Less Than Zero: Why Blurring The Line Between Generic And Descriptive Is Bad For Trademarks

In essence here, the Federal Circuit expanded the scope of what can be considered a 'generic' trademark. Peachy.

For trademarks, blurring the lines between descriptiveness and genericness is not a good thing.   Although it may not have been intentional, that is exactly what the Court of Appeals for the Federal Circuit (CAFC) did recently in vacating and remanding a decision by the Trademark and Trial and Appeal Board (TTAB) regarding The Coca-Cola Company’s “ZERO” trademark for some of its diet soft drinks.  Specifically, The Coca-Cola Company filed 17 trademarks in the USPTO that included the term “ZERO” for diet soft-drinks (i.e., COKE ZERO, SPRITE ZERO, etc.). The Dr. Pepper Snapple Group, having its own competing products using the term “ZERO,” opposed these applications on the basis that the term “ZERO’ was generic for such goods.  To make a long story short, the CAFC disagreed with the TTAB’s holding that opposers to The Coca-Cola Company’s term “ZERO” failed to show that the term was “generic” as used in conjunction with its diet soft drinks, and that The Coca-Cola Company had proven that the term “ZERO” had “acquired distinctiveness” over time in that sub-category of soft drinks (i.e., those with five calories or less). As I will explain, the court stumbled over the distinction, creating a headache for all of us in the process.

If I seem a little irritated here, it is because I am. The differences generic trademarks and descriptive ones are not insubstantial, and are vigorously argued by trademark lawyers (from seeking federal trademark registrations for their clients in the USPTO to enforcing rights for their clients in court). Generic terms simply cannot operate as trademarks — whether commonly understood as the name of a good or service, or otherwise becoming known in such a manner and thereby “genericizing” the trademark, such designations cannot distinguish between different party’s goods and services and so do not properly indicate the source.  Merely descriptive terms, on the other hand, may acquire such distinctiveness over time because the consuming public comes to understand the terms as associated with specific goods or services.  As you can see, there is a clear difference here — one area where the designation operates as the name of a specific group of goods or services to the consuming public that is not protectable as a trademark, and another area where there is no inherent distinctiveness but where distinctiveness (and therefore, trademark rights) can be acquired over time.

In coming to its decision, the CAFC stated that the TTAB “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) (holding that the term “churrasco” generic, “even for use in connection with a broad class of restaurant services, because the consuming public would  understand the term to be referring to a specialty dish — a sub-aspect of restaurant services.”). Huh? The real focus is not whether the designation “refers” to an “aspect of that genus”, but whether the designation is (or has come to be known) as the name for the good or service in question. For example, this is why the term “corn flakes” cannot be a valid trademark, and why “escalator” lost its trademark status because it came to be known as the name of a moving staircase.

But the CAFC went further by essentially claiming that the TTAB was not exacting enough in its review of The Coca-Cola Company’s evidence that the term “ZERO” had acquired distinctiveness in conjunction with diet soft drinks.  The CAFC held that the TTAB “must make an express finding regarding the degree of the mark’s descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding.” In essence, the CAFC expanded the scope of what can be considered a “generic” trademark. Peachy.

Although I appreciate the CAFC’s concern, I question the interpretation, and in this case I am not alone.  In fact, I have outstanding company — Professor J. Thomas McCarthy (the author of McCarthy on Trademarks — THE seminal treatise on trademark law, in my opinion) has criticized this holding as well, considering it “a judicial rewriting of the [Lanham Act].”  In typical fashion, he makes his point eloquently yet simply, summarizing by stating “the proper question to ask is if the designation is a name of the product or service. The Lanham Act does not ask if the word “refers to” a product or service. The statute in three places requires that the primary significance of the word be as a “generic name for the goods or services.” (emphasis added) (citations omitted).  I do not presume to simply criticize a CAFC decision, but in this case it seems that the CAFC missed the mark and further confused the law in the process.

When it comes to the line between generic designations and descriptive ones, there should be zero tolerance for anything but a clear line between the two (and yes, the pun is intended). Anything less leaves trademark law in this area open to misapplication, and opens a host of designations up for attack (let alone descriptive terms that gain secondary meaning over time).  Listen, I am not a big diet soda drinker, but given the sub-category of product(s) in this case, let’s just say this decision simply leaves a bad taste in the mouth.


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Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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