Royal Crown Company, Inc. v. the Coca-Cola Company , 892 F.3d 1358 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
ROYAL CROWN COMPANY, INC., DR
PEPPER/SEVEN UP, INC.,
Appellants
v.
THE COCA-COLA COMPANY,
Appellee
______________________
2016-2375
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91178927, 91180771, 91180772, 91183482, 91185755,
91186579, 91190658.
______________________
Decided: June 20, 2018
______________________
LAURA POPP-ROSENBERG, Fross, Zelnick, Lehrman &
Zissu, PC, New York, NY, argued for appellants. Also
represented by BARBARA SOLOMON, EMILY SARAH WEISS.
BRUCE WILLIAM BABER, King & Spalding LLP, Atlan-
ta, GA, argued for appellee. Also represented by DARYL
JOSEFFER, PAUL ALESSIO MEZZINA, Washington, DC.
______________________
Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
2 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
O’MALLEY, Circuit Judge.
Royal Crown Company, Inc. and Dr Pepper/Seven Up,
Inc. (together, “Royal Crown”) appeal a decision of the
Trademark Trial and Appeal Board (“the Board”) dismiss-
ing Royal Crown’s opposition to the registration of The
Coca Cola Company’s (“TCCC”) trademarks for various
soft drinks and sports drinks including the term ZERO.
Royal Crown Co. v. Coca-Cola Co. (TTAB Decision),
Opposition No. 91178927 (Parent Case), 2016 TTAB
LEXIS 234 (T.T.A.B. May 23, 2016). 1 Because we con-
clude that the Board erred in its legal framing of the
question of the claimed genericness of TCCC’s marks, and
failed to determine whether, if not generic, the marks
were at least highly descriptive, we vacate the Board’s
determination and remand for further proceedings.
I. BACKGROUND
The Royal Crown appellants are members of the Dr
Pepper Snapple Group (“DPSG”). DPSG and TCCC
compete in the beverage market by manufacturing and
distributing various brands of beverages, including spar-
kling beverages, juices, juice drinks, and ready-to-drink
teas, among others. Both companies manufacture and
distribute beverages that use ZERO as an element of their
1 Royal Crown appeals the Board’s dismissal of Op-
position Nos. 91180771 (SPRITE ZERO), 91178927
(COCA-COLA ZERO), 91186579 (FANTA ZERO,
VANILLA COCA-COLA ZERO, POWERADE ZERO),
91180772 (COKE ZERO), 91190658 (VAULT ZERO),
91183482 (PIBB ZERO, COKE CHERRY ZERO,
CHERRY COCA-COLA ZERO, COCA-COLA VANILLA
ZERO, CHERRY COKE ZERO, COCA-COLA CHERRY
ZERO), and 91185755 (COKE ZERO ENERGY, COKE
ZERO BOLD, VANILLA COKE ZERO).
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 3
marks. Multiple companies market beverages bearing
ZERO as part of the brand name, including Royal Crown
and TCCC. Royal Crown sought trademark protection for
two marks that include the term ZERO: DIET RITE
PURE ZERO and PURE ZERO. Royal Crown disclaimed
the term ZERO apart from the marks as a whole. TCCC
has used ZERO as an element in its marks for at least
twelve different beverage products sold in the United
States, including various versions of COCA-COLA ZERO
and COKE ZERO, SPRITE ZERO, FANTA ZERO, PIBB
ZERO, VAULT ZERO, POWERADE ZERO, and FULL
THROTTLE ZERO. Many other soft drink companies
have applied to register ZERO-inclusive marks for various
types of soft drinks.
TCCC filed seventeen trademark applications for
marks including the term ZERO with the Patent and
Trademark Office (“PTO”). 2 In response to each of these
applications, the PTO issued an office action requesting
that TCCC disclaim the term “zero” because, in the exam-
iner’s view, the term merely “describes a feature of the
applicant’s goods, namely, calorie or carbohydrate content
of the goods.” See, e.g., J.A. 1049–51 (Office Action for
Application Serial No. 78580598 for COCA-COLA ZERO).
TCCC responded by claiming that each of its marks using
2 These applications include, primarily, the marks
at issue in this appeal. TCCC also filed for trademark
protection for FULL THROTTLE ZERO, Application No.
