Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA801731
`02/15/2017
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207116
`
`Plaintiff
`The Coca-Cola Company
`
`BRUCE W BABER
`KING & SPALDING LLP
`1180 PEACHTREE ST
`ATLANTA, GA 30309
`UNITED STATES
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`Brief on Merits for Plaintiff
`
`Bruce W. Baber
`
`bbaber@kslaw.com, kmccarthy@kslaw.com, nytrademarks@kslaw.com
`
`/Bruce W. Baber/
`
`02/15/2017
`
`Attachments
`
`02.15 TCCC Brief.pdf(113098 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`THE COCA-COLA COMPANY,
`
`Opposer,
`
`v.
`
`
`
`BOVIS FOODS, LLC,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`OPPOSITION NO. 91207116
`
`OPPOSER THE COCA-COLA COMPANY’S
` OPENING BRIEF ON THE MERITS
`
`
`
`
`
`
`
`
`
`Bruce W. Baber
`Kathleen E. McCarthy
`
`KING & SPALDING LLP
`
`1180 Peachtree Street
`Atlanta, Georgia 30309
`404-572-4600
`
`1185 Avenue of the Americas
`New York, New York 10036
`212-556-2100
`
`Attorneys for Opposer
`THE COCA-COLA COMPANY
`
`

`

`TABLE OF CONTENTS
`
`
`
`TABLE OF AUTHORITIES ...................................................................................3
`
`
`INTRODUCTION ...................................................................................................5
`
`
`STATEMENT OF THE ISSUES ............................................................................8
`
`
`DESCRIPTION OF THE RECORD .......................................................................8
`
`
`A.
`
`B.
`
`C.
`
`
`
`The File History ................................................................................9
`
`TCCC’s Evidence .......................................................................... 10
`
`Applicant’s Evidence ...................................................................... 11
`
`BACKGROUND AND RELEVANT FACTS ......................................................... 12
`
`
`A.
`
`B.
`
`C.
`
`D.
`
`
`
`The Parties .................................................................................... 12
`
`The Application .............................................................................. 13
`
`The Present Opposition Proceeding .............................................. 14
`
`Applicant’s MARGARITA ZERO Products ..................................... 15
`
`SUMMARY OF ARGUMENT .............................................................................. 18
`
`
`ARGUMENT AND CITATION OF AUTHORITIES............................................... 18
`
`
`I.
`
`
`II.
`
`
`
`
`
`TCCC HAS STANDING TO OPPOSE THE APPLICATION ..................... 19
`
`THE CLAIMED MARK “MARGARITA ZERO”
`IS MERELY DESCRIPTIVE OF THE GOODS
`CLAIMED IN THE APPLICATION ............................................................ 20
`
`The Governing Law Regarding TCCC ‘s Opposition ..................... 20
`
`TCCC Has Carried Its Initial Burden .............................................. 23
`
`A.
`
`B.
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`- 1 -
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`

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`C.
`
`
`D.
`
`
`
`Applicant Has Not Properly Pleaded
`A Claim Of Acquired Distinctiveness ............................................. 26
`
`Applicant Has Not Proven By A Preponderance
`Of The Evidence That MARGARITA ZERO Has
`Acquired Distinctiveness ................................................................ 28
`
`CONCLUSION .................................................................................................... 30
`
`
`
`EXHIBIT A – EVIDENTIARY OBJECTIONS ..................................................... A-1
`
`
`
`CERTIFICATE OF SERVICE
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`
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`- 2 -
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`

