`
`
`
`THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`Mailed: October 18, 2024
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Fiji Water Company Pte. Ltd.
`v.
`Hitesh Patel
`_____
`
`Opposition No. 91280233
`_____
`
`Michael M. Vasseghi and Danielle M. Criona of The Wonderful Company LLC,
`for Fiji Water Company Pte. Ltd.
`
`Gene Bolmarcich of Law Offices of Gene Bolmarcich,
`for Hitesh Patel.
`
`_____
`
`
`Before Thurmon, Allard, and Brock,
`Administrative Trademark Judges.
`
`
`Opinion by Allard, Administrative Trademark Judge:
`
`Hitesh Patel (“Applicant”) seeks registration on the Principal Register of the
`
`mark:
`
`
`
`

`

`Opposition No. 91280233
`
`(FIJIAN SPICE COMPANY disclaimed) for “Spices; Turmeric for food; Edible
`
`turmeric,” in International Class 30.1 The mark is described as “consist[ing] of the
`
`wording ‘FIJIAN SPICE COMPANY’ in orange below a geometric design with
`
`triangles, squares and bars in orange and reminiscent of a tiki design.”
`
`Fiji Water Company Pte. Ltd. (“Opposer”) filed a Notice of Opposition alleging
`
`likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052 (d),2
`
`based on its registered marks:
`
`• FIJI (in typeset form; acquired distinctiveness claimed in whole) for
`“natural, spring and artesian water for drinking,” in International Class
`32;3 and
`
`
`•
`
` (acquired distinctiveness claimed in whole) for “Drinking Water;
`Natural Artesian Water,” in International Class 32.4
`
`
`1 Application Serial No. 90763462 was filed on June 9, 2021, under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
`intention to use the mark in commerce. Color is claimed as a feature of the mark.
`
`2 1 TTABVUE 6-7, paras. 15-18.
`
`Opposer also claimed dilution by blurring under Section 43(c) of the Trademark Act, 15
`U.S.C. § 1125(c). 1 TTABVUE 7-8. Because Opposer did not pursue this claim in its brief, it
`is therefore forfeited. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., Can. No.
`92050879, 2013 TTAB LEXIS 347, at *6 (TTAB 2013) (petitioner’s pleaded descriptiveness
`and geographical descriptiveness claims not argued in brief deemed waived), aff’d mem., 565
`Fed. Appx. 900 (Fed. Cir. 2014).
`
`Citations to the briefs refer to the Board’s online database, TTABVUE. Before the TTABVUE
`designation is the docket entry number, and after this designation are the page references, if
`applicable.
`
`3 Registration No. 2703620, issued on April 8, 2003; renewed. Prior to November 2, 2003,
`“standard character” drawings were known as “typed” or “typeset” drawings. See In re Viterra
`Inc., 671 F.3d 1358, 1363 n.2 (Fed. Cir. 2012) (“[U]ntil 2003, ‘standard character’ marks
`formerly were known as ‘typed’ marks.”). A typed or typeset mark is the legal equivalent of a
`standard character mark. TRADEMARK MANUEL OF EXAMINING PROCEDURE (TMEP)
`§ 807.03(i) (2024).
`
`4 Registration No. 3282520, issued on August 21, 2007; renewed.
`
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`

`Opposition No. 91280233
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`In its Answer, Applicant admitted that “to the extent these facts are correct as
`
`reflected in the records of the USPTO,” Opposer is the owner of its pleaded
`
`registrations and that its registrations are valid and subsisting.5 Applicant otherwise
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`denied the salient allegations of the Notice of Opposition.6
`
`Only Opposer filed evidence and a trial brief. Applicant did not take testimony or
`
`introduce any evidence during its testimony period or file a trial brief, but it is not
`
`required to do so. Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, Opp. No.
`
`91263919, 2022 TTAB LEXIS 383, at *5 (TTAB 2022). The onus is on Opposer, as the
`
`party in the position of plaintiff, to prove its case by a preponderance of the evidence.
`
`B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 144 (2015) (“The party
`
`opposing registration bears the burden of proof, see [37 C.F.R.] § 2.116(b), and if that
`
`burden cannot be met, the opposed mark must be registered, see 15 U.S.C.
`
`§ 1063(b).”). Opposer has not carried its burden, and we dismiss the opposition.
`
`I. The Record
`
`The record consists of the pleadings and, by operation of Trademark Rule
`
`2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history of Applicant’s involved application.
