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Trademark infringement and brand confusion

We all know that companies have signature logos that are registered trademarks even if we don't consciously think about it every day. When we see a certain check mark, we recognize it as Nike. When we see a red bull's-eye with evenly spaced circles, we think Target and so on. But what happens if you want to register a certain word you believe brands your product or service? It depends.

Until recently, Coca-Cola Co. was locked in a trademark suit over the use of the word "zero" on a number of its products, including Coke Zero. In 2003, the company began efforts to register rights to the word but were ultimately challenged by Dr. Pepper in 2007 because they use "zero" on their products as well. 

Dr. Pepper's position was that "zero" is just a word that means the product has no calories and is similar to the word "diet" when describing the type of soda and that by giving Coke the exclusive right to use it would "...grant a monopoly..." for the use of a "...common English word..." with a "...common English meaning."

Coke's argument, on the other hand, was that the word "zero," when used with a brand name, is completely associated with the company and their products for two reasons: (1) their extensive marketing campaigns and (2) their sales are higher than competitors. Ultimately, their position is that consumers will become confused if they see the word "zero" on rival products because they associate "zero" with Coke.

After a lengthy trial and appeal, the Patent and Trademark Office issued their opinion, claiming that Dr. Pepper did not prove the word was generic and that Coke's "zero" products have a unique characteristic, which qualifies the word as "substantially exclusive." They also opined that Coke had not proven that consumers would be confused and that Dr. Pepper could register products, such as Diet Rite Pure Zero, as a trademark. Their reasoning was that it is a full brand name, not just "zero," that makes the product different and standout.

Weakening their written opinion even further, the judges indicated their decision did not set a precedent. By making such a statement, any other beverage company with a disagreement over using the word "zero" would need to be litigated and heard independently.

Overall, a company must be able to prove "substantially exclusive" and/or that consumers, clients or customers would confuse their product or service with another. If you have a trademark or other intellectual property issue, or have been sued, contacting an attorney who represents businesses is the best and first step you can make. 

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Robert Kaufman has been selected as a 2013 Top Rated Lawyer in ‘Commercial Litigation’ as will be published in the May issue of The American Lawyer & Corporate Counsel magazine.Alex Kaufman has been selected as a 2013 Top Rated Lawyer in ‘Commercial Litigation’ as will be published in the December issue of The American Lawyer & Corporate Counsel magazine.

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