Want to Sue Coke Zero? Think Again

R. Robin McDonald

Daily Report

When Coke Zero marketers invited Web browsers to "take advantage of our revolutionary Sue-A-Friend Technology and sue the pants off anyone who is copying you," they weren't really soliciting suits against the Coca-Cola Co.

But the diet drink's ad campaign -- featuring Coke managers who want to sue their counterparts at Coke Zero for "taste infringement" -- has taken a sharp turn from camp to the real thing in federal court in Atlanta.

After inviting the public to "sue" Coke Zero -- one billboard directed customers to call 1-877-SUE-ZERO -- the Atlanta soft drink conglomerate has filed suit against an Illinois-based bottled water firm to stop it from, well, from threatening to sue Coke Zero.

Coca-Cola attorneys have petitioned U.S. District Judge Thomas W. Thrash Jr. for a declaratory judgment that the company's use of the word "Zero" for its diet soft drink products has not infringed or misappropriated any intellectual property of the Bluesprings Water Co. and its product, Naturally Zero Canadian Natural Spring Water, or company president, Mirza N. Baig of Chicago.

Baig, according to Coke's suit, is a Pakistani native who has also used the names Nadeem Mirza and Nad Mirza. For nearly four years -- since Coke introduced Diet Sprite Zero in the U.S. in September 2004 -- Baig and Bluesprings have "sporadically threatened" Coca-Cola with legal action springing from Coke's "Zero" products, according to Coke's complaint.

"Over a period of four years, Mr. Baig, his representatives and his attorneys have repeatedly threatened the Coca-Cola Co. with legal action alleging that the use of 'Zero' in our products' names somehow infringes on a different trademark he claims to own for a different product," Coke spokesman Ray Crockett said Wednesday.

"In our view, this harassment was designed to intimidate us to pay him this sum of money for our alleged infringement," he added.

Did Crockett see any irony in Coke suing to stop someone from suing Coke Zero?

"Yeah, well, you've seen the commercials," he said. "They are obviously intended to be humorous."

In TV commercials and YouTube videos, Coke marketers "punked" their own in-house counsel and other lawyers with actors masquerading as real Coke managers who want to sue their Coke Zero counterparts for "taste infringement."

In one video, Michael J. Kline, Coke's senior litigation counsel for intellectual property, asked the "managers" what their "endgame" would be.

"That [the Coke Zero brand managers] were crushed and that their director ... was in the fetal position under the copier, crying. Crying," one actor replied.

King & Spalding attorney Bruce W. Baber, who is representing Coke in the suit against Bluesprings, declined to comment, referring all questions to Crockett.

There is no telephone listing for Bluesprings in Chicago and no Web site for the company. Baig could not be located for comment, and Coke spokesman Crockett said he did not know the names of Baig's attorneys who had corresponded with Coke. Nor are they currently listed in the federal court file.

According to the Coke complaint, the trademark dispute stems from 1997, when Baig filed with the U.S. Patent and Trademark Office an application to register a trademark that included the words "Naturally Zero Canadian Natural Spring Water." Soon after, Baig created and began selling bottled water by the same name.

But the product, which sold primarily in and around Chicago, had total sales of less than $150,000 between 1998 and 2004, according to the Coke complaint.

In 2002, an agent of Bluesprings contacted Coke to propose that Coke distribute Bluesprings' bottled water, Coke said. In January 2003, Baig forwarded publicity materials for his Naturally Zero bottled water to Coke, and subsequently, met with Coke executives in Atlanta, the complaint added.

Coke executives soon informed Bluesprings in writing that the company was not interested in marketing or distributing Naturally Zero, according to the complaint.

Coke "made no use of any materials or information submitted or provided by defendants to [the Coca-Cola Co.]," it said.

In November 2005, more than a year after Sprite Zero began selling in the U.S., the Bluesprings application to register Naturally Zero and accompanying trademark design was abandoned, according to the complaint. Bluesprings has not sold any bottled water bearing the name Naturally Zero for at least three years and has no any intention of resuming use of the name, the complaint alleged.

But since 2004, Baig and his attorneys have periodically contacted Coke by telephone, by e-mail and by letter, asserting claims against the soft drink company associated with Coke's "Zero" products.

Despite intimations that Bluesprings would sue, neither the company nor Baig have ever done so, according to the Coke complaint.

When Coke filed its own trademark application for "Nothing is Lighter than Zero," in September 2005, an attorney for Baig sought and secured a 90-day extension in which to oppose the Coke application, but no opposition was ever filed, the Coke complaint asserted.

Two years later, when Coke sought to trademark Sprite Zero, Baig's attorney again filed for an extension of time in which Baig could oppose the trademark application. Baig failed to meet that deadline as well, according to Coke.

Last March, Baig's attorneys contacted Coke for the sixth time in a formal demand letter. On June 5, Coke received yet another letter from Baig's counsel stating that Baig was "dead serious about filing suit" and promising to forward a copy of the complaint he intended to file if Coke did not meet Baig's demands by June 13. That complaint, according to the Coke pleading, never arrived.

Among the demands Baig sought was a $100 million payment and other unspecified sums of money. Baig has also "made threats to the effect that defendants will seek to intentionally damage [the Coca-Cola Co.] through extensive 'adverse publicity' that defendants will seek to generate in support of their threatened lawsuit," the Coke complaint stated.

As a result of Baig's repeated demands and threats to sue, Coke initiated its own suit, seeking not only a declaratory judgment that it has not infringed Baig or Bluesprings' rights but also a ruling that the development, adoption and use of the trade names Diet Sprite Zero, Coca-Cola Zero, Coke Zero, Sprite Zero, Fanta Zero, Pibb Zero, PowerAde Zero and Vault Zero do not constitute unfair competition with Bluesprings Water.

Coke is also asking that a declaratory judgment find that any rights Baig and Bluesprings may have had to the name Naturally Zero have been abandoned.

Meanwhile, Coke Zero's litigation marketing campaign is still available on www.cokezero.com, where a visitor can click on "Sue-A-Friend" and generate a cease-and-desist letter on the stationery of one of three law firms to put a halt to "taste thievery" or "taste infringement" that includes "use of a signature phrase."

That letter directs the recipient "to CEASE AND DESIST using [the complainant's] signature phrase if you wish to avoid further threatened legal proceedings."

So far, however, none of the firms -- "Covet & Yourminy," "Gehtyn Yohrs & Associates" or "Dewey Hozschyew & Howe" -- have made an appearance in the Atlanta case, The Coca-Cola Co. v. Baig, No. 1:08-cv-2010.