`
`Additionally, Opposer introduced the following evidence:
`
`• Affidavit of Clarence Chia, Senior Vice President of Marketing, eCommerce
`and Direct to Consumer for Fiji Water Company LLC (“FIJI Water”), Opposer’s
`licensee, and related exhibits (“Chia Aff.”).7
`
`
`
`5 4 TTABVUE 2, para. 2; 1 TTABVUE 4, para. 2.
`
`6 4 TTABVUE.
`
`7 11 TTABVUE (confidential)/13 TTABVUE (public).
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`

`Opposition No. 91280233
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`• Amended Notice of Reliance on TSDR printouts of Opposer’s pleaded
`registrations.8
`
`As mentioned earlier, Applicant did not make any evidence of record. This does
`
`not result in a concession of the case, however, as Applicant, the defendant in the
`
`proceeding, is not required to take testimony or introduce evidence. See Yazhong
`
`Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., Can. No. 92056548, 2018 TTAB
`
`LEXIS 168, at *12 n.13 (TTAB 2018) (“Because Respondent, as defendant herein, is
`
`under no obligation to submit evidence or a brief, we do not construe Respondent’s
`
`failure to do so as a concession of the case.”); see also TRADEMARK MANUAL OF BOARD
`
`PROCEDURE (TBMP) § 801.02(b) (2024) and cases cited therein.
`
`II. Entitlement to a Statutory Cause of Action
`
`Entitlement is an element of the plaintiff’s case in every inter partes proceeding.
`
`See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1373
`
`(Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572
`
`U.S. 118, 128 n.4 (2014)). To establish entitlement to a statutory cause of action, a
`
`plaintiff must demonstrate: (i) an interest falling within the zone of interests
`
`protected by the statute, and (ii) a reasonable belief in damage proximately caused
`
`by the registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303-
`
`08 (Fed. Cir. 2020).
`
`8 14 TTABVUE.
`
`
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`Opposition No. 91280233
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`Here, Opposer properly made of record TSDR printouts of its pleaded registrations
`
`by submitting them under a Notice of Reliance.9 “The pleaded registrations establish
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`Opposer’s direct commercial interest in the proceeding that entitles it to bring a
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`statutory cause of action, namely, to oppose registration of Applicant’s mark on the
`
`ground of priority and likelihood of confusion.” Monster Energy Co. v. Lo, Opp. No.
`
`91225050, 2023 TTAB LEXIS 14, at *15 (TTAB 2023) (valid and subsisting pleaded
`
`registration made of record establishes entitlement to oppose) (citing Herbko Int’l,
`
`Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1161 (Fed. Cir. 2002) (“In most settings, a
`
`direct commercial interest satisfies the ‘real interest’ test.”) and Cunningham v. Laser
`
`Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (pleaded registrations “suffice to
`
`establish ...direct commercial interest”)). Thus we find that Opposer has established
`
`its entitlement to bring a statutory action.
`
`III.
`
`Priority and Likelihood of Confusion
`
`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits registration of a
`
`mark that “[c]onsists of or comprises a mark which so resembles a mark registered in
`
`the Patent or Trademark Office …. as to be likely, when used on or in connection with
`
`the goods of the applicant, to cause confusion, or to cause mistake, or to deceive[.]” In
`
`order to prevail on its Section 2(d) claim, therefore, Opposer must establish both
`
`priority and likelihood of confusion. New Era Cap Co. v. Pro Era, LLC, Opp. No.
`
`91216455, 2020 TTAB LEXIS 199, at *27 (TTAB 2020). We consider each element of
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`this claim, priority and likelihood of confusion, in turn below.
`
`9 14 TTABVUE.
`
`
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`Opposition No. 91280233
`
`A. Priority
`
`
`
`Because Opposer’s pleaded registrations are properly of record and because
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`Applicant did not counterclaim to cancel either of them, priority is not at issue with
`
`respect to the registered marks and the goods identified in them. King Candy Co. v.
`
`Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402 (CCPA 1974).