77413618, but the Board sustained Royal Crown’s objec-
tion to that registration. TTAB Decision, 2016 TTAB
LEXIS 234, at *48–49. TCCC sold the FULL THROTTLE
brand to a third party in 2015, and that third party has
not appealed the Board’s decision with respect to the
FULL THROTTLE ZERO mark. Appellee Br. 7. This
application is not at issue in this appeal.
4 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
the term ZERO had acquired distinctiveness under Sec-
tion 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), as part of
a “family of ZERO marks,” and refused to disclaim ZERO.
Section 2(f) permits registration of descriptive marks if
the applicant proves that the mark “has become distinc-
tive of the applicant’s goods in commerce.” Id. The PTO
accepted TCCC’s Section 2(f) submissions and approved
the marks for publication without requiring disclaimer of
ZERO.
Royal Crown filed oppositions to these marks between
August 2007 and June 2009, arguing that: (1) the term
ZERO was merely descriptive of attributes of the associ-
ated products and could not indicate the source of TCCC’s
goods, and (2) the term ZERO is generic when applied to
certain beverage products and therefore cannot indicate
the source of the goods. The Board sustained in part and
dismissed in part Royal Crown’s consolidated oppositions.
TTAB Decision, 2016 TTAB LEXIS 234, at *1. Relevant
to this appeal, the Board first examined Royal Crown’s
contention that ZERO is generic and that the Board
should require TCCC to disclaim the term before permit-
ting registration of these marks.
As part of its inquiry, the Board found that the proper
genus of the goods is “the broad category of soft drinks
(and sports and energy drinks), which encompasses the
narrower category of soft drinks (and sports and energy
drinks) containing minimal or no calories.” Id. at *20.
The Board then considered whether ZERO is understood
by the relevant public primarily to refer to soft drinks,
energy drinks, or sports drinks, particularly those drinks
with zero or near zero calories. The Board found that, as
there are no restrictions or limitations to channels of
trade or classes of consumers, the relevant consuming
public is “ordinary consumers who purchase and drink
soft drinks, energy drinks, or sports drinks.” Id. at *22.
Finally, the Board noted that Royal Crown did not offer
direct consumer evidence (surveys or testimony), nor did
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 5
it offer dictionary evidence linking ZERO to soft drinks.
Instead, Royal Crown offered indirect evidence of competi-
tor use of ZERO, competitor trademark applications and
registrations, consumer use of ZERO, and TCCC’s own
use of ZERO. Based on these findings, the Board con-
cluded that Royal Crown had failed to demonstrate that
ZERO is generic for the genus of goods TCCC identified in
its applications. Id. at *39.
The Board then assessed TCCC’s claim of acquired
distinctiveness in its ZERO marks. Notably, while the
Board appeared to accept TCCC’s concession that its use
of ZERO rendered its mark descriptive, the Board did not
assess whether the term was highly descriptive, rather
than merely descriptive. TCCC offered evidence of its
sales and advertising for ZERO products and what it
described as unsolicited media coverage of its ZERO
products. TCCC also submitted the deposition of Dr. Alex
Simonson, who conducted a consumer survey in 2008
asking respondents if they “associated” the mark ZERO
with one or more particular companies. The Board ex-
plained that Dr. Simonson’s survey found that 61% of
respondents associated the term ZERO with one company,
but only 6% of respondents associated the control term
DIET with one company. And, a majority of respondents
(52%) mentioned COKE, COCA-COLA, or SPRITE when
asked with which company’s products they “associated”
the term ZERO. Although it noted that the weight of the
survey was somewhat diminished because approximately
five years had passed between when the survey was
conducted and the close of testimony in this proceeding,
the Board concluded that the survey evidence supported
TCCC’s sales and advertising evidence and indicated that
TCCC’s ZERO marks had acquired distinctiveness. Id. at
*45–46. The Board also found that TCCC’s use of the
ZERO term in connection with soft drinks was substan-
tially exclusive, because third-party use of ZERO in a
6 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
mark for soft drinks was inconsequential given the “mag-
nitude of TCCC’s use.” Id. at *46–48.
