Bourbon and Coke, Served with a Splash of ®

Two recent decisions have resulted in a tasty trademark cocktail.

In the first case, the TTAB found “zero” reason to sustain the opposition proceedings filed by Companhia de Bebidas das Américas – AMBEV (“Ambev”), maker of Pepsi, against The Coca-Cola Company’s (“Coca-Cola”) 17 applications to register marks containing the word ZERO for soft drinks (including COKE ZERO, SPRITE ZERO, and POWERADE ZERO, among others). In each of its applications, Coca-Cola claimed that ZERO had acquired distinctiveness under Section 2(f) of the Trademark Act. Ambev opposed registration of the applications on the basis that the term ZERO was purportedly merely descriptive and that Coca-Cola’s evidence of acquired distinctiveness was insufficient to allow registration on the Principal Register under Section 2(f).

The Board looked at Coca-Cola’s substantial sale success, advertising expenditures and unsolicited media coverage of its ZERO line of beverages. For example, sales of COCA-COLA ZERO for 2005 and 2006 exceeded $1 billion. Despite the common use of the term “zero” in the beverage industry “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,” the Board dismissed the consolidated opposition, finding that Coca-Cola’s use of ZERO has been substantially exclusive and that the term ZERO has acquired secondary meaning.

Turning to adult beverages, Maker’s Mark also recently sealed up trademark protection for its signature red-dripping wax seal. On May 9, the Sixth Circuit upheld an April 2010 decision that the seal on a bottle of Maker’s Mark is a protectable trademark.

Maker’s Mark Distillery is the producer of fine Kentucky bourbon that, for the past 50 years, has been sold in bottles capped with a seal of red wax dripped down the bottle’s neck. Cuervo began selling a “super premium” tequila in a bottle with a red wax seal. Cuervo claimed the untrimmed drips “created a unique and artisanal look.”

In 2003, Maker’s Mark filed suit, alleging that the Cuervo bottle with the untrimmed red wax seal infringed and diluted its registered trademark. Obviously, dilution is a serious offense in the liquor business.  Trial was held in November 2009; Maker’s Mark brought in an expert on “wax composition,” a collector of Maker’s Mark memorabilia, and a “bottle closure” expert. After a lengthy analysis, the Court found Cuervo had committed trademark infringement and entered an injunction barring further infringement. The appeals court agreed, finding the red dripping wax seal “inherently distinctive, because it is a unique mark used in an unusual way to draw in the consumer.”

Cheers! Salud!