`TABLE OF AUTHORITIES
`
`
`
`CASES
`
`
`
`Baig v. The Coca-Cola Co.,
` 69 F. Supp. 3d 766 (N.D. Ill. 2014),
` aff’d, 607 Fed. Appx. 557 (7th Cir. 2015) ....................................................... 25
`
`Cap Title, LLC v. Capitol Title Insurance Agency, Inc.,
` Opp. No. 91163200, 2005 WL 950126 (T.T.A.B. 2005) ........................... 22, 26
`
`Coach Services, Inc. v. Triumph Learning LLC,
` 668 F.3d 1356, 101 U.S.P.Q.2d 1713 (Fed. Cir. 2012) ................ 7, 27n, 28, 29
`
`Colonial Arms Corp. v. Trulock Firearms, Inc.,
` 5 U.S.P.Q.2d 1678, 1987 WL 123977 (T.T.A.B. 1987) ................................... 26
`
`Flame & Wax, Inc. v. Laguna Candles,
` Opp. No. 91200223, 2013 WL 5655836 (T.T.A.B. Oct. 2, 2013) .................... 26
`
`Frank Lin Distillers Products, Ltd. v. NJoy Spirits, LLC,
` Opp. No. 91211205, 2016 WL 837731 (T.T.A.B. Feb. 5, 2016) ...................... 26
`
`In re British Customs, LLC,
` 2016 WL 5866948 (T.T.A.B. Sept. 21, 2016) ................................................. 29
`
`In re Capital Formation Counselors, Inc.,
` 219 U.S.P.Q. 916 (T.T.A.B. 1983) .................................................................. 22
`
`In re Cordua Restaurants LP,
` 110 U.S.P.Q.2d 1227 (T.T.A.B. 2014), aff’d on other grounds,
` 823 F.3d 594, 118 U.S.P.Q.2d 1632 (Fed. Cir. 2016) .................................... 29
`
`In re Dial-A-Mattress Operating Co.,
` 240 F.3d 1341 (Fed. Cir. 2001) ...................................................................... 28
`
`In re Gray Inc.,
` 3 U.S.P.Q.2d 1558 (T.T.A.B. 1987) ................................................................ 24
`
`In re Louisiana Fish Fry Products, Ltd.,
` 797 F.3d 1332, 116 U.S.P.Q.2d 1262 (Fed. Cir. 2015) ........................ 7, 28, 29
`
`In re Steelbuilding.com,
` 415 F.3d 1293 (Fed. Cir. 2005) ...................................................................... 29
`
`
`- 3 -
`
`

`

`Mini Melts, Inc. v. Reckitt Benckiser LLC,
` 118 U.S.P.Q.2d 1464, 2016 WL 3915987 (T.T.A.B. 2016) ............... 26, 27n, 29
`
`Montres Charmex S.A. v. Montague Corp.,
` Opp. No. 91191784, 2015 WL 4658973 (T.T.A.B. July 8, 2015) .................... 21
`
`Nextel Communications, Inc. v. Motorola, Inc.,
` Opp. No. 91161817, 2006 WL 1287527 (T.T.A.B. May 8, 2006) .......... 6, 22, 26
`
`Sheetz of Delaware, Inc. v. Doctor’s Associates Inc.,
` 108 U.S.P.Q.2d 1341, 2013 WL 5315963 (T.T.A.B. 2013) ....................... 21, 29
`
`The Topps Co., Inc. v. Panini America., Inc.,
` 113 U.S.P.Q.2d 1808, 2015 WL 766033 (T.T.A.B. 2015) ................... 18, 19, 24
`
`Wet Dog Media, Inc. v. Rodale, Inc.,
` Opp. No. 91193283, 2012 WL 5493577 (T.T.A.B. Oct. 18, 2012) .................. 25
`
`Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
` 840 F.2d 1572, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) ........ 6, 20, 21, 22, 23, 28n
`
`Young v. AGB Corp.,
` 152 F.3d 1377, 47 U.S.P.Q.2d 1752 (Fed. Cir. 1998) .................................... 18
`
`
`
`STATUTES AND OTHER AUTHORITIES
`
`
`
`15 U.S.C. § 1063(a) ............................................................................................ 18
`
`37 C.F.R. § 2.122(b)..............................................................................................9
`
`TBMP § 704.03(a) .................................................................................................9
`
`McCarthy on Trademarks and Unfair Competition (4th ed. 2016) ....................... 24
`
`- 4 -
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`

