Published 10/08/2020 by CIONCA IP TEAM (JM)
Royal Crown Inc., Dr. Pepper/Seven Up Inc., (“Royal Crown”) appealed from a decision made by the Trademark Trial and Appeals Board (“Board”) and the United States Patent and Trademark Office (USPTO). The decision made dismissed Royal Crown’s consolidated opposition of sixteen trademarks proposed by competitor The Coca-Cola Company (“Coca-Cola”). Coca-Cola filed to use a ZERO branding on sixteen of its products. Royal Crown claimed that each of the ZERO marks Coca-Cola proposed are generic or descriptive of the zero calories attributes of the beverage. In their consolidated opposition, Royal Crown argued that each registration must be denied “absent the entry of a disclaimer of the term zero”.
The Board dismissed Royal Crown’s opposition, stating that Royal Crown did not provide enough evidence that ZERO is generic in soft drinks, energy drinks, and sports drinks. While Coca-Cola has proven the term ZERO has acquired distinctiveness in soft drinks and sports drinks, they had not proven acquired distinctiveness for energy drinks. Therefore, the Board has held that Coca-Cola’s applications can register even in the absence of a disclaimer of the term ZERO.
Royal Crown appealed to The Federal Circuit (“Circuit”). The Circuit vacated the Board’s decision due to the incorrect legal standard of generic-ness in the term ZERO, and for failing to make a finding on the term’s descriptiveness before addressing acquired distinctiveness. The Circuit remanded the case to the Board to fix the matters that were brought forth.
Coca-Cola filed a motion to amend each of their applications to disclaim the term ZERO. Royal Crown argued the motion and stated it was improper and not case dispositive. The Board noted that the relief was given to Royal Crown as requested, and The Board decided to move forward with Coca-Cola. The Board entered a disclaimer for each application and dismissed Royal Crown’s opposition. Royal Crown filed an appeal, and the USPTO filed a motion to intervene which was granted by the Board.
Royal Crown raised three challenges to the Board decision.
1. Royal Crown claimed that “granting Coca-Cola’s post-trial, unconsented-to motion was procedurally improper and thus arbitrary, capricious, and an abuse of discretion.” (p5)
2. Royal Crown argued that, “by simply entering Coca-Cola’s disclaimer, the Board shirked its obligation to render a reasoned decision under the APA and deprived Royal Crown and this court of a decision on the merits.” (p5)
3. “Royal Crown denies that Coca-Cola’s disclaimer mooted this appeal because Coca-Cola may file new applications for ZERO-inclusive marks or assert such scope for the instant proposed marks in future litigation.” (p5)
Coca-Cola responded that in fact the appeal is moot because of the Board’s entry of Coca-Cola’s disclaimers. This granted Royal Crown the relief they requested and stated the Board can grant an uncontested motion to amend an application “under 37 C.F.R. § 2.133(a)” (p.6). Royal Crown did not oppose registration of the mark per se, rather it opposed the marks being used without a disclaimer. Therefore, Royal Crown has received all the relief they initially requested.
The Federal Circuit agreed with Coca-Cola. The Board did not abuse their discretion in granting Coca-Cola’s motion.
Royal Crown attempted to show that the Board had interrupted regulation to forbid an uncontested motions after trial by citing “§ 2.133(a) does not allow amendments or disclaimers ‘except with the consent of the other party or parties and the approval of the [Board], or upon motion granted by the Board.’” (p.6) In conclusion, Royal Crown’s claim that the Board is powerless to grant a motion to enter a disclaimer and to give all relief requested by an opposer did not stand.
Coca-Cola’s disclaimer granted what Royal Crown originally wanted. Coca-Cola was able to use the ZERO mark if there was a disclaimer following it. Royal Crown did not argue for Coca-Cola to not use the mark in general, therefore, Royal Crown has already received what they requested from the Board.
In conclusion, Royal Crown has obtained what it wanted from the court which was a disclaimer for the term ZERO in each application at issue. Accordingly, there is no controversy for this court to decide. The Federal Circuit has considered Royal Crown’s argument and has considered it unpersuasive, so the Court dismisses Royal Crown’s appeal.
From this case, we can see how important it is to study details. As we see from the decision, Royal Crown technically obtained what they wanted, which was Coca-Cola using a disclaimer for the ZERO brand. In contrast, we also see Royal Crown’s appeal failed due to lack of persuasiveness. When it came to the arguing if Coca-Cola could amend their claims, we saw that Royal Crown could not provide a persuasive argument. One should always proceed with caution when making decisions based on minutia details and ensure that they are prepared to defend any possible stance.
Full Royal Crown Company Inc. v Coca-Cola Company decision can be read here:
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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