Based on this evidence, the Board found that TCCC
had established, by a preponderance of the evidence, that
it has acquired distinctiveness in the term ZERO when
used as part of a mark for soft drinks. 3 Id. at *48. Alt-
hough nearly all of the evidence on acquired distinctive-
ness addressed soft drinks, the Board concluded that
evidence filed under seal showing sales and marketing
expenditures for POWERADE ZERO was sufficient to
justify finding acquired distinctiveness as to the term
ZERO for TCCC’s sports drinks as well. Id. The Board
dismissed Royal Crown’s oppositions to the applications
for registration of the TCCC marks for soft drinks and
sports drinks without disclaimer of ZERO. 4
Royal Crown appeals the Board’s determinations on
genericness and acquired distinctiveness. We have juris-
diction over this appeal under Section 21(a)(1) of the
Lanham Act, 15 U.S.C. § 1071(a)(1), and 28 U.S.C.
§ 1295(a)(4)(B).
3 The Board concluded that TCCC did not sustain
its burden to establish it had acquired distinctiveness in
the term ZERO for energy drinks and sustained Royal
Crown’s opposition accordingly as to marks for energy
drinks. Id. at *48–49.
4 TCCC opposed Royal Crown’s applications to reg-
ister the marks PURE ZERO and DIET RITE PURE
ZERO under sections 2(a) and 2(d) of the Lanham Act, 15
U.S.C. §§ 1052(a), (d), despite Royal Crown’s disclaimer of
the term ZERO in both applications. The Board dis-
missed TCCC’s oppositions, TTAB Decision, 2016 TTAB
LEXIS 234, at *50–56, and TCCC does not appeal this
decision.
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 7
II. DISCUSSION
Whether the Board applied the correct legal standard
to the facts is a question of law. Princeton Vanguard,
LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed.
Cir. 2015) (citing In re Dial–A–Mattress Operating Corp.,
240 F.3d 1341, 1345 (Fed. Cir. 2001)). We review the
Board’s legal determinations de novo and without defer-
ence. Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1265 (Fed. Cir. 2002).
Whether an asserted mark is generic or descriptive is
a question of fact. Princeton Vanguard, 786 F.3d at 964
(citing In re Hotels.com, LP, 573 F.3d 1300, 1301 (Fed.
Cir. 2009)); In re Bayer Aktiengesellschaft, 488 F.3d 960,
964 (Fed. Cir. 2007). “On appellate review of the Board’s
factual finding of genericness, we determine whether, on
the entirety of the record, there was substantial evidence
to support the determination.” Hotels.com, 573 F.3d at
1302.
We review the Board’s factual findings for substantial
evidence, which requires “such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. of N.Y. v. N.L.R.B, 305
U.S. 197, 229 (1938). The Board’s analysis must encom-
pass the entire evidentiary record. See Princeton Van-
guard, 786 F.3d at 970.
At the outset, because TCCC seeks registration of its
ZERO-containing marks under Section 2(f) of the Lanham
Act, TCCC has conceded that ZERO is not inherently
distinctive in association with the genus of goods at
issue—soft drinks, energy drinks, and sports drinks. And,
TCCC thus concedes that ZERO is, to some extent, de-
scriptive. The only relief Royal Crown seeks in its opposi-
tions to TCCC’s applications is that TCCC be required to
disclaim the term ZERO. Royal Crown does not argue
that, if TCCC disclaims ZERO, the marks should not be
allowed. The PTO may condition registration of a larger
8 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
mark on the applicant’s disclaimer of an “unregistrable
component of a mark otherwise registrable.” 15 U.S.C.
§ 1056(a); In re Stereotaxis, Inc., 429 F.3d 1039, 1041
(Fed. Cir. 2005). “Disclaiming unregistrable components
prevents the applicant from asserting exclusive rights in
the disclaimed unregistrable terms.” In re La. Fish Fry
Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015) (citing
In re Wada, 194 F.3d 1297, 1301 (Fed. Cir. 1999)).
If the Board concludes that Royal Crown has not met
its burden to demonstrate the genericness of TCCC’s
ZERO-bearing marks, TCCC will need to demonstrate the
acquired distinctiveness of its marks—that, “in the minds
of the public, the primary significance of a product feature
or term is to identify the source of the product rather than
the product itself.” Coach Servs., Inc. v. Triumph Learn-
ing LLC, 668 F.3d 1356, 1379 (Fed. Cir. 2012) (quoting
Dial-A-Mattress, 240 F.3d at 1347). Only then can marks
such as the marks TCCC claims, which TCCC has conced-
ed are not inherently distinctive based on its Section 2(f)
filings, qualify for registration on the principal register.