`

`INTRODUCTION
`
`
`In this opposition proceeding, opposer The Coca-Cola Company (“TCCC”)
`
`challenges whether applicant Bovis Foods, LLC (“Bovis Foods” or “Applicant”) is
`
`entitled to registration of the merely descriptive phrase MARGARITA ZERO for
`
`“non-alcoholic cocktail mixes,” with the generic term “margarita” disclaimed. The
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`phrase MARGARITA ZERO is, on its face, both plainly descriptive and highly
`
`descriptive of the goods—and Applicant recognized as much by making a claim under
`
`Section 2(f) during prosecution of the application in order to overcome the Examining
`
`Attorney’s rejection of the application under Section 2(e)(1). Applicant’s prima facie
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`2(f) claim, which was accepted by the Examining Attorney, was supported only by a
`
`declaration by a member of Applicant to the effect that the mark had been in
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`substantially exclusive and continuous use in commerce for at least the five years
`
`immediately preceding the date of the declaration. Applicant submitted no evidence in
`
`support of its claim of acquired distinctiveness.
`
`Discovery in this proceeding has disclosed that Applicant’s claim of five years of
`
`continuous use, made on February 1, 2012, was inaccurate. Applicant Bovis Foods
`
`did not even exist until October of 2009—less than three years before the declaration
`
`was signed. The record also shows that any use of the phrase MARGARITA ZERO
`
`made before Bovis Foods’ formation was by a separate entity, JGX, Inc., that has
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`never assigned or transferred to Applicant Bovis Foods any rights that JGX, Inc. may
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`have had based on its limited use, prior to October of 2009, of the phrase MARGARITA
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`ZERO.
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`- 5 -
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`The phrase MARGARITA ZERO, which is used by Applicant for a zero-calorie
`
`non-alcoholic margarita mix, is comprised of the disclaimed generic term MARGARITA
`
`and the descriptive term ZERO. The entire mark is therefore highly descriptive, and,
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`as a result, it requires substantial proof of acquired distinctiveness to be registrable
`
`despite its merely descriptive nature.
`
`Under well-settled and governing Federal Circuit precedent, opposer TCCC has
`
`only the “initial burden” in this proceeding of “challenging or rebutting” the evidence of
`
`distinctiveness made of record during prosecution of the application, i.e., to produce
`
`“sufficient evidence or argument” to “at least place the matter at issue.” Yamaha Int’l
`
`Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576-77, 6 U.S.P.Q.2d 1001 (Fed. Cir.
`
`1988). Once TCCC has carried that initial burden, the ultimate burden of persuasion
`
`then is borne by the applicant, which must prove by a preponderance of the evidence
`
`that the claimed mark has acquired distinctiveness or secondary meaning. Id. at
`
`1578-79.
`
`In this case, TCCC properly pleaded as its grounds for opposition that the
`
`claimed mark is merely descriptive and should therefore be refused registration under
`
`Section 2(e)(1). Applicant Bovis Foods, however, has never asserted—as an
`
`affirmative defense in its answer or otherwise—that the claimed mark has acquired
`
`distinctiveness. Applicant therefore has not properly put the issue of acquired
`
`distinctiveness at issue, as the Federal Circuit in Yamaha contemplated and as is
`
`required by numerous Board precedents.
`
` See, e.g.,
`
`id. at 1580; Nextel
`
`Communications, Inc. v. Motorola, Inc., Opp. No. 91161817, 2006 WL 1287527 at *1
`
`(T.T.A.B. May 8, 2006).
`
`
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`- 6 -
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`

`

`Even if Applicant had properly put the issue of acquired distinctiveness at issue,
`
`the evidence relating to acquired distinctiveness would fall far short of the proof
`
`required to show that “in the minds of the public, the primary significance of . . . [the]
`
`term [MARGARITA ZERO] is to identify the source of the product rather than the
`
`product itself.” In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1336, 116
`
`U.S.P.Q.2d 1262 (Fed. Cir. 2015) (emphasis added), quoting Coach Services, Inc. v.
`
`Triumph Learning LLC, 668 F.3d 1356, 1379, 101 U.S.P.Q.2d 1713 (Fed. Cir. 2012).
`
`The evidence of record shows that sales of both JGX, Inc.’s and Applicant’s
`
`MARGARITA ZERO products have been minimal, were for several years limited to
`
`sales from a single location, have been supported by virtually no advertising or
`
`promotional efforts, and are plainly insufficient to establish secondary meaning.
`
`Applicant has also offered no survey or other direct consumer evidence to support a
`
`claim of acquired distinctiveness.
`
`Based on the entire record, the evidence is insufficient to support a finding by
`
`the Board that the phrase MARGARITA ZERO has acquired distinctiveness—if that
`
`issue is even properly before the Board. TCCC’s opposition under Section 2(e)(1)
`
`should be sustained.
`
`
`
`
`
`
`
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`- 7 -
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`

