Coca-Cola versus Dr. Pepper: Cola War Over “Zero” Trademark

By: Amanda Whorton* | Guest Writer 

Photo by woolenniumAfter over a decade of litigation, Coca-Cola has had “zero” luck gaining a trademark for the term “zero” in connection with its beverage brands.  In 2005, Coke filed a U.S. trademark registration for the mark “zero” in connection with their popular “Coca-Cola Zero” soda brand, which Dr. Pepper challenged in 2007.  Arguments ended in December 2015 and a ruling from the U.S. Patent and Trademark Office may come as soon as this spring.

Trademark law prevents third parties from copying a mark that identifies the source of a product.  Trademarks that quickly and accurately identify the source of products protect consumers by limiting confusion between brands and protect companies by ensuring that others can’t improperly benefit from a brand’s hard-earned reputation and goodwill.  The Lanham Act, which covers federal trademark law, allows for federal registration of marks used in commerce that communicate the source of the applicant’s goods.  Arbitrary or fanciful marks, like “Kodak,” can be immediately registered with the trademark office, as can marks that are merely suggestive of their source.  Descriptive marks, however, cannot be registered unless they have acquired secondary meaning such that consumers associate the descriptive mark exclusively with the applicant’s products or services.  A mark is descriptive if it “describes an ingredient, quality, characteristic . . . or use of the specified goods or services.”  For example, the word “diet” could fall into the descriptive mark category because it is an adjective that describes a lower-calorie drink.  Finally, generic terms, terms that are the common name for a class of goods, can never be registered as trademarks as a matter of law.  This designation depends entirely upon the product in question.  The mark “Apple” would be a generic term for a brand of apples but is arbitrary when referring to a brand of computers.

Coke has argued that because of their extensive advertising campaigns, consumers exclusively associate “zero” with Coke products.  Though the term may be descriptive, this acquired secondary meaning would allow them to properly register the mark.  Dr. Pepper countered that if Coke is granted the registration, it will be given a monopoly over a “common English word in its common English meaning.”  The term “zero,” according to Dr. Pepper, is just shorthand for indicating that a beverage contains zero calories.  As evidence, Dr. Pepper points to 32 other beverage brands that use the word “zero” to indicate the lack of calories.  This extensive third-party use will be extremely problematic for Coke, since it blurs the connection consumers have between the “zero” mark and the Coke brand.

In a clever bit of lawyering, Coke argued to the Canadian Intellectual Property Office earlier this year that the term “zero” alone is not descriptive since it doesn’t tell the consumer what there is zero of.  “Zero” could refer to zero calories, zero sugar, zero caffeine, or zero of any number of qualities.  The Canadian Intellectual Property Office rejected Coke’s argument and its application on the grounds that “zero” simply indicated the lack of calories in the drink, suggesting that the Office found the mark to be merely descriptive.  Coke’s argument will likely get no traction in the USPTO either.  Whether Coca-Cola prevails will likely come down to whether or not the USPTO decides that “zero” has acquired secondary meaning as a source identifier for Coca-Cola, a link they have tried to demonstrate through consumer surveys and expert testimony.

Coca-Cola has one of the most recognizable trademarks in the world.  Gaining the “zero” trademark would further distinguish its “Zero” brand.  Coca-Cola launched Coke Zero in 2005, and it reached billion-dollar status in 2007.  Coca-Cola also has many other beverages with “zero” behind the name, such as Sprite Zero and Pibb Zero.  In its SEC report filed this February, Coke stated that global sales volumes of Coke Zero rose 6%.  Much is at stake for Coke in trademarking the word “zero” in connection with its beverage brands, as it would allow Coke to further protect its increasingly valuable Coke Zero product.

But consumers would be better served if the USPTO doesn’t grant Coke a monopoly over the “zero” trademark.  Allowing other brands the ability to use the word “zero” in connection with their zero calorie beverages promotes consumer choice.  And Coke won’t walk away with “zero”—they’ll still have a popular soda brand and will continue to be one of the most widely known brands in the world.

*Amanda Whorton is a second year law student at Wake Forest University.  Before law school, she studied Broadcasting at Southeastern University and was a television producer at a local PBS station in Florida.  After graduation, she hopes to practice intellectual property and entertainment law.  She enjoys dancing and traveling to every Major League Baseball stadium in her free time.