Companhia de Bebidas das Americas ' AMBEVv.The Coca Cola Company

Trademark Trial and Appeal Board

May 2, 2012

No. 91183465 (T.T.A.B. May. 2, 2012)

Mailed: May 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

Companhia de Bebidas das Américas - AMBEV
v.
The Coca Cola Company
___________

Opposition Nos. 91178953; 91180439; 91180442; 91183447; 91183448;
91183452; 91183464; 91183465; 91183467; 91185734; 91185739;
91185750; 91186620; 91186661; 91188229; 91188396; and 911890181
___________

W. Mack Webner and Jody H. Drake of Sughrue Mion, PLLC for
Companhia de Bebidas das Américas - AMBEV.

Bruce W. Baber of King & Spalding LLP for The Coca-Cola Company.
____________

Before Bucher, Zervas, and Shaw,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
The Coca-Cola Company (“TCCC” or “applicant”) has filed
seventeen applications for the following marks, all containing,
inter alia, the term ZERO for use on “beverages, namely soft
drinks; syrups and concentrates for the making of the same,” in
International Class 32.

1 Consolidated on May 5, 2008, December 24, 2008 and March 6,
2009.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition Nos. 91178953 et al.
2
SPRITE ZERO2
COCA-COLA ZERO3
FANTA ZERO4
COKE ZERO5
VAULT ZERO6
PIBB ZERO7
COKE ZERO ENERGY8
COKE ZERO BOLD9
COKE CHERRY ZERO10
CHERRY COCA-COLA ZERO11
COCA-COLA CHERRY ZERO12
CHERRY COKE ZERO13
COCA-COLA VANILLA ZERO14
VANILLA COKE ZERO15
VANILLA COCA-COLA ZERO16
POWERADE ZERO17
FULL THROTTLE ZERO18

2 Application Ser. No. 78316078, filed October 20, 2003, alleging
first use anywhere and in commerce on September 13, 2004.
3 Application Ser. No. 78580598, filed March 4, 2005, alleging
first use anywhere and in commerce on June 13, 2005.
4 Application Ser. No. 78620677, filed May 2, 2005, alleging a
bona fide intent to use the mark.
5 Application Ser. No. 78664176, filed July 6, 2005, alleging
first use anywhere and in commerce on June 13, 2005.
6 Application Ser. No. 78698990, filed August 24, 2005, alleging
first use anywhere and in commerce on December 2, 2005.
7 Application Ser. No. 77097644, filed February 27, 2007,
alleging first use anywhere and in commerce as July 2005.
8 Application Ser. No. 76674382, filed March 22, 2007, alleging a
bona fide intent to use the mark.
9 Application Ser. No. 76674383, filed March 22, 2007, alleging a
bona fide intent to use the mark.
10 Application Ser. No. 77175066, filed May 8, 2007, alleging
first use anywhere and in commerce on January 29, 2007.
11 Application Ser. No. 77175127, filed May 8, 2007, alleging a
bona fide intent to use the mark.
12 Application Ser. No. 77176279, filed May 9, 2007, alleging
first use anywhere and in commerce on January 29, 2007.
13 Application Ser. No. 77176127, filed May 9, 2007, alleging a
bona fide intent to use the mark.
14 Application Ser. No. 77176108, filed May 9, 2007, alleging a
bona fide intent to use the mark.
15 Application Ser. No. 77176099, filed May 9, 2007, alleging a
bona fide intent to use the mark.
16 Application Ser. No. 77257653, filed August 17, 2007, alleging
a bona fide intent to use the mark.
17 Application Ser. No. 77309752, filed October 22, 2007,
alleging first use anywhere and in commerce as May 2008.
Opposition Nos. 91178953 et al.
3
In each of these applications TCCC has claimed that ZERO has
acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f).
Companhia de Bebidas das Américas – AMBEV (“Ambev” or
“opposer”) has opposed registration of each application on the
same grounds, namely, that the term ZERO is merely descriptive
and that the evidence of acquired distinctiveness is insufficient
to permit registration on the Principal Register under Section
2(f).
Applicant, in its answer, denied the salient allegations of
the notice of opposition. The case is fully briefed and an oral
hearing was held on October 5, 2011.
The Record
The evidence of record, as fully referenced in the parties’
briefs, is voluminous, consisting of the pleadings, the files of
the involved applications, third party registrations of marks
including the term ZERO, surveys and testimony depositions on
behalf of opposer and applicant, respectively, all with
accompanying exhibits, and numerous additional exhibits made of
record by the parties’ notices of reliance (NOR).
Opposer’s Evidentiary Objections
Ambev has made two objections to TCCC’s evidence.
First, Ambev objects to the survey and testimony of TCCC’s
expert witness, Dr. Simonson, as improper rebuttal because he was