`
`B. Likelihood of Confusion
`
`Having established priority, the remaining issue is likelihood of confusion. Our
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`analysis is based on an analysis of all of the probative facts in evidence that are
`
`relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d
`
`1357, 1361 (CCPA 1973) (“DuPont”); see also In re Guild Mortg. Co., 912 F.3d 1376,
`
`1379 (Fed. Cir. 2019). We consider each DuPont factor for which there is evidence and
`
`argument. See, e.g., Guild Mortg., 912 F.3d at 1379-81. Varying weight may be
`
`assigned to each DuPont factor depending on the evidence presented. See Citigroup
`
`Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 1354-55 (Fed. Cir. 2011); In re Shell
`
`Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he various evidentiary factors may
`
`play more or less weighty roles in any particular determination.”). “Not all DuPont
`
`factors are relevant in each case, and the weight afforded to each factor depends on
`
`the circumstances. Any single factor may control a particular case.” Stratus Networks,
`
`Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (citing In re
`
`Dixie Rests., Inc., 105 F.3d 1405, 1406-07 (Fed. 1997)).
`
`In any likelihood of confusion analysis, two key considerations are the similarities
`
`between the marks and the similarities between the goods or services. See, e.g., In re
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`Opposition No. 91280233
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`Chatam Int’l Inc., 380 F.3d 1340, 1341-42 (Fed. Cir. 2004); Federated Foods, Inc. v.
`
`Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry
`
`mandated by § 2(d) goes to the cumulative effect of differences in the essential
`
`characteristics of the goods and differences in the marks.”).
`
`Opposer addresses the first, third, fourth and fifth DuPont factors, and also
`
`mentions the second factor briefly.10
`
`Opposer pleaded ownership of two registrations. However, we focus our analysis
`
`on Opposer’s registered FIJI mark in standard character format for “natural, spring
`
`and artesian water for drinking” (Reg. No. 2703620). We consider this mark to be the
`
`more pertinent of Opposer’s pleaded registrations for our DuPont analysis because it
`
`is in standard characters and therefore must be considered “regardless of font style,
`
`size, or color[.]” Citigroup, 637 F.3d at 1353. If we do not find a likelihood of confusion
`
`with respect to this mark and its identified goods,11 then there would be no likelihood
`
`of confusion with the stylized mark and goods of Opposer’s other registration. See In
`
`re Max Cap. Grp. Ltd., Ser. No. 77186166, 2010 TTAB LEXIS 1, at *19-20 (TTAB
`
`2010).
`
`1. Strength or Weakness of Opposer’s Mark
`
`We now consider the strength of Opposer’s FIJI mark in order to evaluate the
`
`scope of protection to which it is entitled. DuPont, 476 F.2d at 1361. In determining
`
`the strength of a mark, we consider both its inherent strength, based on the nature
`
`10 15 TTABVUE 4, 15-25.
`
`
`
`11 The two registrations identify essentially the same goods.
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`Opposition No. 91280233
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`of the mark itself, and its commercial strength, based on the marketplace recognition
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`value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 1353 (Fed. Cir.
`
`2010) (measuring both conceptual and marketplace strength)). “[T]he strength of a
`
`mark is not a binary factor, but varies along a spectrum from very strong to very
`
`weak.” In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003); see also Joseph
`
`Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir.
`
`2017) (per curiam).
`
`Opposer argues that its mark is “highly distinctive” and “famous.”12
`
`a. Conceptual Strength
`
`Conceptual strength is a measure of a mark’s distinctiveness and may be placed
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`“in categories of generally increasing distinctiveness . . . (1) generic; (2) descriptive;
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`(3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505
`
`U.S. 763, 768 (1992). “Marks that are descriptive or highly suggestive are entitled to
`
`a narrower scope of protection, i.e., are less likely to generate confusion over source
`
`identification, than their more fanciful counterparts.” Juice Generation, Inc. v. GS
`
`Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015). Conceptual strength “focuses on
`
`the inherent potential of the term at the time of its first use.” Advance Mag.
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`Publishers, Inc. v. Fashion Elecs., Inc., Opp. No. 91247034, 2023 TTAB LEXIS 223,
`
`at *28 (TTAB 2023) (quoting 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS
`
`AND UNFAIR COMPETITION § 11:80 (5th ed. March 2023 Update)).
`
`12 15 TTABVUE 8, 9, 16-19.