See 15 U.S.C. § 1052(f); Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763, 769 (1992). Where a mark sits on a
sliding scale of descriptiveness impacts the burden a
proposed registrant must bear with respect to its claim of
acquired distinctiveness. See In re Steelbuilding.com, 415
F.3d 1293, 1300 (Fed. Cir. 2005) (“[T]he applicant’s bur-
den of showing acquired distinctiveness increases with
the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.”). In
assessing acquired distinctiveness, accordingly, the Board
must first determine whether the proposed mark is highly
descriptive rather than merely descriptive.
The parties focused their briefing, both before the
Board and on appeal, on the proper designation of the
term ZERO. Royal Crown argues that this term is either
generic or highly descriptive with no acquired distinctive-
ness. TCCC contends that ZERO is neither of those
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 9
things and that TCCC has adequately demonstrated
secondary meaning for the term as used in its trade-
marks, i.e., that the relevant public equates the term with
TCCC products.
Royal Crown appeals several portions of the Board’s
decision. It first challenges the Board’s application of the
legal framework for genericness and the Board’s treat-
ment of the evidence of record, particularly the indirect
evidence Royal Crown offered to demonstrate the generic-
ness of ZERO across the genus of goods at issue. Royal
Crown contends the Board erred by discounting or disre-
garding evidence of the parties’ use of ZERO, by discount-
ing evidence of third-party use, registrations, and
applications including ZERO, and by discounting consum-
er use of the term ZERO as a descriptive term for caloric
content of the genus of beverages. Second, Royal Crown
appeals the Board’s finding that TCCC has demonstrated
acquired distinctiveness in its ZERO marks, arguing that
the Board erred in failing to first characterize TCCC’s
marks as highly descriptive, finding TCCC’s use of ZERO
to be substantially exclusive, and failing to explain its
rationale for finding that TCCC acquired distinctiveness
in its marks.
We conclude the Board erred in its legal framing of
the genericness inquiry in two ways—it failed to examine
whether ZERO identified a key aspect of the genus at
issue, and it failed to examine how the relevant public
understood the brand name at issue when used with the
descriptive term ZERO. We also find that the Board
should have first assessed the level of the marks’ descrip-
tiveness before determining whether TCCC satisfied its
burden of establishing acquired distinctiveness. Absent
such a finding, it is not possible for us to review on appeal
whether the evidentiary record can support the Board’s
finding of acquired distinctiveness. We vacate and re-
mand for the Board to apply the proper legal standard for
genericness and, if the Board again concludes the marks
10 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
are not generic, for it to consider whether the marks are
highly descriptive before assessing their acquired distinc-
tiveness.
A. The Board Erred in Its Application of the
Legal Framework for Genericness
A generic term “is the common descriptive name of a
class of goods or services.” H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir.
1986). A generic mark, being the “ultimate in descrip-
tiveness,” cannot acquire distinctiveness. Id. This is so
because generic terms are “by definition incapable of
indicating source,” and therefore “are the antithesis of
trademarks, and can never attain trademark status.” In
re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 1569 (Fed. Cir. 1987) (citing Dan Robbins & Assocs.,
Inc. v. Questor Corp., 599 F.2d 1009, 1014 (CCPA 1979)).
But “[a] mark that is merely descriptive, but not the
common name of the goods, can nevertheless be registered
on the Principal Register if it has become distinctive in
terms of section 2(f).” In re Northland Aluminum Prods.
Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985).
The test for determining whether a term is generic in-
volves a two-step inquiry: “First, what is the genus of
goods or services at issue? Second, is the term sought to
be registered . . . understood by the relevant public pri-
marily to refer to that genus of goods or services?”
Marvin Ginn, 782 F.2d at 990. “The critical issue in
genericness cases is whether members of the relevant
public primarily use or understand the term sought to be
protected to refer to the genus of goods or services in
question.” Id. at 989–90.