18 Application Ser. No. 77413618, filed March 5, 2008, alleging
Opposition Nos. 91178953 et al.
4
identified only as a rebuttal witness, not as a witness for
TCCC’s case in chief.19
As background, we note that during its main testimony
period, opposer introduced the testimony deposition of Dr. Thomas
D. Dupont, former President of D2 Research, a company that
specialized in designing and conducting surveys to measure
consumer perception. Dr. Dupont, through D2 Research, conducted
a survey to determine “the main function of the word “zero” . . .
in the brand name Coca-Cola Zero.” Dupont testimony at 6.
Applicant introduced the testimony deposition of Dr. Alex
Simonson, applicant’s expert witness regarding surveys. Dr.
Simonson was identified by applicant in its expert disclosures as
a rebuttal witness. Applicant’s Br. at 29. Dr. Simonson
critiqued the survey conducted by Dr. Dupont and opined as to how
the survey should have been conducted. Dr. Simonson also
conducted a “standard secondary meaning survey as to ZERO.” Id
at 12.
Ambev argues that the Simonson survey and testimony should
be excluded because it constitutes improper rebuttal in that it
did not “test the same question that was posed in the Ambev
survey it purports to rebut.” Opposer’s Br. at 7, n.2. Ambev is
correct that TCCC identified Simonson as a rebuttal witness and
therefore his survey and testimony should be limited to rebuttal.

a bona fide intent to use the mark.
Opposition Nos. 91178953 et al.
5
However, the rebuttal survey and testimony need not be limited to
the same question that was posed in Ambev’s survey. The purpose
of rebuttal is to “introduce facts and witnesses appropriate to
deny, explain or discredit the facts and witnesses adduced by the
opponent. . . .” Royal Crown Cola Co. v. Bakers Franchise Corp.,
150 USPQ 698, 700 (TTAB 1966), affirmed, 160 USPQ 192, (CCPA
1969).
Because Dr. Simonson’s survey and testimony regarding that
survey are proper rebuttal to the extent that they bear on the
validity and probative value of the Dupont survey, Ambev’s
objection is not well taken. Moreover, the fact that evidence
might have been offered in chief does not preclude its admission
as rebuttal. Data Packaging Corp. v. Morning Star, Inc., 212
USPQ 109, 113 (TTAB 1981). Accordingly, we have considered the
Simonson survey and testimony to the extent that they seek to
“deny, explain or discredit” Ambev’s survey and testimony.
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d
1618, 1625 n.33 (TTAB 1989). To that extend, Ambev’s objection
is overruled.
Second, Ambev objects to the portion of TCCC’s notice of
reliance that was filed on Ambev’s responses to Applicant’s
Requests for Documents and Things. Opposer’s Br. at 7, n.3.
Ambev argues that responses to document requests are not