`

`STATEMENT OF THE ISSUES
`
`
`The following are the issues to be decided in this opposition:
`
`1.
`
`Has opposer TCCC carried its initial burden of placing at
`
`issue whether Applicant Bovis Foods’ showing of acquired distinctiveness
`
`during prosecution was sufficient to justify registration of the phrase
`
`MARGARITA ZERO for non-alcoholic cocktail mixes?
`
`2.
`
`Has Applicant Bovis Foods asserted
`
`the defense of
`
`acquired distinctiveness in a manner that properly puts the question of
`
`acquired distinctiveness at issue?
`
`3.
`
`If Applicant Bovis Foods has properly presented its claim of
`
`acquired distinctiveness for decision, has Bovis Foods proven by a
`
`preponderance of the evidence that MARGARITA ZERO, as used by
`
`Applicant for its zero-calorie margarita mix product, has acquired
`
`distinctiveness?
`
`
`
`DESCRIPTION OF THE RECORD
`
`
`The record consists of the file history of the application at issue; the
`
`documentary and testimonial evidence made of record by TCCC during its opening
`
`testimony period; the documentary evidence made of record by Applicant Bovis Foods
`
`during its testimony period; and the documentary evidence made of record by TCCC
`
`during its rebuttal testimony period.
`
`
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`- 8 -
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`A.
`
`The File History
`
`The materials submitted in connection with the prosecution of Applicant’s
`
`application to register MARGARITA ZERO, Serial No. 85-384,208 (the “Application”),
`
`are automatically of record in this proceeding. 37 C.F.R. § 2.122(b); TBMP
`
`§ 704.03(a).
`
`The prosecution history of the Application includes:
`
`•
`
`the original application, filed on July 29, 2011, which claimed dates of first
`
`use anywhere and in commerce at least as early as 2001 and was signed
`
`by Nick Bovis in his capacity as a member of Applicant;
`
`• a first office action, dated November 22, 2011, in which the Examining
`
`Attorney rejected the application under Section 2(e)(1) on the grounds
`
`that the claimed mark was merely descriptive and required a disclaimer of
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`the generic term “margarita”;
`
`• Applicant’s February 1, 2012 response to the office action, in which
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`Applicant (1) disclaimed any exclusive rights to use MARGARITA apart
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`from the mark as shown and (2) submitted a claim of acquired
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`distinctiveness under Section 2(f), signed by Nick Bovis on February 1, in
`
`which Mr. Bovis stated that the mark “has become distinctive of the
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`goods/services through the applicant’s substantially continuous and
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`exclusive use in commerce . . . for at least the five years immediately
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`before the date of this statement”; and
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`• An e-mail “Notification of Notice of Publication” and Notice of Publication,
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`both dated March 7, 2012, and an Official Gazette Publication
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`Confirmation dated March 27, 2012.
`
`
`TCCC’s Evidence
`
`B.
`
`TCCC introduced the following evidence during its case in chief
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`• The testimony deposition of Nick Bovis of Applicant taken on August 10.,
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`2016, during which TCCC introduced deposition exhibits Bovis 1 through
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`Bovis 12 and Applicant introduced deposition exhibits Bovis 13 through
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`16;1
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`• TCCC’s Opposer’s Notice of Reliance, filed August 29, 2016 (43
`
`TTABVUE),2 with which TCCC made of record:
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`• Discovery responses of Applicant in this proceeding, identified
`
`as TCCC Exhibits A through E;
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`• TSDR records for applications and registrations owned by
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`Applicant Bovis Foods or related entities, identified as TCCC
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`Exhibits F through H; and
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`• TSDR records for applications owned by opposer TCCC for
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`registration of marks
`
`that
`
`include ZERO
`
`for beverage
`
`products, identified as TCCC Exhibits I through N.
`
`
`1
`The transcript of Mr. Bovis’ testimony, cited herein as “Bovis Tr. __,” will be filed
`in accordance with Trademark Rule 2.123(f).
`
` 2
`
`References herein to material in the record are by the TTABVUE docket
`
`number, in the form “[#] TTABVUE,” followed by a more specific identification of the
`material as appropriate.
`
`
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`- 10 -
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`