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`Opposition No. 91280233
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`Opposer’s FIJI mark is registered on the Principal Register based on a claim
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`acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
`
`§ 1052(f).13 Accordingly, the mark is not inherently distinctive. See Yamaha Int’l
`
`Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1577 (Fed. Cir. 1988); see also Cold
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`War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1359 (Fed. Cir. 2009)
`
`(“Where an applicant seeks registration on the basis of Section 2(f), the mark’s
`
`descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
`
`prosecution presumes that the mark is descriptive.”). Also we take judicial notice of
`
`the dictionary definition of FIJI, which is defined in the MERRIAM-WEBSTER
`
`DICTIONARY under the category “geographical name” as “islands in the southwestern
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`Pacific east of Vanuatu constituting (with Rotuma Island) an independent dominion
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`of the Commonwealth of Nations[.]”14 We find, therefore, that FIJI is geographically
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`descriptive of certain islands in the South Pacific Ocean and conclude that the FIJI
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`mark is conceptually weak. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC,
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`Opp. No. 91223982, 2020 TTAB LEXIS 269, at *53 (TTAB 2020) (“[W]e find that
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`Plaintiff’s BROOKLYN BREWERY and BROOKLYN marks are inherently weak.”).
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`13 14 TTABVUE 5-9.
`
`
`
`14 MERRIAM-WEBSTER DICTIONARY, https://www.merriam-webster.com/dictionary/Fiji,
`accessed on October 8, 2024. Shenzhen IVPS Tech., 2022 TTAB LEXIS 383, at *41 (the Board
`may take judicial notice of dictionary definitions).
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`Opposition No. 91280233
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`b. Market Strength or Fame of Opposer’s Mark
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`Opposer argues that its pleaded mark is famous.15 Commercial strength or fame
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`is the extent to which the relevant public recognizes a mark as denoting a single
`
`source. Joseph Phelps Vineyards, 857 F.3d at 1324-25. “While dilution fame is an
`
`either/or proposition–fame either does or does not exist–likelihood of confusion fame
`
`‘varies along a spectrum from very strong to very weak.’” Palm Bay Imps., Inc. v.
`
`Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1375 (Fed. Cir.
`
`2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)). Famous
`
`marks “enjoy wide latitude of legal protection.” Id. at 1374. Fame for likelihood of
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`confusion purposes arises as long as a “significant portion of the relevant consuming
`
`public ... recognizes the mark as a source indicator.” Id.
`
`Market strength or fame may be measured indirectly by the volume of sales and
`
`advertising expenditures in connection with the goods sold under the mark, and other
`
`factors such as length of time of use of the mark; widespread critical assessments;
`
`notice by independent sources of the goods identified by the mark; and the general
`
`reputation of the goods. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., Inc.,
`
`908 F.3d 1315, 1319-22 (Fed. Cir. 2018); Bose Corp. v. QSC Audio Prods., 293 F.3d
`
`1367, 1371 (Fed. Cir. 2002) (“[O]ur cases teach that the fame of a mark may be
`
`measured indirectly, among other things, by the volume of sales and advertising
`
`expenditures of the goods traveling under the mark, and by the length of time those
`
`indicia of commercial awareness have been evident.”).
`
`15 15 TTABVUE 8, 9, 16-19.
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`Opposition No. 91280233
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`Raw numbers alone, however, may be misleading. Thus, some context in which to
`
`place raw statistics may be necessary, for example, suitable context includes
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`information about market share or sales or advertising figures for comparable types
`
`of goods. Bose, 293 F.3d at 1375. Other ways Opposer can place its raw financial data
`
`in context include evidence of the general reputation of the identified goods sold under
`
`the pleaded mark, or other contextual evidence of the type of advertisements and
`
`promotions Opposer uses to gain sales to show that the consuming public has been
`
`regularly exposed to Opposer’s marks on a nationwide scale. See, e.g., Omaha Steaks,
`
`908 F.3d at 1320 (“Market share is but one way of contextualizing ad expenditures or
`
`sales figures.”).
`
`Opposer argues that “FIJI is a famous brand, and thus enjoys a long latitude of
`
`protection.”16 In support of its claim that its FIJI mark is famous, Opposer made of
`
`record evidence that it has sold its FIJI water in the United States for over 18 years
`
`and that, during this time, it “has sold over 206 million cases of FIJI brand water,”17
`
`which equates to 3.5 billion individual bottles of water.18
`
`Opposer, through its licensee FIJI Water, has extensively advertised and
`
`marketed its water offered under the pleaded mark.19 Although the exact amounts
`
`are filed under seal, Mr. Chia testified as to the total expenditures in the US since
`
`
`16 15 TTABVUE 8 (quotation omitted).
`
`17 13 TTABVUE 10 (Chia Aff., para. 26 and Exhibit D).