19 Neither party challenged the qualifications of the other’s
expert; we therefore accept that both experts are qualified to
offer expert testimony.
Opposition Nos. 91178953 et al.
6
admissible under a notice of reliance. TCCC responds that it is
not relying on any documents produced but only upon Ambev’s
written responses, which are properly submitted through a notice
of reliance. Applicant’s Br. at 11, n.2.
Documents produced in response to document requests may not
be submitted via a notice of reliance except to the extent they
are admissible by notice of reliance under Trademark Rule
2.122(e) (printed publications and official records).
Conversely, written responses to document production requests,
for example, indicating that no responsive documents exist, may
be submitted via a notice of reliance. See L.C. Licensing Inc.
v. Berman, 86 USPQ2d 1883, 1886 at n.5 (TTAB 2008). Since TCCC
is only relying on Ambev’s written responses, the objection is
overruled.
Preliminary Issues
A. Whether Genericness was Tried by the Parties
As indicated above, opposer pleaded in its notice of
opposition that the term ZERO is merely descriptive of
applicant’s goods and that opposer, by virtue of being in the
beverage industry, “is in a position to use in the future the
term ZERO descriptively in its ordinary descriptive sense in
connection with its beverage products.” Notice of Opposition
dated August 15, 2007. Ambev did not raise the issue of
genericness in any of its seventeen notices of opposition. Ambev
argues in its brief that that “ZERO defines a genus of soft drink
Opposition Nos. 91178953 et al.
7
and is incapable of becoming a trademark for Coke’s colas and
other soft drinks.” Opposer’s Br. at 19. TCCC objects to this
characterization of the issues before the Board on the ground
that Ambev is raising the issue of genericness for the first time
and the issue was neither pleaded nor litigated by the parties.
Applicant’s Br. at 38. TCCC’s objection is well taken.
Since Ambev did not raise the issue of genericness in any of
its notices of opposition, we may consider the issue only if we
find that the issue was tried by the consent of the parties.
Implied consent to the trial of an unpleaded issue can be found
only where the nonoffering party (1) raised no objection to the
introduction of evidence on the issue, and (2) was fairly
apprised that the evidence was being offered in support of the
issue. There must be no doubt that the non-moving party was
aware that the issue was being tried. TBMP § 507.03(b) (3d ed.
2011) and cases cited therein.
We find no evidence that TCCC was aware that Ambev intended
to argue genericness until opposer filed its brief. Ambev argues
that the very nature of the term ZERO and TCCC’s use of ZERO
makes the issue “obvious.” Opposer’s Reply Br. at 6. However,
much of the evidence discusses ZERO only when used as part of
phrases such as ZERO-CALORIE, or ZERO-CARB and not by itself, or
even as used by TCCC, with its other marks such as COKE, SPRITE,
and FANTA. Thus, we do not find the issue to be as obvious as
Ambev claims and it would be unfair to permit opposer to raise
Opposition Nos. 91178953 et al.
8
genericness at this late date. See The U.S. Shoe Corp. v. Kiddie
Kobbler Ltd., 231 USPQ 815, 817 (TTAB 1986); Long John Silver’s,
Inc. v. Lou Scharf Inc., 213 USPQ 263, 266 (TTAB 1982). We
conclude that genericness was not tried by either implied or
express consent and is not an issue in this opposition.
B. Whether Mere Descriptiveness is an Issue in this Opposition

