The Northern District of California granted summary judgment of noninfringement, finding CG Roxane LLC's ("Roxane") registered mark BOTTLED AT THE SOURCE for bottled water invalid for genericness. To overcome the presumption of validity, the alleged infringer Fiji Water Co. ("Fiji") presented extensive evidence of the mark's use by competitors, by the media, and by Roxane itself to refer to products other than Roxane's Crystal Geyser water. Roxane's evidence of secondary meaning had no effect where acquired distinctiveness could not be shown prior to Fiji's use of the mark. Finally, the court noted that Fiji's use of BOTTLED AT SOURCE as an accurate description of its product would have been a fair use, and thus a complete defense to infringement, had Roxane been able to support the validity of its mark.
Roxane filed suit in the Northern District of California alleging infringement, among other things, of Roxane's registered mark BOTTLED AT THE SOURCE by Fiji's use of BOTTLED AT SOURCE. Fiji filed a motion for summary judgment on Roxane's claims and also on its counterclaim for cancellation of Roxane's trademark registration.
Roxane manufactures and sells Crystal Geyser water and began using the phrase BOTTLED AT THE SOURCE in 1990 on its cylindrical bottles with mountain-themed labels. It filed for federal registration of the mark in 2002; after an initial descriptiveness rejection, the USPTO allowed the application based upon Roxane's showing of secondary meaning through substantially exclusive and continuous use, marketing efforts, and sales success. Roxane's registration issued in 2003. Fiji sells water from Fiji in square bottles with tropical-themed labels and began using the phrase BOTTLED AT SOURCE in 1997 on the front label, and beginning in 2005 on the back label. Roxane sent Fiji a cease-and-desist letter in 2006. Fiji refused to stop its use and Roxane filed this suit for infringement of the BOTTLED AT THE SOURCE mark. ANALYSIS
The district court granted Fiji's motion for summary judgment. While recognizing that Roxane's federal registration was prima facie evidence of the mark's validity, the court first noted an initial (and ultimately fatal) "apparent…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." The court then considered three types of evidence to determine whether Fiji had overcome the "strong presumption of validity against genericness." First, Fiji showed that nearly seventy of Roxane's competitors used the mark on their bottled water or in advertisements for water. This dwarfed previous cases the court cited that found "brick oven" pizza and "kettle chips" to be generic based upon four and ten competitors' uses, respectively. Finding the mark to be "a factual statement about the manufacturing process used to bottle water…that purports to be purer than other forms of bottled water," the court rejected Roxane's attempt to distinguish its competitors' use of the mark in a general way to describe the bottling process and Fiji's alleged use as a trademark to identify its specific bottled water product.
Second, the court looked to the mark's use in the press and media, where Fiji provided approximately fifty examples using the mark to describe either a manufacturing process or a type of water—not Roxane's product. Third, Fiji cited Roxane's generic use of the mark in its own advertisements, including "always bottled at the source to maintain the quality and freshness of our natural spring water" and "our spring water is bottled at the source." Fiji's three substantial sources of evidence clearly demonstrated to the court the mark's invalidity due to genericness.
The court also analyzed Fiji's alternative ground for invalidity—that the mark was descriptive and lacked secondary meaning. Based on the evidence already discussed, the court had little trouble finding that the mark could be merely descriptive. The court then noted that the presumption of validity based upon secondary meaning operates only after the registration becomes effective. Since Fiji's use of BOTTLED AT SOURCE began years before Roxane's registration issued, it was not entitled to a presumption of validity and the court required Roxane to show that secondary meaning existed prior to Fiji's 1997 use in order to prove the mark's validity. The record lacked any such evidence, and Fiji even offered a competitor's use of BOTTLED AT SOURCE in 1985—years before Roxane's original use began in 1990. The court discounted Roxane's evidence of sales and marketing expenditures as "not determinative of secondary meaning" and based upon statements supported only by one of Roxane's employees, which bore "very little probative value."
Finally, even though the mark was found to be invalid, the court addressed Fiji's fair-use defense to Roxane's infringement claims. Noting that a junior user in the Ninth Circuit has the right to use a mark in its "primary, descriptive sense other than as a trademark," the court found Fiji's use of "a factual statement since its water is indeed bottled at a source in Fiji" and that the phrase BOTTLED AT SOURCE "can naturally be placed alone to convey information to a consumer without it being considered a trademark." On those facts, the court easily found Fiji would have had a complete defense based upon fair use.
A federal registration, even with its presumption of validity, may not be able to withstand attack by overwhelming evidence of genericness, including abundant use of the mark by competitors and the media to indicate a type of product rather than the registrant's product. Perhaps least helpful to Roxane's case was its own generic use of BOTTLED AT THE SOURCE in its advertising. Had the mark been found merely descriptive but not generic, secondary meaning would only save the mark if it had been acquired prior to the alleged infringer's use, which Roxane could not prove. Finally, even if the mark was valid and a likelihood of confusion found to exist, Fiji's water would find safe harbor in fair use since it is indeed bottled at the source.