`

`During its rebuttal period, TCCC filed, on December 12, 2016, its “Opposer’s
`
`Rebuttal Notice of Reliance” (48 TTABVUE, 49 TTABVUE),3 with which TCCC made of
`
`record:
`
`•
`
`the Board’s decisions in Companhia de Bebidas das Américas –
`
`AMBEV v. The Coca-Cola Company, Opposition Nos. 91178953,
`
`et al. (T.T.A.B. May 2, 2012), and Royal Crown Co. v. Dr Pepper /
`
`Seven Up, Inc. v. The Coca-Cola Company, Oppositions Nos.
`
`911778927, et al. (T.T.A.B. May 23, 2016), identified as TCCC
`
`Exhibits O and P, respectively;
`
`• additional documents relating to the prosecution of applications
`
`owned by TCCC for registration of marks that include ZERO for
`
`beverage products, identified as TCCC Exhibits Q through W; and
`
`• copies of registrations of marks registered in International Class
`
`32, in each of which “zero” or a phrase that includes “zero” was
`
`disclaimed, identified as TCCC Exhibits X-1 through X-13.
`
`
`Applicant’s Evidence
`
`C.
`
`During its testimony period, Applicant neither took nor introduced any testimony
`
`of any witnesses. On October 26, 2016, Applicant filed four notices of reliance,
`
`namely: (1) “Applicant’s First Notice of Reliance” (44 TTABVUE), to which Applicant
`
`attached Applicant’s Exhibits 1 through 4; (2) “Applicant’s Second Notice of Reliance”
`
`
`3
`TCCC’s December 12, 2016 Rebuttal Notice of Reliance was filed in two parts.
`Part 1, which consists of the notice and TCCC Exhibits O through R, was filed as 48
`TTABVUE. Part 2, which consists of a second copy of the notice and TCCC Exhibits S
`through X-13, was filed as 49 TTABVUE.
`
`
`
`- 11 -
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`

`

`(45 TTABVUE), to which Applicant attached Applicant’s Exhibit 5; (3) “Applicant’s Third
`
`Notice of Reliance” (46 TTABVUE), to which Applicant attached Applicant’s Exhibits 6
`
`through 8; and (4) “Applicant’s Fourth Notice of Reliance” (47 TTABVUE), to which
`
`Applicant attached Applicant’s Exhibit 9.4
`
`
`
`BACKGROUND AND RELEVANT FACTS
`
`A.
`
`The Parties
`
`
`
`Opposer TCCC is based in Atlanta, Georgia and is the world’s largest beverage
`
`company. TCCC is the owner of and applicant in numerous pending applications to
`
`register marks for beverage products that include the word ZERO, including the marks
`
`SPRITE ZERO, COCA-COLA ZERO, FANTA ZERO, COKE ZERO, PIBB ZERO and
`
`POWERADE ZERO. (43 TTABVUE, TCCC Exx. I-N). Applicant has admitted for
`
`purposes of this proceeding that TCCC: (1) is engaged in the business of
`
`manufacturing beverage products, (2) has used the term ZERO in connection with
`
`beverage products and as part of several marks for beverage products, (3) has sold
`
`and currently sells beverage products bearing the marks COCA-COLA ZERO, COKE
`
`ZERO, SPRITE ZERO, PIBB ZERO, FANTA ZERO and VITAMINWATER ZERO,
`
`POWERADE ZERO, and (4) is a competitor of Applicant, as both are engaged in the
`
`sale of non-alcoholic beverage products. (43 TTABVUE, TCCC Ex. C at 1-6, 8
`
`(Applicant’s responses to TCCC requests for admissions 1 through 20, 27)).
`
`TCCC has also been a party to several prior Board proceedings in which
`
`TCCC’s applications to register its ZERO marks have been at issue. Those prior
`
`
`4
`In accordance with Trademark Rule 2.128(b), TCCC’s objections to certain of
`the evidence tendered by Applicant are set forth in Exhibit A.
`
`
`
`- 12 -
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`

`

`proceedings have resulted in Board decisions on the merits, in which the Board found
`
`that TCCC had proven that ZERO, when used as an element of a mark for soft drinks
`
`and sports drinks, had acquired distinctiveness as a result of TCCC’s extensive sales,
`
`advertising and promotion of its ZERO products. (48 TTABVUE, TCCC Ex. O at 11-21;
`
`TCCC Ex. P at 25-30).5
`
`Applicant Bovis Foods is a limited liability company formed under the laws of
`
`California in October of 2009. Bovis Foods manufactures and sells non-alcoholic
`
`mixers, including a product named MARGARITA ZERO. Prior to the formation of Bovis
`
`Foods in late 2009, a different entity—JGX, Inc.—made and sold a similar product
`
`under the name MARGARITA ZERO.
`
`
`B.
`
`The Application
`
`During prosecution of Bovis Foods’ application to register MARGARITA ZERO,
`
`the Examining Attorney properly refused registration under Section 2(e)(1) on the
`
`grounds that the claimed mark is merely descriptive and required a disclaimer of
`
`“margarita” on the grounds that it is a generic term for the goods recited in the
`
`Application. In response to the Examining Attorney’s rejection and disclaimer
`
`requirement, Applicant Bovis Foods disclaimed “margarita” and submitted a statement
`
`of acquired distinctiveness under Section 2(f). The 2(f) statement was not
`
`accompanied by any supporting evidence of any type. Following Bovis Foods’
`
`submission of its 2(f) statement, the Examining Attorney accepted the statement as
`
`
`5
`The Board’s May 23, 2016 decision in the consolidated Royal Crown
`oppositions is currently on appeal to the Federal Circuit, No. 16-2375.
`
`
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`- 13 -
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`