TCCC states that one of the issues in this opposition is
whether “the preponderance of the evidence establish[es] that
ZERO in the TCCC ZERO marks either is suggestive (and inherently
distinctive) or has acquired distinctiveness.” Applicant’s Br.
at 5. The suggestiveness (or inherent distinctiveness) of the
term ZERO as part of TCCC’s marks is not an issue in this
opposition. All of TCCC’s ZERO marks published showing a claim
of acquired distinctiveness of the term ZERO under Section 2(f)
of the Trademark Act. Publication under Section 2(f) is a
concession that the relevant term or matter is not inherently
distinctive. “Where, as here, an applicant seeks a registration
based on acquired distinctiveness under Section 2(f), the statute
accepts a lack of inherent distinctiveness as an established
fact. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (emphasis in original).
TCCC argues that its claim of acquired distinctiveness “was
made in the alternative and did not constitute a concession by
TCCC that ZERO, as used in the ZERO marks, is not inherently
distinctive.” Applicant’s Br. at 15. TCCC cites to TMEP
Opposition Nos. 91178953 et al.
9
§ 1212.02(c) for support for this proposition but this section is
of no avail. Section 1212.02(c) applies to the examination stage
prior to publication and allows applicants to argue against a
finding of descriptiveness while also submitting evidence of
acquired distinctiveness. There is no evidence that TCCC
complained to the Office after the Office published its
applications that the Office had made a mistake showing that
applicant claimed acquired distinctiveness in part as to the term
ZERO. Having accepted publication of its ZERO marks under
Section 2(f), TCCC may not now argue that ZERO is inherently
distinctive or suggestive. Yamaha, 6 USPQ2d at 1005; TMEP
Section 1212.02(c) (8th ed. 2011).
Accordingly, the only issue in this consolidated opposition
is whether ZERO in each of TCCC’s marks has acquired
distinctiveness under Section 2(f).
The Parties
Ambev is a Brazilian company that manufactures and sells
soft drinks and beers “throughout North and South America.”
Opposer’s Br. at 2. Ambev also has filed an application to
register the mark GUARANA ANTARCTICA ZERO AÇÚCAR and design for
soft drinks.20
Applicant is The Coca-Cola Company, “the world’s largest
beverage company.” Applicant’s Br. at 13. Beginning in 2005,
applicant (hereinafter, “TCCC”) began marketing and selling COCA-
Opposition Nos. 91178953 et al.
10
COLA ZERO as well as SPRITE ZERO, FANTA ZERO, and number of other
beverages, all including the term ZERO.
Standing
“Any person who believes that he would be damaged by the
registration of a mark upon the principal register . . . may,
file an opposition . . . stating the grounds therefor.” Section
13 of the Trademark Act of 1946, 15 U.S.C. § 1063(a). Thus, a
party has standing to oppose in a Board proceeding if it can
demonstrate a real interest in the proceeding. Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982), citing Universal Oil Prods. Co. v. Rexall Drug and Chem.
Co., 463 F.2d 1122, 174 USPQ 458 (CCPA 1972).
It is recognized that a party need not be a
manufacturer or seller of the goods in connection with
which a descriptive, misdescriptive, or merely
ornamental designation is used in order to object to
the registration thereof. It is sufficient that the
party objecting to such registration be engaged in the
manufacture and/or sale of the same or related goods
and that the product in question be one that could be
produced in the normal expansion of that person’s
business. If the designation in question is found to
be merely descriptive, merely ornamental or the like,
damage is presumed since a registration thereof with
the statutory presumptions afforded the registration
would be inconsistent with the right of another person
to use these designations or designs in connection with
the same or similar goods as it would have the right to
do when and if it so chooses. Thus, opposer as a
competitor of applicant, is a proper party to challenge
applicant’s right of registration.

Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282-83
(TTAB 1969). See also 3 J. Thomas McCarthy, McCarthy on

20 Application Ser. No. 77181474, filed May 15, 2007, pursuant to
Opposition Nos. 91178953 et al.
11
Trademarks and Unfair Competition, § 20:11 (4th ed. 2007)
(“Standing to oppose is presumed when the mark sought to be
registered is allegedly descriptive of the goods and the opposer
is one who has a sufficient interest in using the descriptive
term in his business.”).
Ambev has introduced evidence that it is a beverage company
engaged in the marketing and sale of beverages in the United
States and that it has filed an application for a trademark
including the term ZERO for soft drinks. Ambev’s application has
been suspended pending the outcome of this proceeding. In view
thereof, and because opposer’s potential interest in using the
term ZERO on beverages sold in the United States is sufficient to
demonstrate that opposer has a real interest in this proceeding,
opposer has established its standing.
Acquired Distinctiveness
As Yamaha explains, when matter proposed for registration
under Section 2(f) is approved by the United States Patent and
Trademark Office for publication, there is a presumption that the
examining attorney found a prima facie case of acquired
distinctiveness by the applicant for registration. Yamaha, 6
USPQ2d at 1004. In an opposition, “the opposer has the initial
burden to establish prima facie that the applicant did not
satisfy the acquired distinctiveness requirement of Section
2(f).” Id. “If the opposer does present its prima facie case

