The Coca-Cola Co. tried to stake a claim on Zero at the U.S. Court of Appeals for the Federal Circuit on Tuesday, and it may come away with nothing.

Coke and King & Spalding partner Bruce Baber sought to defend its trademark Coke Zero from Royal Crown Cola’s contention that “zero” has become a generic description for zero-calorie beverages, just as “diet” eventually became generic for diet sodas.

Baber argued that “zero” has not suffered genericide the way marks such as “aspirin” and “videotape” did because there’s no evidence consumers are using “zero” to refer to diet soft drinks generally. “Most consumers surveyed associated ‘zero’ with Coca-Cola,” he told the court. Because Coke Zero has acquired distinctiveness, the U.S. Patent and Trademark Office was correct to permit it as a descriptive mark, he said.

But Judges Kathleen O’Malley and Richard Taranto sounded fairly dubious throughout the 40-minute argument.

There is “a line of cases that says when you have a term that people understand to refer to the thing, the first gigantic user can’t monopolize it,” Taranto told Baber.

“There’s no doubt you can get a mark on Coke Zero,” O’Malley said. “The question is whether you can bar others from using the term zero.”

That’s the outcome Royal Crown Cola Inc. is trying to avoid. RC, which is part of No. 3 soft drink company Dr. Pepper Snapple Group Inc., doesn’t want Atlanta, Georgia-based Coca-Cola getting the power to shut down brands such as Diet Rite Pure Zero—even as Coca-Cola reinvents Coke Zero as Coke Zero Sugar.

Fross, Zelnick, Lehrman & Zissu partner Laura Popp-Rosenberg argued for RC that Coke must disclaim “zero” from its trademarks. She said Coke’s own product labels, advertising and press releases have convinced consumers that “zero” means beverages with zero calories. Other companies have introduced 32 other “zero” calorie beverages, and Royal Crown’s Diet Rite Pure Zero sold the equivalent of 1.8 billion 12 ounce cans over five years. “That is not an inconsequential product,” she told the court.

But, Taranto said, “comparative speaking” to Coke Zero sales, “it’s a drop in the bucket, isn’t it?”

Taranto was tougher on Baber. He quickly tried to pin the attorney down on the relevant market of soft drinks, suggesting it should be those with zero calories.

Baber called that a “sort of semantic trick,” and said the PTO’s Trademark Trial and Appeal Board properly defined it as “products having minimal or no calories. It’s low calorie.”

“I don’t think that’s much different,” O’Malley replied, and Taranto agreed.

Baber said trademark enforcement has never been an issue. “Coca-Cola has never attempted to bar anyone from using zero, especially in any descriptive way,” he told the court.

That surprised O’Malley. “Are you saying [Popp-Rosenberg] was wrong when she said there were cease-and-desist letters?” she asked.

“There was one letter that was sent years ago to a product that I don’t believe is sold any more,” Baber admitted. But he said the record is “replete” with many zero marks that Coke has tolerated.

“If you don’t care, then why don’t you just disclaim zero?” O’Malley said.

Baber said Coke had made its case that it’s entitled to the full mark. If the Federal Circuit were to find it generic, then it’s “game over” on the trademark, Baber said. But that would be wrong because there’s no evidence that dictionaries, trade publications or consumers are using “zero” to refer to diet drinks generally.

“I asked witnesses from our side and their side, ‘Have you ever seen any industry publication, even in the soft drink business, that had a category or referred to a group of “zero” drinks?’” he said. “’No, never seen it. They’re just part of diet.’”

 

Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him at sgraham@alm.com. On Twitter: @ScottKGraham