`

`prima facie proof of acquired distinctiveness and approved the mark for publication
`
`under Section 2(f), with a disclaimer of MARGARITA.
`
`
`C.
`
`The Present Opposition Proceeding
`
`TCCC has opposed
`
`the Application on
`
`the grounds
`
`that
`
`the phrase
`
`MARGARITA ZERO is merely descriptive and therefore not registrable under Section
`
`2(e)(1). (Opposition, 1 TTABVUE). In its Opposition, TCCC alleged that the phrase
`
`MARGARITA ZERO is merely descriptive, and asserted descriptiveness under Section
`
`2(e)(1) as its grounds for opposition both in its pleading (id. at 3, ¶ 9), and in the
`
`ESTTA cover page with which the Opposition was filed. (1 TTABVUE (cover page)).
`
`TCCC further alleged in its Opposition that, upon information and belief, Applicant’s
`
`use of the phrase MARGARITA ZERO had been limited in scope (id. at 3, ¶ 6), that
`
`Applicant’s use of MARGARITA ZERO had not been substantially exclusive and
`
`continuous for at least five years prior to February 1, 2012 (id. at 3, ¶ 7), and that the
`
`phrase MARGARITA ZERO has not become distinctive of Applicant’s goods. (Id. at 3,
`
`¶ 8).
`
`Applicant filed its Answer to TCCC’s Opposition on July 15, 2013. (12
`
`TTABVUE). Although Applicant denied the allegations of paragraphs 7 and 8 of
`
`TCCC’s Opposition regarding Applicant’s 2(f) statement and lack of acquired
`
`distinctiveness (id. at 3, ¶¶ 7-8), Applicant did not plead as a defense or otherwise that
`
`the phrase MARGARITA ZERO had acquired distinctiveness.
`
`
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`- 14 -
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`