Section 1(b)of the Trademark Act.
Opposition Nos. 91178953 et al.
12
challenging the sufficiency of applicant’s proof of acquired
distinctiveness, the applicant may then find it necessary to
present additional evidence and argument to rebut or overcome the
opposer’s showing. . . .” Id. However, under this analysis, the
“ultimate burden of persuasion” is on the applicant. Id.
Finally, the standard for applicant to meet is preponderance of
the evidence, “although logically that standard becomes more
difficult to meet as the mark’s descriptiveness increases.”
Yamaha, 6 USPQ2d at 1008.
As discussed above, descriptiveness is not an issue given
applicant’s resort to Section 2(f) of the Trademark Act.
Nonetheless, it is necessary to determine, at the outset, the
degree of descriptiveness of ZERO as used in connection with the
identified goods given that this determination will have a direct
bearing on the amount of evidence necessary to show acquired
distinctiveness. In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). The amount
and character of evidence required to establish acquired
distinctiveness depends on the facts of each case and
particularly on the nature of the mark sought to be registered.
See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ
34, 39 (CCPA 1970). Typically, more evidence is required where a
mark is so highly descriptive that purchasers seeing the matter
in relation to the named goods or services would be less likely
to believe that it indicates source in any one party. See, e.g.,
Opposition Nos. 91178953 et al.
13
In re Bongrain Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727,
1729 (Fed. Cir. 1990).
There is no question that the beverage industry, including
the soft drink industry, commonly uses the term ZERO in direct
association with nutritional facts or the names of ingredients
such as “calories,” “carbohydrates,” “carbs,” or “sugar” to
identify the contents of soft drinks. Both parties have
introduced ample evidence to show that terms such as “zero-
calorie,” “zero-carb,” “zero-sugar,” and the like are widely used
by soft drink manufacturers. The testimony of Mary Krizan,
Ambev’s witness who testified that she purchased numerous
beverages bearing the term ZERO, disclosed products such as
ROCKSTAR ZERO CARB energy drink; EATING RIGHT, a “zero calorie”
enhanced water beverage; ZEVIA, a diet soda with “ZERO calories”;
and PEPSI MAX, a “zero calorie cola.” Krizan Test. P. 5, Exh.
Nos. 2, 18, 26, 64, and 72.
Ambev also introduced a number of third party trademark
registrations for beverage marks including the disclaimed term
ZERO such as “NO-CAL ZERO CALORIE SODA POP” and design (non-
alcoholic beverages), “NO CARBS ZERO CALORIES” and design
(drinking water with vitamins), “ZERO CALORIE SARATOGA SPLASH
(flavored spring water beverages),” and “ZERO CAL” and design
(soft drinks). Ambev’s second NOR, dated April 28, 2010. While
we do not consider these registrations as evidence proving use,
these third party registrations can be considered in the manner
Opposition Nos. 91178953 et al.
14
of a dictionary to show the descriptive nature of ZERO for soft
drinks.
Similarly, TCCC introduced product samples for a number of
its beverages featuring the term ZERO in direct association with
nutritional ingredients, such as “zero calorie cola,” “zero sugar
lemon lime soda,” and “zero calorie sports drink.” Baker Test.,
Exh. Nos. 1, 3, and 15.
While the foregoing evidence demonstrates that ZERO is
treated as merely descriptive when used in connection with the
nutritional facts or the names of ingredients of a variety of
beverages including soft drinks, some of the evidence of record
is more ambiguous. During the examination of Serial No. 78580598
for the mark COCA-COLA ZERO, TCCC introduced a number of third
party registrations for beverage marks including the term ZERO on
the Principal Register without a disclaimer of ZERO. Thus, LACTO
ZERO (milk), BRUT ZERO (sparkling wines), SUB ZERO (alcoholic
drinks), ZERO MANIPULATION (wines), TRIPLE ZERO (tequila and
liqueurs), and ZERO LIMIT (smoothies) are all registered for
various beverages without a disclaimer of zero. Application
Serial No. 78580598, applicant’s Response to Office Action, dated
October 3, 2005.
These instances tend to show that when ZERO is not used in
direct association with beverage ingredients, the treatment of
ZERO as merely descriptive is mixed, at best. The evidence
indicates that while ZERO may describe the particular amount of
Opposition Nos. 91178953 et al.
15
