Cg Roxane LLC v. Fiji Water Co. LLC

• Decision Date: 16 July 2008
• Docket Number: No. C-07-02258 RMW.,C-07-02258 RMW.
• Citation: 569 F.Supp.2d 1019
• Court: U.S. District Court — Northern District of California
• Parties: CG ROXANE LLC, Plaintiff, v. FIJI WATER COMPANY LLC; Fiji Water Company Holdings LLC; Paramount International Export, Ltd; and Does 1-20, Defendants.

569 F.Supp.2d 1019

CG ROXANE LLC, Plaintiff, v. FIJI WATER COMPANY LLC; Fiji Water Company Holdings LLC; Paramount International Export, Ltd; and Does 1-20, Defendants.

No. C-07-02258 RMW.

United States District Court, N.D. California, San Jose Division.

July 16, 2008.

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Derek A. Eletich, Yano Lee Rubinstein, for Plaintiff.

Mark D. Campbell, Sarah Catherine Abbott, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

RONALD M. WHYTE, District Judge.

Defendants Fiji Water Company LLC, Fiji Water Company Holdings LLC and Paramount International Export Ltd. (collectively "defendant") move for summary judgment on the claims asserted by plaintiff CG Roxane LLC ("plaintiff) and on their counterclaim for cancellation of the plaintiff's trademark. For the reasons set forth below, the court GRANTS defendant's motion.

I. BACKGROUND

Plaintiff CG Roxane manufactures, markets and sells Crystal Geyser bottled water. Plaintiff began using the phrase "Bottled at the Source" on its bottles in 1990. Plaintiff's water bottles are cylindrical in shape with mountains behind a blue label and a red ribbon bearing the trademark BOTTLED AT THE SOURCE across the top. In 2002, plaintiff applied with the United States Patent and Trademark Office ("USPTO") to trademark the phrase but was initially refused registration on the grounds that the phrase "merely described the goods." Decl. Page Beykpour ("Beykpour Decl."), Ex. G (official USPTO Office Action). Plaintiff submitted a response to the office action citing "substantially exclusive and continuous use," marketing efforts and sales success as evidence of the mark's acquired secondary meaning. Id., Ex. H (response to USPTO Office Action). The mark was published in the Official Gazette on August 12, 2003. Id., Ex. I. The USPTO ultimately granted "Bottled at the Source" a registration number, 2779047, on November 4, 2003. Id., Ex. J.

Defendant Fiji Water Company is also in the bottled water industry. Defendant began using the phrase "Bottled at Source" in 1997, initially on the front label of its water and, since 2005, on the back label. Defendant's water bottles are generally square in shape with a tropical flower surrounding the logo on the front of the bottle. The back label has a blue banner with white lettering reading "Bottled at Source" toward the bottom half of the bottle near the mineral composition chart.¹

The present dispute began in. 2006 when plaintiff sent a cease and desist letter to defendant and defendant refused to stop its current packaging and advertising using "Bottled at Source." Beykpour Decl., Ex. K. In response, plaintiff filed this lawsuit alleging federal trademark infringement as well as claims for state and federal unfair competition, trademark dilution, injury to business reputation, conversion, interference, false advertising, and negligent or intentional misrepresentation. Defendant counterclaimed for cancellation of the trademark based on lack of distinctiveness. On April 28, 2008, defendant filed the instant motion for summary judgment on all of plaintiff's claims and its counterclaim.

II. ANALYSIS

A. Trademark Validity

Plaintiff alleges that defendant's use of "Bottled at Source" constitutes infringement of its registered trademark "Bottled at the Source" in violation of the Lanham Act, 15 U.S.C. § 1114. For a plaintiff to successfully assert a trademark infringement claim under § 1114 of the Lanham Act, it must first show that it has a valid mark and next that the defendant's use of the mark is "likely to cause confusion, or to cause mistake, or to deceive" the consumer. 15 U.S.C. § 1114(1)(a). Validity of the trademark is a threshold question since "(a] necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark." Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir.2002).

A trademark is a "symbol affixed by the manufacturer . . . to a vendible product, which designates and distinguishes such product and protects the manufacturer's good will, existing because of his business and the quality of his product." Pac. Supply Co-op. v. Farmers Union Cent. Exch. Inc., 318 F.2d 894, 905 (9th Cir.1963). Prospective marks are placed in one of five categories (fanciful, arbitrary, suggestive, descriptive and generic) based on distinctiveness that determine what level of protection the mark receives. KP Permanent Make-Up, Inc. v. Lasting Impression I., Inc., 408 F.3d 596, 602 (9th Cir.2005).

