A term is generic, and thus unprotectable, 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. That is the precedential clarification presented by the Federal Circuit Court of Appeals (“Federal Circuit”) in Royal Crown Company, Inc. v. The Coca-Cola Company (June 20, 2018). Specifically, the Federal Circuit reversed and remanded an opposition decision from the U.S. Trademark Trial and Appeal Board (“TTAB”) that the term “Zero” for various soft drinks and sports drinks was not generic. The Federal Circuit explained that the TTAB erred in its legal framing of the genericness inquiry by: (a) failing to examine whether “Zero” identified a key aspect of the genus at issue; and (b) failing to examine how the relevant public understood the brand name at issue when used with the descriptive term “Zero.”
As background, whether a term is generic is determined through a two-part test:
- What is the genus of goods or services at issue?
- Is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?
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. The Federal Circuit explained that the TTAB had applied an erroneous framework when it concluded that the “Royal Crown has not met its burden to establish…that ZERO is generic for soft drinks, or energy drinks, even such drinks that contain no, or fewer than five, calories.” Specifically, the Federal Circuit explained that 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. 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 because any term that the relevant public understands to refer to the genus is generic.
The Federal Circuit explained that 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. In this case, the TTAB failed to consider whether the relevant consuming public would consider the term “Zero” to be generic for a subcategory of the claimed genus of beverages, namely, the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates. The TTAB should have examined whether the term “Zero,” when applied to a beverage mark, refers to a key aspect of the genus. As a result, the Federal Circuit instructed the TTAB, on remand, to consider whether “Zero” is generic because it refers to a key aspect of at least a sub-group or type of the claimed beverage goods.