`

`D.
`
`Applicant’s MARGARITA ZERO Products
`
`The testimony of Bovis Foods’ member Nick Bovis was to the effect that an
`
`entity named “JGX, Inc.,” which operates a restaurant in San Francisco named “Lefty
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`O’Doul’s” (Bovis Tr. 18), first manufactured and sold a zero-calorie margarita mix under
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`the name MARGARITA ZERO in approximately 2001. (Bovis Tr. 27, 36-37, 47). For
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`the next nine years, that mix was made in small batches and sold first in mason jars
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`and then in one-liter bottles only at the Lefty O’Doul’s restaurant. (Bovis Tr. 28, 38-44,
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`50). JGX, Inc. engaged in no advertising or promotional activities for the product
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`(Bovis Tr. 74-76), and Applicant has no documentation regarding the actual labeling or
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`sales of the product during the time period of the initial sales. (Bovis Tr. 44, 54-55).6
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`All of the expenses of manufacturing and selling the product were paid for by JGX, Inc.,
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`the entity that received the revenue from the sales. (Bovis Tr. 120).
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`Applicant Bovis Foods was formed in October of 2009. (Bovis Tr. 24).
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`Commencing shortly thereafter, likely in 2010, Bovis Foods began distribution of the
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`MARGARITA ZERO product on a slightly broader scale, offering the product to
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`retailers as a “commercial product” at wholesale for the first time. (Bovis Tr. 27-28, 52,
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`116-18).
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`Sales of the MARGARITA ZERO product since the formation of Bovis Foods
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`have been modest. Mr. Bovis testified that total sales of the MARGARITA ZERO
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`
`6
`In its answers to TCCC’s interrogatories in this proceeding, Applicant stated that
`it had sold “bottled mix called MARGARITA ZERO” only since 2006. 43 TTABVUE,
`TCCC Ex. A at 2-3 (Applicant’s response to TCCC interrogatory 3). Mr. Bovis testified
`that he did not consider the pre-2006 mason jar products to be “a product, a bottled
`product” (Bovis Tr. 50), and estimated that approximately 3000 units of the mason jar
`product were sold during the five-year period 2001-2006. (Bovis Tr. 55-56). He
`similarly estimated that fewer than 3000 of the one-liter bottle version of the product
`were sold during the period 2006-2010. (Bovis Tr. 56-57).
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`product at wholesale since the company began selling the product in 2010 have been
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`“definitely below 200,000 [dollars].” (Bovis Tr. 73). Mr. Bovis further estimated that the
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`total sales of the earlier mason jar product by JGX, Inc. during the years 2001-2006
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`were approximately $12,000, and that the total sales of the one-liter product by JGX
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`during 2006-2010 were approximately $15,000. (Bovis Tr. 61-62, 73-74).
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`Mr. Bovis’s testimony also confirmed that the sales by Applicant of its
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`“commercial product” since 2010 have been geographically limited. Mr. Bovis testified
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`that the MARGARITA ZERO product has never been sold nationwide (Bovis Tr. 68),
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`and has only been sold at retail in between ten and thirty states nationwide. (Bovis Tr.
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`65-66).
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`Bovis Foods also has no documents that reflect any amounts spent on
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`advertising or promotion of the MARGARITA ZERO product since the company was
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`formed. (Bovis Tr. 76-77; see also 43 TTABVUE, TCCC Ex. E at 7 (Applicant’s
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`supplemental response to TCCC document request 13)). Other than some local radio
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`commercials on a talk show regarding the San Francisco Giants and/or Giants game
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`broadcasts that may have mentioned the MARGARITA ZERO product among others
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`and for which Applicant paid a total of “just under a hundred [thousand dollars]” (Bovis
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`Tr. 76-83), Mr. Bovis could identify no other amounts spent to promote the
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`MARGARITA ZERO product to consumers. (Bovis Tr. 83-89). And although the
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`product is shown on the websites controlled by Applicant, consumers cannot order the
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`product online from Applicant or from JGX, Inc. (Bovis Tr. 93-96).
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`Mr. Bovis testified that JGX, Inc. still exists but has no current involvement with
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`the MARGARITA ZERO product other than selling the product at the Lefty O’Doul’s
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`restaurant and using the product to make cocktails for customers. (Bovis Tr. 35). Mr.
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`Bovis further confirmed that JGX, Inc. and Applicant Bovis Foods are separate entities,
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`and that Bovis Foods does not control JGX, Inc. (Bovis Tr. 51). He also testified that
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`there has never been any transfer of any rights to the phrase MARGARITA ZERO from
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`JGX, Inc. to Bovis Foods. (Bovis Tr. 106). Finally, Mr. Bovis testified that JGX, Inc.
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`and Bovis Foods have different owners; he currently owns 100% of Bovis Foods (Bovis
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`Tr. 26), and JGX, Inc. is and was during the 2000-2010 period owned by a family trust.
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`(Bovis Tr. 118-19).
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`In connection with its sales to distributors and retailers, Bovis Foods uses