an ingredient or the nutritional content, by itself, ZERO only
describes a general absence of some ingredient normally present.
Thus, we are convinced that while ZERO merely describes a feature
or characteristic of soft drinks, it is not so highly descriptive
as to identify a product category.
Acquired distinctiveness may be shown by direct and/or
circumstantial evidence. Direct evidence includes actual
testimony, declarations or surveys of consumers as to their state
of mind. Circumstantial evidence is evidence from which consumer
association might be inferred, such as years of use, extensive
amount of sales and advertising, and any similar evidence showing
wide exposure of the mark to consumers. There is no fixed rule
for the amount of proof necessary to demonstrate acquired
distinctiveness. Yamaha, 6 USPQ2d at 1008 (evidence required to
show acquired distinctiveness is directly proportional to the
degree of non-distinctiveness of the mark at issue). Thus, even
long periods of substantially exclusive use may not be sufficient
to demonstrate acquired distinctiveness. Moreover, the burden is
particularly heavy when that use has not been exclusive. In re
Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years
of use not sufficient given similarity of configuration to other
guitars).
We first consider opposer’s claim that applicant’s evidence
is insufficient to establish acquired distinctiveness. Ambev
argues that TCCC must prove acquired distinctiveness as of the
Opposition Nos. 91178953 et al.
16
date the Section 2(f) claim was made, and not as of the pendency
of these proceedings. Opposer’s Br. at 22. This is incorrect.
It is well-settled that acquired distinctiveness and buyer
recognition are to be tested in an opposition proceeding as of
the date the issue is under consideration. The filing date or
even the publication date is not a cutoff for any evidence
developing after that time. Evidence of sales and advertising
after the filing date of the application will be considered. See
McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA
1966); Harsco Corp. v. Elec. Sci., Inc., 9 USPQ2d 1570 (TTAB
1988); and Kaiser Aluminum & Chem. Corp. v. Am. Meter Co., 153
USPQ 419 (TTAB 1967).
TCCC’s eight years of continuous use since at least 2004 on
SPRITE ZERO, COCA-COLA ZERO and the other ZERO marks is more than
five years contemplated by Section 2(f), but this is not
necessarily conclusive or persuasive on the showing of acquired
distinctiveness. In prior cases involving usage of comparable or
even longer duration, and with some of these uses even being
coupled with significant sales and advertising expenditures (not
to mention direct evidence of customers’ perceptions), the Board
or its primary reviewing court has found a failure to demonstrate
acquired distinctiveness within the meaning of Section 2(f). See
In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156, 158 (CCPA
1973); and In re Packaging Specialists, Inc., 221 USPQ 917, 920
(TTAB 1984).
Opposition Nos. 91178953 et al.
17
Applicant’s sales, on the other hand, suggest that applicant
has enjoyed a substantial degree of success with its ZERO line of
beverages. In application Ser. No. 78580598 for the mark COCA-
COLA ZERO, TCCC identified sales in the two years preceding its
2007 claim of acquired distinctiveness as exceeding one billion
dollars, with over one-third of that amount attributable to sales
of COCA-COLA ZERO alone. By 2007, over fifty million 288-fluid
ounce cases of COCA-COLA ZERO had been sold by Applicant.
Application Serial No. 78580598, applicant’s Response to Office
Action, dated January 27, 2007; Baker Test. at 62, Exh. 19.
These are significant numbers by any measure. Furthermore,
according to the non-confidential portions of the Baker
testimony, sales of the ZERO line of beverages, including COCA-
COLA ZERO, SPRITE ZERO, PIBB ZERO, FANTA ZERO, and other ZERO
beverages have increased in the ensuing years to over four
billion dollars, with over eight hundred and sixty million cases
of COCA-COLA ZERO being sold. Baker Test. at 67, 70.
Advertising expenditures since 2004 likewise are a
substantial sum. By early 2007, TCCC claimed that it had spent
in excess of one hundred fifty million dollars advertising
and promoting its ZERO family of beverage products, which
includes COCA-COLA ZERO, SPRITE ZERO, FANTA ZERO, VAULT
ZERO, and PIBB ZERO, through a myriad of advertising and
promotional channels. Applicant has spent over one hundred
million dollars advertising and promoting COCA-COLA ZERO
alone.

