinks, it is not so highly descriptive as to identify a product category.
Turning to the 2(f) proofs, the Board noted that evidence after the filing date of the involved applications will be considered, not just evidence up to the time of filing. "It is well-settled that acquired distinctiveness and buyer recognition are to be tested in an opposition proceeding as of the date the issue is under consideration."
Coke has used the ZERO marks since 2004, but that alone is not necessarily enough to demonstrate acquired distinctiveness. However, Coke has enjoyed substantial success with its ZERO beverages. For instance, its sales of COCA-COLA ZERO for 2005-2006 exceeded $1 billion. Advertising expenditures were more that $150 million from 2004-2007, and for the entire ZERO line they rose to more than $500 million by 2010.
Coke submitted advertising, like that shown above, demonstrating how the ZERO mark is used in a trademark sense. Moreover, the products have been widely discussed in the media.
AMDEV's survey evidence missed the mark because it failed to test whether ZERO is a source indicator. Coke's rebuttal survey validated the significance of the sales and advertising figures. Coke's expert found that 61% of respondents "perceive" that ZERO is associated with only one company (as compared to 6% for the word DIET).
Finally AMDEV pointed to Coke's lack of exclusive use of ZERO for beverages, but the Board observed that exclusive use is not required to establish acquired distinctiveness, just substantially exclusive use. Inconsequential and/or infringing uses do not count. AMDEV did not prove substantial third-party use.
The Board concluded that Coke's use of ZERO has been substantially exclusive and that the term ZERO has acquired secondary meaning. Therefore, it dismissed the opposition.
TTABlog comment: Is PEPSI ZERO confusingly similar to COKE ZERO? What about PEPSI NIL? PEPSI ZILCH? PEPSI BUPKIS?
Text Copyright John L. Welch 2012.
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