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`“advertising print sheets” and other printed materials that show Bovis Foods’ products.
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`The print sheet for the MARGARITA ZERO product describes the product as “Zero
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`Calorie Margarita,” and Mr. Bovis considers the phrase “Zero Calorie Margarita” to be
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`“the description” of the product. (Bovis Tr. 112-13 & Ex. 9). Mr. Bovis testified that
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`“one of the reasons” Bovis Foods chose the name MARGARITA ZERO for its
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`zero-calorie margarita mix was “to indicate that the product contained little or no
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`calories.” (Bovis Tr. 113-14; see also 43 TTABVUE, TCCC Ex. A at 3 (Applicant’s
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`response to TCCC interrogatory 4) (“Applicant chose the name to indicate that the mix
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`contained little or no calories.”)).
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`Finally Mr. Bovis testified that, when he signed the Application on behalf of
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`Applicant Bovis Foods in July 2011 (claiming use of MARGARITA ZERO by Applicant
`
`since 2001) and the 2(f) statement on behalf of Bovis Foods in February 2012
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`(attesting to five years of use by Applicant), he “didn’t distinguish between” himself
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`personally, JGX, Inc. and Applicant Bovis Foods. (Bovis Tr. 119-22).
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`SUMMARY OF ARGUMENT
`
`
`The record in this proceeding demonstrates beyond question that the phrase
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`MARGARITA ZERO is merely descriptive of a zero-calorie non-alcoholic margarita mix.
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`By virtue of its own use and interest in using marks that include ZERO for beverage
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`products in International Class 32, TCCC has standing to oppose the issuance of a
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`registration for the claimed mark. TCCC has more than carried its initial burden of
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`calling into question the Examining Attorney’s acceptance of Applicant’s unsupported
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`and false statement of acquired distinctiveness under Section 2(f). And whether
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`Applicant has properly pleaded the issue of acquired distinctiveness or not, the record
`
`demonstrates that Applicant has not engaged in commercial activities sufficient to
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`acquire distinctiveness in the phrase MARGARITA ZERO as a source-indicator for
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`Applicant. TCCC’s opposition should therefore be sustained, and registration refused
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`to Applicant.
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`
`
`
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`ARGUMENT AND CITATION OF AUTHORITIES
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`To sustain its opposition to the application under Section 13 of the Lanham Act,
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`15 U.S.C. § 1063(a), TCCC “must prove two elements: (1) that it has standing, and (2)
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`that there is a valid ground to prevent the registration of the opposed mark.” The
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`Topps Co., Inc. v. Panini America., Inc., 113 U.S.P.Q.2d 1808, 2015 WL 766033 at *4
`
`(T.T.A.B. 2015), citing Young v. AGB Corp., 152 F.3d 1377, 47 U.S.P.Q.2d 1752, 1755
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`(Fed. Cir. 1998).
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`TCCC HAS STANDING TO OPPOSE THE APPLICATION.
`
`I.
`
`
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`Standing is a threshold issue that must be proven in all inter partes Board
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`proceedings. E.g., Topps, 2015 WL 766033 at *4. As the Board has recently
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`reiterated:
`
`To establish standing, an opposer must show that it is not an intermeddler,
`but has a real interest in the proceeding. Ritchie v. Simpson, 170 F.3d
`1092, 50 USPQ2d 1023 (Fed. Cir. 1999). To establish standing in this
`case, Opposer must prove that it has a ‘real interest’ in this opposition
`proceeding and a ‘reasonable basis’ for its belief in damage. To prove a
`‘real interest’ in this case, Opposer must show that it has a ‘direct and
`personal stake’ in the outcome and is more than a ‘mere intermeddler.’
`See Ritchie v. Simpson, 50 USPQ2d at 1026-27. In the present case,
`where the claim of mere descriptiveness is asserted and Opposer
`further alleges that Applicant's claim of acquired distinctiveness is
`insufficient, it is enough for Opposer to establish that it is engaged
`in the sale of the same or related goods, that is, Opposer is a
`competitor. Anheuser-Busch Inv. v. Holt, 92 USPQ2d 1101, 1103 (TTAB
`2009); Plyboo America, Inc. v. Smith & Fong Co., 51 USPQ2d 1633
`(TTAB 1999); Binney & Smith, Inc. v. Magic Marker Indus., Inc., 222
`USPQ 1003, 1010 (TTAB 1984).
`
`Id. (emphasis added).
`
`TCCC has standing to oppose the Application to register MARGARITA ZERO.
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`Applicant has admitted for purposes of this proceeding that TCCC has used numerous
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`marks for non-alcoholic beverages in International Class 32 that include ZERO and
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`that both Applicant and TCCC are engaged in the sale of non-alcoholic beverage
`
`products. (43 TTABVUE, TCCC Ex. C at 1-6, 8 (Applicant’s responses to TCCC
`
`requests for admissions 1 through 20, 27)). TCCC, moreover, has been a party to
`
`numerous prior Board proceedings regarding its marks that include ZERO, which have
`
`resulted in two Board decisions on the merits finding, inter alia, that TCCC had proven
`
`acquired distinctiveness for ZERO when used as an element of a mark for soft drinks
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`and sports drinks. (48 TTABVUE, TCCC Exx. O, P). TCCC is therefore hardly a “mere
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`intermeddler”; it has a direct and personal stake in ensuring that registration without a
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`disclaimer of ZERO is permitted only for those marks (if any) that contain the
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`descriptive term ZERO as an element and (1) for which acquired distinctiveness has
`
`been proven and (2) tha