The opinion
Original Decision Mailed: Redesignation:
May 3, 2019 March 30, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc.
v.
The Coca-Cola Company
Opposition Nos. 91178927 (Parent Case); 91180771; 91180772; 91183482;
91185755; 91186579; and 91190658
Barbara A. Solomon, Laura Popp-Rosenberg, and Emily Weiss of Fross Zelnick
Lehrman & Zissu, P.C., for Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc.
Bruce W. Baber of King & Spalding LLP for The Coca-Cola Company.
By the Board:
The Board has chosen to redesignate the decision that issued on May 3, 2019 as
a precedent. A copy of the decision, bearing such designation, is attached.
####
This Decision is a
Precedent of the TTAB
Mailed: May 3, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc.
v.
The Coca-Cola Company
Opposition Nos. 91178927 (Parent Case); 91180771; 91180772; 91183482;
91185755; 91186579; and 91190658
Barbara A. Solomon, Laura Popp-Rosenberg, and Emily Weiss of Fross Zelnick
Lehrman & Zissu, P.C., for Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc.
Bruce W. Baber of King & Spalding LLP for The Coca-Cola Company.
Before Zervas, Hightower, and Lynch,
Administrative Trademark Judges.
Hightower, Administrative Trademark Judge:
On September 27, 2018, after remand of this case by the Court of Appeals for the
Federal Circuit in Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d
1041 (Fed. Cir. 2018), the Board resumed proceedings and ordered the parties to
rebrief certain issues. 175-77 TTABVUE. In lieu of a brief, Applicant The Coca-Cola
Company (TCCC) filed, without consent from Opposers Royal Crown Company, Inc.
and Dr Pepper/Seven Up, Inc. (RC), a motion to amend its sixteen pending
applications subject to these proceedings to disclaim the word ZERO pursuant to
Opposition Nos. 91178927 et al.
Trademark Act Section 6, 15 U.S.C. § 1056, and Trademark Rule 2.133, 37 C.F.R.
§ 2.133. Motion to Amend, 183 TTABVUE. “TCCC believes that entry of these
disclaimers will resolve the issues in these proceedings without any further activity
needed on the part of the Board.” Motion to Amend, 183 TTABVUE 2.1
RC filed a brief in opposition, arguing in part that: “Opposers’ request for relief
has always been a determination that ‘zero’ is generic or merely descriptive. Entry of
a disclaimer is the manner in which that relief is demonstrated, but a disclaimer in
and of itself does not resolve the legal issues in this opposition.” Opposition to Motion
to Amend at 2, 184 TTABVUE 3. RC asks that the Board defer ruling on the motion
to amend until it has issued a full decision on the merits.
In reply, TCCC argues that the issues RC raises are moot in light of its agreement
to enter the disclaimers. See Reply in Support of Motion to Amend at 4, 186TTABVUE
5. “Granting the motion now will result in the termination of these proceedings
without any further unnecessary expenditure of time or resources by theBoard or by
the parties; no ‘final decision’ is necessary for Opposers to obtain the relief they seek.”
Id. at 5, 186 TTABVUE 6. TCCC further notes that “Opposers’ pleadings contain no
prayer for such relief [a declaration as to genericness ordescriptiveness] . . . , and the
Board could not entertain such a request for declaratoryrelief in any event.” Id.
1 We find that this motion supersedes TCCC’s pending motions, filed July 22, 2016, to amend
the descriptions of the goods in the four applications subject to Opposition Nos. 91185755 and
91190658. On August 26, 2016, consideration of those motions was deferred until conclusion
of the appeal. The superseded motions are dismissed as moot.
-2-
Opposition Nos. 91178927 et al.
We agree with TCCC. Disclaimer of the term ZERO from each of the applications
was the only relief sought by RC in its Amended Notice of Opposition. 39 TTABVUE.
Because the disclaimers are acceptable, the Board in its discretion grants TCCC’s
motion under Trademark Rule 2.133(a). See Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 514.03 (2018) (“The Board, in its discretion, may grant
a motion to amend an application or registration that is the subject of an interpartes
proceeding, even if the other party or parties do not consent thereto.”).
The amendments are approved, the reference to Section 2(f) in part is deleted, and
the following disclaimer is entered in each of the applications listed below: “No claim
is made to the exclusive right to use ‘ZERO’ apart from the mark as shown.”
Opposition No. Application No. Mark
91178927 78580598 COCA-COLA ZERO
91180771 78316078 SPRITE ZERO
91180772 78664176 COKE ZERO
91183482 77175066 COKE CHERRY ZERO
91183482 77175127 CHERRY COCA-COLA ZERO
91183482 77176108 COCA-COLA VANILLA ZERO
91183482 77176127 CHERRY COKE ZERO
91183482 77176279 COCA-COLA CHERRY ZERO
91183482 77097644 PIBB ZERO
91185755 76674382 COKE ZERO ENERGY
91185755 76674383 COKE ZERO BOLD
91185755 77176099 VANILLA COKE ZERO
91186579 77257653 VANILLA COCA-COLA ZERO
-3-
Opposition Nos. 91178927 et al.
Opposition No. Application No. Mark
91186579 77309752 POWERADE ZERO
91186579 78620677 FANTA ZERO
91190658 78698990 VAULT ZERO
These consolidated opposition proceedings are dismissed.
-4-