On July 16, 2008, the Northern District of California dismissed on summary judgment a lawsuit brought by the company that manufactures, markets and sells Crystal Geyser bottled water (CG Roxane LLC) against Fiji Water Company LLC, Fiji Water Company Holdings LLC and Paramount International Export, LTD. The court also granted Fiji's summary judgment motion for cancellation of Crystal Geyser's "Bottled at the Source" federal trademark registration.

 

Crystal Geyser began using the phrase "bottled at the source" on its water bottles in 1990 and obtained a federal trademark registration for the phrase in 2003. Fiji began using the same phrase on the front of its water bottle labels in 1997 and on the back of its labels in 2005. Cyrstal Geyser filed suit, asserting trademark infringement as well as several other related claims based on state and federal law, after Fiji refused to change is water bottle labels in response to a cease and desist letter from Crystal Geyser.

On Fiji's motion for summary judgment, the court found that the "bottled at the source" mark was generic. Applying the "who-are-you/what-are-you" test, the court found that the "bottled at the source" mark answers the "what-are-you" question, and therefore is generic, as opposed to the "who-are-you" question, which would indicate a valid trademark. Specifically, the court found Crystal Geyser's use of the phrase "bottled at the source" generic in that it "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." In reaching this conclusion, the court compared Crystal Geyser's use of the phrase to the generic use of the word "kettle chips" for potato chips cooked in a kettle and "brick oven" for pizza cooked in a brick oven.

Evidence of use of the "bottled at the source" phrase by many other water bottle competitors and numerous examples of the media and popular press using the phrase to describe a type of water also weighed in favor of the court's finding of genericness. The court also found Crystal Geyser's use of the "bottled at the source" phrase on its packaging and in advertisements to be descriptive in manner, thereby undermining any assertion that the mark was not generic.

Crystal Geyser's evidence of sales and marketing expenditures in an attempt to establish that the mark was not generic and/or descriptive was insufficient, as it only demonstrated that it had spent money on advertising, not that the public has come to associate the "bottled at the source" phrase with Crystal Geyser.

In addition to throwing out Crystal Geyser's case due to the generic nature of the phrase "bottled at the source," the court granted Fiji's summary judgment motion for cancellation of Crystal Geyser's federal trademark registration on the phrase. Whether Crystal Geyser will appeal the court's ruling remains to be seen.

Click here for a PDF copy of the summary judgment.