The Trademark Review monthly newsletter is now available. This month’s newsletter covers the recent TTAB decision regarding Coke ZERO and Gucci’s award of nearly $5 million for Guess’ infringement of its trademarks.

1. Trademark Review
VOLUME 2 | ISSUE 6 JUNE 2012
In This Issue Is Coke Known for ZERO?
In a non-precedential opinion, the Trademark Trial and
Appeal Board (“the Board”) ruled that The Coca-Cola
• Is Coke Known for ZERO?
Company (“TCCC”) has shown that it has acquired
• Gucci Is Awarded Nearly $5
distinctiveness in ZERO as used on soft drinks. TCCC filed
Million for Guess’ Infringement 17 applications for marks containing the term ZERO for use
in connection with soft drinks (SPRITE ZERO, COKE ZERO,
of its Trademarks
etc). In each application, TCCC claimed that ZERO has
acquired distinctiveness such that consumers recognize it
as identifying the source of the product. AMBEV opposed
each application claiming that ZERO is merely descriptive
and, therefore, free for others to use. AMBEV also
Who We Are argued that TCCC failed to prove that ZERO has acquired
Knobbe, Martens, Olson & Bear, LLP is a law firm distinctiveness.
practicing exclusively in the area of intellectual
TCCC supported its applications with evidence of use of
property law. We have been recognized as a top law
firm for trademark litigation and prosecution in the ZERO, including eight years of continuous use on several
United States in 2012 and for the last several years by products, substantial sales and significant advertising
Euromoney’s Managing Intellectual Property (MIP) expenditures. TCCC also submitted advertising samples
magazine. Our lawyers have an extensive practice in showing pictures of its “ZERO” products with the slogan
trademark licensing, unfair competition, trade dress, “Original Taste. Zero Sugar. Zero Calories. Zero Guilt”.
rights of publicity copyrights and false advertising,
and considerable experience before the Trademark
which the Board agreed shows an “attempt to convey to the
Trial and Appeal Board in oppositions, cancellations consumer that ZERO as used on the goods is intended to
and concurrent rights proceedings. serve in a ‘trademark sense as part of the product brand
name’ and not merely as conveying nutritional information.”
• Exclusive practice in the area of intellectual property Finally, TCCC submitted survey evidence showing that 61%
since1962
of respondents perceived that ZERO was associated with
• ore than 275 lawyers and scientists, many of whom
M only one company as opposed to only 6% for the term DIET.
have advanced degrees in various technologies
The Board found that “while ZERO merely describes a
• nternationally recognized leaders in IP across a vast
I feature or characteristic of soft drinks, it is not so highly
spectrum of technology areas descriptive as to identify a product category.” The Board
© 2012 Knobbe, Martens, Olson Bear, LLP, a Limited Liability Partnership including Professional Corporations. All rights reserved. The information contained in this
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and receipt does not constitute an attorney-client relationship. You should seek professional counsel before acting upon any of the information contained in this newsletter.
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2. reviewed evidence showing that the beverage industry commonly uses the term “zero” in direct association with nutritional
facts, such as “zero calories” and “zero carbs.” The evidence also included third party trademark registrations for marks that
include the term ZERO, though disclaimed, such as “NO-CAL ZERO CALORIE SODA POP” and design. Other evidence, however,
showed use of ZERO in registered marks without any disclaimer of ZERO, such as LACTO ZERO for milk and BRUT ZERO for
sparkling wines. Based on the evidence, the Board found that when ZERO is used with nutritional facts or ingredients, the use
is merely descriptive, but when not used in direct association with ingredients, “the treatment of ZERO as merely descriptive is
mixed, at best.”
TCCC also had the burden to show that its use of ZERO on beverages has been substantially exclusive in order to show that it
has acquired distinctiveness. The Board found that AMBEV’s evidence did not establish substantial third party use of ZERO, and
held “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).”
Companhia de Bebidas das Americas – AMBEV v. The Coca Cola Company (TTAB May 2, 2012)
Gucci Is Awarded Nearly $5 Million for Guess’ Infringement of its
Trademarks
A New York Federal Judge ruled that Gucci America Inc. is entitled to receive more than $4.6 million in damages from Guess
Inc.’s infringing use of a particular G pattern and color scheme. The Judge found that Guess and its licensees knowingly copied
Gucci’s “Repeating GG Pattern”:
Gucci shoe Guess shoe
The Judge further ruled that the Repeating GG Pattern is a famous mark within the meaning of the Federal Trademark Dilution
Revision Act and that Guess’ use of that pattern was likely to cause dilution by blurring.
The Judge also ruled that one of Guess’ licensees willfully infringed Gucci’s green-red-green stripe pattern which is registered
for certain goods, including footwear. The licensee continued to ship shoes bearing that pattern after Guess ordered a recall of
the shoes and asked for the shoes to be pulled from Guess’ website and stores.
The Judge issued a permanent injunction barring Guess from using the infringing G pattern, the green-red-green stripe and
certain other G marks.
Gucci had no evidence of actual damages in the form of lost sales or harm to its brand value. Thus, the only possible basis
for recovery of actual damages would have been a reasonable royalty. The Judge, however, found that Gucci’s evidence of a
reasonable royalty was highly speculative, and thus, Gucci was not entitled to any actual damages.
Gucci was awarded an accounting of Guess’ profits on the infringing product sold by Guess and by licensees.
Gucci America Inc. v. Guess Inc. et al., (S.D.N.Y. May 21, 2012)
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