Application Serial No. 78580598, applicant’s Response to Office
Action, dated January 27, 2007. Again, we note that these are
Opposition Nos. 91178953 et al.
18
significant numbers by any measure. According to the non-
confidential portions of the Baker testimony, TCCC’s advertising
expenditures for its entire line of ZERO line of beverages had
risen to five hundred and thirty seven million dollars by mid-
2010. Baker Test. at 111-112.
TCCC also has submitted a variety of advertising samples
showing how the ZERO line of beverages is presented to consumers.
The following representative example is from the Section 2(f)
showing in application Serial No. 78580598:

Application Serial No. 78580598, applicant’s Response to Office
Action, dated January 27, 2007. We agree with TCCC that such
advertisements attempt to convey to the consumer that ZERO as
used on the goods is intended to serve in a “trademark sense as
part of the product brand name” and not merely as conveying
nutritonal information. Applicant’s Br. at 21.
Opposition Nos. 91178953 et al.
19
Both during examination and during this proceeding, TCCC
submitted numerous articles demonstrating unsolicited media
coverage of its ZERO line of marks. Most of these fall into the
category of press releases picked up by media outlets or stories
about marketing campaigns. Nevertheless, the articles show that
the ZERO line of beverages and TCCC’s numerous marketing
campaigns have been widely discussed in the media.
Finally, both parties submitted surveys. Ambev introduced
the survey and testimony deposition of Dr. Dupont who sought to
determine “the main function of the word “zero” . . . in the
brand name Coca-Cola Zero.” Dupont testimony at 6. The concern
with the Dupont survey is that it is a survey more of meaning
than source identification. The source identifying function of a
trademark and the “main function” – as Dr. Dupont put it - of a
word in that mark are not necessarily the same things. If, as
Ambev argues, the term ZERO is merely descriptive, it would not
be inconsistent for consumers to view the term ZERO as both
describing a characteristic of COCA-COLA ZERO while still
perceiving the term to be a source indicator. The “main
function” premise of the survey and source identification are not
mutually exclusive. Put another way, it is possible that a “main
function” of ZERO in TCCC’s marks is to identify a characteristic
of applicant’s goods, but consumers nevertheless may have come to
recognize that applicant is the only entity that identifies the
characteristic of its goods in that manner. It is not enough
Opposition Nos. 91178953 et al.
20
that consumers merely know that ZERO means “something” is missing
from COCA-COLA ZERO. The survey needs to test whether consumers
view ZERO in the marks as indicating a source of the goods.
TCCC’s rebuttal survey was more on point. Rather than look
for the “main function” of ZERO, the Simonson survey attempted to
rebut the Dupont survey by determining whether ZERO in COCA-COLA
ZERO served a trademark function. The Simonson survey examined
acquired distinctiveness to see if ZERO was associated with one
company or more than one company. Applicant’s Br. at 26.
Simonson found that 61% of respondents “perceive” that ZERO was
associated with only one company as opposed to 6% for the term
DIET. Simonson Test. pp. 56-57.
We find that the Simonson survey validates the significant
sales and advertising numbers discussed above. Consumers have
been exposed to TCCC’s ZERO products and advertising on
television, over the radio, via print media, and in every
conceivable retail outlet. Billions of the products have been
sold since 2004. Ambev’s attempt to show that the ZERO marks
have not acquired distinctiveness simply fails in light of the
scope of TCCC’s significant sales and marketing numbers.
Opposer also argues that applicant has not enjoyed exclusive
use of ZERO on beverages due to third-party use of ZERO on a
variety of beverages as well. Opposer’s Br. at 27. As an
initial matter, there is no requirement that TCCC’s use be
entirely exclusive. It need only be substantially exclusive.
Opposition Nos. 91178953 et al.
21
The substantially exclusive standard makes allowance for use by
others that may be inconsequential or infringing, which does not
necessarily invalidate the applicant’s claim. L.D. Kichler Co.
v. Davoil, Inc., 52 USPQ2d 1307, 1309 (Fed. Cir. 1999).
Opposer’s evidence does not establish substantial third
party use of ZERO in connection with soft drinks and/or syrups.
While several third parties may have made use of ZERO in
connection with beverages and numerous third parties have used
“zero-calorie,” “zero-carbs,” and other such highly descriptive
zero-formative phrases, such use does not undercut TCCC’s claim
of acquired distinctiveness. We find that the cumulative effect
of TCCC’s use of ZERO in connection with its line of beverages is
so extensive that it qualifies as “substantially exclusive” as
required under Section 2(f). Kichler at 1309.
We conclude that applicant’s use has been substantially
exclusive and that the evidence of record is sufficient to
support registration on the Principal Register under Section
2(f).
DECISION: The oppositions are dismissed with prejudice.