Arbitrary, fanciful and suggestive marks automatically receive trademark protection because they are considered inherently distinctive since they identify a product's source and not the product itself. KP Permanent Make-Up, 408 F.3d at 605; 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:1 (4th ed.2008). "The distinctiveness or `strength' of a mark measures its capacity to indicate the source, of the goods or services with which it is used." Rest (Third) of Unfair Competition § 21, cmt. i (1995). The stronger or more distinctive a mark, the more likely it is that consumers will associate that specific manufacturer with other goods bearing the same mark. Id. It is because of this association that arbitrary, fanciful and suggestive marks receive a high degree of protection. Id. Inversely, descriptive and generic marks lack this association and are not afforded trademark protection. Id.

Descriptive marks can be trademarked if they acquire secondary meaning and are therefore distinctive. Filipino Yellow Pages, Inc. v. Asian Journal Publi'n, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). Generic marks can never be trademarked since they only identify what the product is. Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir.2005).

Registration of the mark with the USPTO is prima facie evidence of its validity. Tie Tech, 296 F.3d at 782. Once the party challenging the mark's validity shows sufficient evidence to overcome this presumption by a preponderance of the evidence, the burden shifts to the certificate holder to prove validity. Anti-Monopoly, Inc. v. Gen. Mills Fun Group, Inc., 684 F.2d 1316, 1319 (9th Cir.1982).

1. Genericness of "Bottled at the Source"

Defendant contends that "Bottled at the Source" is a generic mark and thus' unprotectable. Generic marks "give the general name of the product; they embrace an entire class of products" and receive no trademark protection. Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). Generic marks tend to describe the general category, type or class of goods of the product. Rest (Third) of Unfair Competition § 15 (1995). To determine genericness, courts often refer to the "who-are-you/what-are-you" test. Filipino Yellow Pages, 198 F.3d at 1147 (quoting Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir.1993)). A valid trademark answers the former question while a generic mark answers the latter question. Id. "If the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark." Filipino Yellow Pages, 198 F.3d at 1147 (quoting Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 304 (9th Cir.1979)) (emphasis in original).

Generic adjectives are not protected either since they describe a characteristic of a class of products such as "disinfectable" nail files, "light beer" and "brick oven" pizza. Rudolph Int'l Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007); Miller Brewing Co. v. G. Heileman Brewing Co., Inc., 561 F.2d 75, 80 (7th Cir.1977); Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 973 (8th Cir.2006). Allowing a producer to trademark a generic word or phrase would place an undue burden on competition contrary to the goals of trademark law and is therefore prohibited. Intel Corp. v. Terabyte Int'l Inc., 6 F.3d 614, 618 (9th Cir.1993); Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir.1996). However, since plaintiff's mark is registered, it is important to note that "[registered marks are endowed with a strong presumption of validity" against genericness and the defendant has the burden of overcoming this presumption to prove the mark's genericness. Reno Air Racing Ass'n., Inc. v. McCord, 452 F.3d 1126, 1135 (9th Cir. 2006).

One criterion used to determine when a mark is generic is whether the primary significance of the mark is the product itself or the source of the product. Rudolph, 482 F.3d at 1198 ("[I]f the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark." (citing Filipino Yellow Pages, 198 F.3d at 1147)) (emphasis in original). "A generic designation is, in one sense, simply `the ultimate in descriptiveness' because it is necessary for producers to use that term to inform consumers about the nature and identity of their goods." Classic Foods Int'l Corp. v. Kettle Foods, Inc., 468 F.Supp.2d 1181, 1194 (C.D.Cal.2007) (citing 2 McCarthy § 12:20). It appears that plaintiff's mark suffers from this deficiency: "bottled at the source" describes a type of water that is manufactured or bottled at the source as opposed to bottled from a tap or municipal source. It does not indicate the source of the bottled water.

Courts look to other sources to determine genericness such as whether competitors use the mark, use by the media and the plaintiff's own use of the mark. Classic Foods, 468 F.Supp.2d at 1189-91. Courts view a mark's use by competitors as "strong evidence of how the public perceives the term." Id. at 1190. Naturally, when more members of the public see a mark used by several producers in the industry, the less likely they will...