“Evidence of the public’s understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in dic-
tionaries, trade journals, newspapers and other publica-
tions.” Merrill Lynch, 828 F.2d at 1570; see also
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 11
Northland Aluminum, 777 F.2d at 1559. “In an opposi-
tion or cancellation proceeding, the opposer or petitioner
bears the burden of proving genericness by a preponder-
ance of the evidence.” Princeton Vanguard, 786 F.3d at
965 (citing Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638,
641–42 (Fed. Cir. 1991)).
As noted, the Board found that the relevant genus
under the first prong of the Marvin Ginn test is “soft
drinks, sports drinks, and energy drinks.” TTAB Deci-
sion, 2016 TTAB LEXIS 234, at *20. Royal Crown argues
that the Board erred in only discussing the broad genus of
drink products it identified. Royal Crown contends,
instead, that ZERO should be deemed generic or highly
descriptive if it clearly refers to a particular characteristic
of a subset of beverages—those with few or no calories or
few or no carbohydrates. As to the second prong, the
parties do not dispute the Board’s determination of the
relevant consuming public as “ordinary consumers who
purchase and drink soft drinks, energy drinks, or sports
drinks.” Id. at *22.
The primary dispute between the parties, therefore, is
whether members of the relevant public primarily use or
understand a designation sought to be registered to refer
to the genus or category of goods or services in question.
Princeton Vanguard, 786 F.3d at 965.
In its analysis of the relevant evidence on genericness
as directed by the second Marvin Ginn prong, the Board
examined whether the ZERO portion of the trademarks
for which TCCC seeks registration is a generic name for
the general types of beverages with respect to which
TCCC proposes to use the marks. The Board acknowl-
edged that TCCC’s uses of ZERO and 0 “certainly convey
information about the nature of its products – including
primarily that they contain zero (or at least fewer than
five) calories.” TTAB Decision, 2016 TTAB LEXIS 234, at
*38. But the Board concluded that Royal Crown “has not
12 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
met its burden to establish by a preponderance of the
evidence that ZERO is generic for soft drinks, sports
drinks, or energy drinks, even such drinks that contain
no, or fewer than five, calories.” Id. at *39.
The Board’s approach was erroneous. The Board
asked the wrong question in assessing the alleged gener-
icness of the ZERO term. Specifically, the Board failed to
consider that “a term can be generic for a genus of goods
or services if the relevant public . . . understands the term
to refer to a key aspect of that genus.” In re Cordua
Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (emphasis
added). We explained in In re Cordua that “the test is not
only whether the relevant public would itself use the term
to describe the genus, but also whether the relevant
public would understand the term to be generic. Any
term that the relevant public understands to refer to the
genus . . . is generic.” Id. at 603 (alteration in original)
(quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359,
1364 (Fed. Cir. 2009)). We also explained that “a term is
generic if the relevant public understands the term to
refer to part of the claimed genus of goods or services, even
if the public does not understand the term to refer to the
broad genus as a whole.” Id. at 605 (emphasis added).
In In re Cordua, we found that the term “churrasco”
was generic, even for use in connection with a broad class
of restaurant services, because the key public would
understand the term to be referring to a specialty dish—a
sub-aspect of restaurant services. Id. at 604. We made
clear that “[t]here is no logical reason to treat differently
a term that is generic of a category or class of products
where some but not all of the goods identified in an appli-
cation fall within that category.” Id. at 605 (quoting In re
Analog Devices, Inc., 1988 WL 252496, at *3 (T.T.A.B.
Mar. 21, 1988)). We pointed out, for instance, that the
term “pizzeria” would be generic for restaurant services,
even though the public does not understand the term to
refer to the broad class of restaurants as a whole; the
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 13
public need only understand that the term refers to “a
particular sub-group or type of restaurant rather than to
all restaurants.” Id.So too here, if the public understands ZERO when
used in combination with a designated beverage name to
refer to a sub-group or type of beverage that carries
specific characteristics, that would be enough to render
the term generic. Because TCCC only seeks to use ZERO
as part of combination marks, moreover, the Board may
not divorce the public’s perception of the term ZERO from
its perception of that term as part of a beverage combina-
tion mark. See Princeton Vanguard, 786 F.3d at 968–69
(“[E]ven in circumstances where the Board finds it useful
to consider the public’s understanding of the individual
words in a compound term as a first step in its analysis,
the Board must then consider available record evidence of
the public’s understanding of whether joining those
individual words into one lends additional meaning to the
mark as a whole.”); DuoProSS Meditech Corp. v. Inviro
Med. Devices, Ltd., 695 F.3d 1247, 1253 (Fed. Cir. 2012)
(holding that, although the Board may “ascertain the
meaning and weight of each of the components that
makes up the mark,” it “ultimately must consider the
mark as a whole and do so in the context of the goods or
services at issue”).
