In CG Roxane LLC v Fiji Water Company LLC (Case C-07-02258 RMW, July 16 2008), a California district court has reinforced the well-known - but often forgotten - concept that a federal trademark registration does not guarantee an enforceable trademark right. 
CG Roxane LLC, the manufacturer of Crystal Geyser bottled water, owned the federal registration for the trademark BOTTLED AT THE SOURCE. CG sued Fiji Water Company LLC and other parties that sold Fiji bottled water based on use of CG’s federally registered trademark on the back label of Fiji bottled water products. During the prosecution of the application for the BOTTLED AT THE SOURCE mark before the US Patent and Trademark Office, CG had received an objection based on the fact that the mark was merely descriptive of bottled water products. In response to the office action, CG provided evidence of its marketing efforts and the sales success of its bottled water products to support its request for registration of the mark BOTTLED AT THE SOURCE based on secondary meaning. On November 4 2003 the office issued a registration for the mark.
In 2006 CG decided to halt Fiji's use of the words 'bottled at the source', even though Fiji claimed that it had used the phrase on the front of its bottled water since 1997 and on the back label of its bottled water since 2005. When Fiji refused to relabel its bottled water based on its long-time use, CG sued for trademark infringement, dilution, injury to business reputation, conversion, interference, false advertising and negligent or intentional misrepresentation. In response to the lawsuit, Fiji counterclaimed for cancellation of the BOTTLED AT THE SOURCE trademark. On Fiji’s motion for summary judgment on its cancellation claim, the district court held the BOTTLED AT THE SOURCE mark to be unenforceable as generic and/or merely descriptive.
In determining the validity of the registration, the district court recognized that registration of a mark provides only prima facie evidence of validity. Once there is a challenge, the trademark owner must come forth with evidence to support the mark’s validity despite its registration. Accordingly, to determine whether the mark at issue was generic, the court considered whether the primary significance of the trademark was to describe the type of product, rather than the producer. 
After reviewing Fiji's evidence of use of the mark by competitors, the media and CG itself, the court held that the mark was generic. The court found Fuji's evidence on competitive use particularly persuasive. Fiji produced examples of:
  • almost two dozen competitors using the phrase 'bottled at the source' on their bottles; and
  • 50 other bottled water companies using the phrase on websites, advertisements and/or in marketing materials. 
While some of these examples did not involve companies selling bottled water in the United States, the district court found that uses in the United States alone sufficed to demonstrate that the mark was generic.  
Relying on Classic Foods Int’l Co v Kettle Foods Inc (468 F Supp 2d 1181 1194 (2007)), in which the district court had held that the phrase 'kettle chips' was generic based on evidence of use by 10 competitors, the district court found that Fiji had met its burden to prove that BOTTLED AT THE SOURCE was generic. 
Reinforcing its conclusion, the court even noted CG’s own generic use of 'bottled at the source'. Fiji presented evidence that in its advertisements, CG claimed that its bottled water was "always bottled at the source to maintain the quality and freshness of our natural spring water" and that "our spring water is bottled at the source". The court found that these uses:
  • were inconsistent with CG's assertion of trademark rights; and
  • evidenced the generic character of the phrase.
The court went on to hold that CG had not established any secondary meaning for its mark. The court found that evidence of advertising and sales are not conclusive of acquired distinctiveness, particularly where the advertising did not emphasize the mark. The court concluded that CG did not link its advertising or sales to its use of the 'bottled at the source' phrase as a trademark.
Based on the evidence presented by Fiji of the use of the phrase by others in the market, by the media and by CG itself to describe its product, the court granted summary judgment to Fiji and cancelled the registration for BOTTLED AT THE SOURCE, thereby ending CG’s trademarks rights along with the lawsuit.
This decision provides a useful and concrete reminder that the owner of a trademark must respect its own registration by not using its mark descriptively. More importantly, a trademark registration may have no value if it is obtained based on faulty or incomplete information about the use of the mark in the marketplace at large.
Rochelle D Alpert, Morgan Lewis, San Francisco

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