Genericness Archives

Zero Hero: Disclaiming Disputed Term Renders Dispute Moot

The Trademark Trial & Appeal Board redesignated as precedential a decision dismissing a beverage company’s opposition to trademarks using the term “ZERO” for zero-calorie drinks after the trademark applicant disclaimed the term ZERO in its pending applications, the sole remedy requested in the opposition. Royal Crown Co., Inc. v. The Coca-Cola Co., Opposition Nos. 91178927 (Parent Case); 91180771; 91180772; 91183482; 91185755; 91186579; and 91190658 (TTAB May 3, 2019) (redesignated precedential Mar. 30, 2021) (Hightower, ATJ). The US Court of Appeals for the Federal Circuit agreed with the Board’s decision, holding that disclaiming the term ZERO rendered the dispute moot. Royal Crown Co., Inc. v. Coca-Cola Co., Case No. 19-2088 (Fed. Cir. Aug. 3, 2020) (Lourie, J.)

Royal Crown and Coca-Cola are competitors in the beverage market. Coca-Cola filed 16 applications to register marks appending the term ZERO to some of its existing beverage brands, such as Coke Zero, Coke Cherry Zero and Sprite Zero. Royal Crown filed oppositions to each of the 16 applications (later consolidated), arguing that the marks were generic or merely descriptive of the beverages’ zero-calorie attributes, and that the registrations should be denied without a disclaimer of the term ZERO. The Board initially held that Coca-Cola’s applications could be registered without a disclaimer of the term ZERO, finding that Royal Crown failed to show that ZERO was generic for zero-calorie products in the genus of soft drinks, sports drinks and energy drinks, and that Coca-Cola proved that the term ZERO had acquired distinctiveness for soft drinks and sports drinks, although not for energy drinks. On appeal, the Federal Circuit vacated the decision and remanded the case back to the Board with instructions to apply the correct legal standard for genericness of the term ZERO, including examining whether the term ZERO referred to a key aspect of the genus when appended to a beverage mark, and to make an express finding regarding the degree of the mark’s descriptiveness.

On remand, the Board ordered the parties to rebrief certain issues. Instead, Coca-Cola filed an unconsented motion to amend each of its applications to disclaim the term ZERO. Coca-Cola argued that the disclaimer rendered the remaining issues in the case moot and that no further action was required by the Board. Although disclaimer was the sole remedy Royal Crown originally sought in its oppositions, Royal Crown protested that the disclaimer was procedurally improper and not case-dispositive. Royal Crown argued that its requested relief included a determination that ZERO was generic or merely descriptive, and that while a disclaimer was the manner in which that relief was demonstrated, a disclaimer did not moot the legal issues raised. Royal Crown asked the Board to defer ruling on the motion to amend until it had issued a full decision on the merits.

Agreeing with Coca-Cola, the Board found that since the disclaimer was the relief sought by Royal Crown and the form of the disclaimer was acceptable, entered the disclaimer and dismissed Royal Crown’s opposition.

Practice Note: In the original appeal from [...]

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Supreme Court: “Booking.com” Can Be Registered as Trademark

By an 8-1 vote, the Supreme Court rejected a per se rule by the US Patent and Trademark Office (PTO) that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark protection. U.S. Patent and Trademark Office et al. v. Booking.com BV, Case No. 19-46 (Supr. Ct. June 30, 2020) (Ginsberg, Justice) (Sotomayor, Justice, concurring) (Breyer, Justice, dissenting). In so doing, the Supreme Court found that the proper test for whether “booking.com” is eligible for trademark protection for travel booking services is whether the public perceives “booking.com” as identifying a single source.

Trademarks identify and distinguish the goods and services of a single party, and the Lanham Act establishes a system of trademark registration. Among other requirements for registration, a trademark must be distinctive, as judged along a spectrum of trademark distinctiveness. Distinctive trademarks, in order of most to least strength, include fanciful or made-up words (e.g., KODAK); arbitrary marks that are existing words that have no connection to the underlying goods or services (e.g., CAMEL cigarettes); and then suggestive marks, which require some mental thought to connect them to an attribute of the products or services (e.g., TIDE laundry detergent). Descriptive words are not inherently distinctive (e.g., BEST BUY), but can still be protectable and registerable upon proof of acquired distinctiveness (i.e., secondary meaning) arising from extensive use and advertising by the trademark owner. At the low end of the spectrum of distinctiveness are generic terms, which merely refer to a category or class of goods or services (e.g., wine or art) and are therefore never protectable or registerable as trademarks.

The PTO refused registration for “Booking.com,” citing policy developed from a 132-year-old Supreme Court case which held that the addition of “Company” to a generic word does not render the resulting name (i.e., Generic Company) distinctive. See Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888). After the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration, Booking.com appealed to the US District Court for the Eastern District of Virginia, which reversed the refusal of registration, finding that “‘Booking.com’—unlike ‘booking’—is not generic. The district court found that the consuming public primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” The US Court of Appeals for the Fourth Circuit affirmed the judgment of the Virginia federal court (IP Update, Vol. 22, No. 3), and the PTO sought certiorari from the Supreme Court.

The Supreme Court granted certiorari (IP Update, Vol. 22, No. 11), and Justice Ruth Bader Ginsberg delivered the opinion of the Court, with which six other justices joined. Justice Sotomayor filed a short concurring opinion, and Justice Breyer dissented. The question under review by the Court was “whether the addition by an online business of a generic top-level domain (.com) to an otherwise generic term can create a protectable trademark.

Both parties in Booking.com agreed that “booking” is generic for the kind of travel [...]

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