The Board here failed to consider whether the rele-
vant consuming public would consider the term ZERO to
be generic for a subcategory of the claimed genus of
beverages—i.e., the subcategory of the claimed beverages
encompassing the specialty beverage categories of drinks
with few or no calories or few or no carbohydrates. On
remand, accordingly, the Board must examine whether
the term ZERO, when appended to a beverage mark,
refers to a key aspect of the genus. ZERO need not be
equated by the general public with the entire broad genus
TCCC claims in order for the term to be generic. The
Board therefore must consider whether ZERO is generic
14 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
because it refers to a key aspect of at least a sub-group or
type of the claimed beverage goods. The Board must
make this determination by considering the facts that the
genus of goods for which TCCC seeks registration of its
marks clearly encompasses zero calorie beverages as a
sub-group, and that TCCC only proposed to use ZERO in
combination with beverage marks that offer zero calorie
versions thereof.
B. The Board Erred in Failing to Assess the
Level of the Marks’ Distinctiveness
Putting aside the Board’s misunderstanding of the
genericness inquiry, the Board also erred in assessing
whether TCCC satisfied its burden of proving acquired
distinctiveness without first determining exactly what
that burden was. Royal Crown clearly asserted that, even
if not generic, the term ZERO when used in connection
with beverages is so highly descriptive that the Board’s
assessment of TCCC’s evidence of acquired distinctiveness
must be exacting.
We have long held that “the applicant’s burden of
showing acquired distinctiveness increases with the level
of descriptiveness; a more descriptive term requires more
evidence of secondary meaning.” Steelbuilding.com, 415
F.3d at 1300; see also In re Boston Beer Co., 198 F.3d
1370, 1373 (Fed. Cir. 1999) (“[T]he greater the degree of
descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning.” (quoting In re
Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4 (Fed.
Cir. 1990))). Other circuits have held similarly. See, e.g.,
Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency,
Inc., 214 F.3d 432, 440–41 (3d Cir. 2000) (noting that, to
establish secondary meaning in “a commonplace, descrip-
tive term . . . , the evidentiary bar must be placed some-
what higher”); Filipino Yellow Pages, Inc. v. Asian
Journal Publ’ns, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999)
(holding that a descriptive mark that fell “perilously close
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 15
to the generic line . . . could be a valid trademark only
with a strong showing of strong secondary meaning”
(internal quotation marks omitted)); see also 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Compe-
tition § 15:33 (5th ed. 2017) (“Several courts take the
sensible position that, for descriptive words, the greater
the degree of descriptiveness, the greater the evidentiary
burden on the user to establish secondary meaning.”).
Our recent decision in In re Louisiana Fish Fry exem-
plifies this sliding-scale approach. In that case, we con-
sidered the Board’s decision that the would-be registrant,
Louisiana Fish Fry, had failed to show that the term
FISH FRY PRODUCTS had acquired distinctiveness, in
part because the term was “highly descriptive” and thus
Louisiana Fish Fry faced an “elevated burden to establish
acquired distinctiveness.” 797 F.3d at 1336. We found
that substantial evidence supported the Board’s conclu-
sion of no acquired distinctiveness. Id. We first noted
that Louisiana Fish Fry did not appeal the Board’s find-
ing that FISH FRY PRODUCTS was highly descriptive.
Id. We then held that, “[p]articularly for a mark that is
as highly descriptive like FISH FRY PRODUCTS, the
Board was within its discretion not to accept Louisiana
Fish Fry’s alleged five years of substantially exclusive and
continuous use as prima facie evidence of acquired dis-
tinctiveness.” Id. at 1337.
While the Board here cited In re Steelbuilding.com for
the general proposition that higher levels of descriptive-
ness require a more substantial showing of acquired
distinctiveness, it never returned to this point in its
discussion. Thus, it did not make any finding as to the
degree of descriptiveness conveyed by the term ZERO in
the marks and, as discussed in more detail below, did not
assess TCCC’s evidence through an exacting lens.
For this reason, the Board’s finding on acquired dis-
tinctiveness must also be vacated. If it reaches the ques-
16 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
tion of acquired distinctiveness, the Board must make an
express finding regarding the degree of the mark’s de-
scriptiveness on the scale ranging from generic to merely
descriptive, and it must explain how its assessment of the
evidentiary record reflects that finding.
C. The Board’s Treatment of the
Evidentiary Record
The Board must apply the proper legal standard to
the evidence presented by the parties on both the generic-
ness and acquired distinctiveness issues on remand,
focusing on the relevant public’s perception of the mark as
well as on any identifiable subclass of the identified
genus. Merrill Lynch, 828 F.2d at 1569. As we noted in
Princeton Vanguard, the Board must make its factual
findings based on a review of the entire evidentiary
record, and we review those findings for substantial
evidence:
[S]ubstantial evidence review requires an exami-
nation of the record as a whole, taking into ac-
count both the evidence that justifies and detracts
from an agency’s opinion. Our review under that
standard can only take place when the agency ex-
plains its decisions with sufficient precision, in-
cluding the underlying factfindings and the
agency’s rationale.
786 F.3d at 970 (citations and internal quotation marks
omitted). In addition to the Board’s failure to define the
burden it was imposing on TCCC regarding the evidence
it presented, we note several other concerns with the
Board’s treatment of the evidence relevant to its task on
remand.
Despite the Board’s intimations otherwise, Royal
Crown was not required to provide direct evidence of
consumer perception to support its genericness challenge
to TCCC’s marks, whether from a survey, dictionary, or
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 17
otherwise. See TTAB Decision, 2016 TTAB LEXIS 234, at
*24, *33. As noted, evidence of the public’s perception
may be obtained from “any competent source, such as
consumer surveys, dictionaries, newspapers and other
publications.” Northland Aluminum, 777 F.2d at 1559(emphasis added). Royal Crown offered numerous sources
of evidence on the issue of genericness which the Board
generally found to be competent, including evidence of
competitive use, evidence that other companies use ZERO
in combination with their own soft drink marks, third-
party registrations and applications for such combined
marks, and evidence of third-party and TCCC descriptive
uses of “zero” and “0” on various packaging and marketing
materials. See TTAB Decision, 2016 TTAB LEXIS 234, at
*33–37 (summarizing this indirect evidence and finding it
“competent, for the most part, but insufficient” (footnote
omitted)). TCCC has failed to offer a case citation, nor
have we found one, indicating that such evidence is cate-
gorically insufficient to support a finding of genericness.
TCCC also suggests on appeal that the Board’s find-
ing of acquired distinctiveness, especially with respect to
TCCC’s sales and advertising figures, supports a finding
that ZERO is not generic. In concluding that Royal
Crown’s evidence on consumer use of ZERO was mostly
competent but insufficient to prove genericness, the Board
stated that the “handful of public references” Royal Crown
offered failed to “establish that ordinary consumers
primarily use or understand the term ZERO to refer to
the genus” at issue here, particularly in light of “the
context of the ubiquity of TCCC’s ZERO products, which
have had billions of dollars in sales since they first en-
tered the market.” TTAB Decision, 2016 TTAB LEXIS
234, at *37.
TCCC’s argument, and the Board’s position, ignore
the fact that “[g]eneric terms cannot be rescued by proof
of distinctiveness or secondary meaning no matter how
voluminous the proffered evidence may be.” Northland
18 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
Aluminum, 777 F.2d at 1558 (alteration in original)
(quoting Examiner); see also Weiss Noodle Co. v. Golden
Cracknel & Specialty Co., 290 F.2d 845, 847–48 (CCPA
1961) (“The examiner erred in accepting the showing of
‘distinctiveness’ in granting the registration because no
matter what the market situation may have been as to
indication of origin or secondary meaning, the common
descriptive name of the product cannot become a trade-
mark owned exclusively by one vendor.” (emphasis add-
ed)). To the extent the Board relied on TCCC’s sales and
advertising figures as part of the genericness inquiry, it
erred in doing so. This type of evidence may be probative
of acquired distinctiveness to the extent it shows that a
non-generic term has gained recognition with consumers
primarily as to the source of a product. Sales and adver-
tising figures do not, however, demonstrate that a term is
not used by the public to refer to the genus of goods in
question, or to a sub-group thereof.
The Board’s reliance on Dr. Simonson’s survey to find
that TCCC had acquired distinctiveness in its ZERO
marks is also troubling. As the Board acknowledged, this
survey is not contemporaneous with the question of
whether registration should be permitted here—Dr.
Simonson conducted the survey more than five years
before the close of testimony before the Board. TTAB
Decision, 2016 TTAB LEXIS 234, at *45. But “[s]econdary
meaning is a time-related concept: it exists at a specific
time, in a specific place, among a specific group of people
who recognize that specified matter indicates commercial
origin of a specified type of product or service from one
unique commercial source.” 4A Callmann on Unfair
Competition, Trademarks, and Monopolies § 20.23 (4th
ed. 2017). “Therefore, a survey is only probative if it deals
with conditions at the appropriate time.” Id. The Board
gave this survey “somewhat diminish[ed]” weight for this
reason, but nonetheless used its findings to “validate[] the
significant sales and advertising numbers discussed
ROYAL CROWN CO., INC. v. THE COCA-COLA CO. 19
supra.” TTAB Decision, 2016 TTAB LEXIS 234, at *45–
46 (citation and internal quotation marks omitted). But,
as it cannot disclose contemporary public perception, the
probativeness of this survey, even merely to support other
evidence, is questionable. This is particularly true in the
face of Royal Crown’s evidence of substantial and in-
creased use of ZERO by third parties in connection with
beverages in the intervening years.
The framing of the survey questions also reduces the
probative value of the results. Simonson asked consum-
ers whether they “associated” the term ZERO with the
products of one or more companies. J.A. 9139. But this
question is not sufficient to demonstrate the public’s
perception of the term ZERO; association does not imply
that a consumer would be confused by seeing a ZERO-
branded product under a different label, nor does it ad-
dress what meaning consumers attach to the term ZERO.
The Board’s reliance on the survey evidence here at least
seems inconsistent with any heightened level of inquiry, if
the Board intended to apply one.
In its discussion on TCCC’s opposition to Royal
Crown’s applications, the Board also mentioned TCCC’s
“ZERO family of marks.” But there is no indication in the
Board’s opinion that it in fact made a finding that TCCC
had demonstrated a family of marks. TTAB Decision,
2016 TTAB LEXIS 234, at *51. And, TCCC now concedes
on appeal that it does not rely on a ZERO-bearing family
of marks to establish acquired distinctiveness. Appellee
Br. 41. Had the Board made such a finding, moreover,
application of the family of marks doctrine “requires a
showing that the family feature or ‘surname’ is distinctive
enough to trigger recognition ‘in and of itself.’” Spraying
Systems Co. v. Delavan, Inc., 975 F.2d 387, 395 (7th Cir.
1992) (quoting 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 23:19, at 103 (3d
ed. 1992)). Some authorities have indicated that “descrip-
tive terms cannot constitute the common element in a
20 ROYAL CROWN CO., INC. v. THE COCA-COLA CO.
family of marks,” so that “[i]t may be more accurate to say
that a descriptive term can serve as a family surname
only where there is a strong showing of secondary mean-
ing in the term.” Id. (citations omitted). Without such a
finding, it is hard to see how the survey has probative
value for marks which consumers failed to mention in the
survey.
III. CONCLUSION
Because the Board applied the incorrect legal stand-
ard in assessing whether TCCC’s ZERO marks are gener-
ic, and did not adequately consider Royal Crown’s
evidence with respect thereto, we vacate the Board’s
dismissal of Royal Crown’s oppositions on that ground.
We also vacate the Board’s acquired distinctiveness
determination to allow it, in the first instance, to assess
the nature of TCCC’s burden on that point and to explain
how the evidence presented meets that precise burden.
We remand for further proceedings consistent with this
opinion.
VACATED AND REMANDED
COSTS
No costs.