`
`18 15 TTABVUE 15; 11 TTABVUE 10 (Chia Aff., para. 26 and Exhibit D). Because Opposer
`specifies the number of individual bottles in its brief, we disclose it here too, even though this
`number is redacted in Mr. Chia’s public affidavit. 13 TTABVUE 10 (Chia Aff., para. 26).
`
`19 13 TTABVUE 2, 3 (Chia Aff., paras. 3-4, 10).
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`Opposition No. 91280233
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`2005, an amount that we find to be substantial, and he provided a breakdown of the
`
`annual advertising expenditures in the United States since 2018.20 Although
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`financial data about competitors is difficult to obtain, Mr. Chia testified, without
`
`explanation, as to advertising amounts by one competitor, EVIAN water, and
`
`Opposer’s advertising expenditures are substantially higher.21
`
`In 2015 FIJI Water launched its multi-million dollar “Untouched” television
`
`marketing campaign, which still runs today.22 Mr. Chia testified to the dollar amount
`
`of this campaign, which again is confidential, and which again we find to be
`
`substantial.23 The campaign consists of “numerous, 15-second spots,” all of which tell
`
`the story of the brand, the most recent version of which was released in 2020.24 These
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`spots have run on many television networks, including ABC, ABC Family, AMC,
`
`Bravo, CBS, Comedy Central, E!, ESPN, Food Network, and NBC to name a few and
`
`they have run during programs such as The Bachelorette, Jimmy Kimmel Live, The
`
`Late Late Show, The Daily Show, and American Idol.25 Opposer does not provide any
`
`other details about the Untouched campaign, such as how frequently each ad ran
`
`during a particular program, or how many viewers are likely to have seen each of
`
`them, given that some programs, such as The Late Late Show, while offered
`
`
`20 11 TTABVUE 11, 99-100 (Chia Aff., para. 34 and Exhibit F).
`
`21 Id. at 12 (Chia Aff., para. 37).
`
`22 13 TTABVUE 11-12 (Chia Aff., para. 35).
`
`23 11 TTABVUE 11-12 (Chia Aff., para. 35).
`
`24 13 TTABVUE 11-12 (Chia Aff., para. 35).
`
`25 Id. at 12 (Chia Aff., para. 36).
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`Opposition No. 91280233
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`nationwide, are aired late at night and not during prime viewing hours. While we
`
`acknowledge the high cost of this campaign, and its widespread distribution via
`
`network television, the record does not contain any other contextual information
`
`about it, so we are not able to assess, for example, how many consumers were exposed
`
`to these advertising spots since the campaign’s launch. See e.g., Omaha Steaks, 908
`
`F.3d at 1320 (“For example, ‘a 30-second spot commercial shown during a Super Bowl
`
`football game may cost a vast sum, but the expenditure may have little if any impact
`
`on how the public reacts to the commercial message.’” (quoting Bose, 293 F.3d at
`
`1375)). Nonetheless, we acknowledge the campaign’s long and widespread use.
`
`Additionally, Mr. Chia testified that the pleaded mark is advertised online, in
`
`print and on billboards, some samples of which are of record, including evidence of
`
`advertising on New York City’s Times Square billboard in 2019.26 Turning to social
`
`media advertising, the FIJI mark is advertised on Facebook, Instagram, and X
`
`(formerly Twitter), and the brand’s Facebook page has recorded almost seven
`
`hundred thousand “likes.”27 Brand influencers, who have between 36,000 and
`
`2,500,000 followers, are also used to promote the FIJI mark on social media, and
`
`several examples of influencer posts are attached to Mr. Chia’s affidavit.28 However,
`
`there are no other details about any of this advertising activity. For example, Opposer
`
`does not indicate how many consumers have been exposed to its print, billboard and
`
`
`26 Id. at 3, 15-35 (Chia Aff., para. 12 and Exhibit A).
`
`27 Id. at 3, 41-45 (Chia Aff., para. 13 and Exhibit C).
`
`28 Id. at 3, 37-39 (Chia Aff., para. 13 and Exhibit B).
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`Opposition No. 91280233
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`online advertising, nor does Opposer specify the number of posts featuring FIJI water
`
`made by each influencer, so we cannot gauge the amount of exposure that the brand
`
`received through these efforts.
`
`The record shows that FIJI water has been the official water at many high profile
`
`events. For example, “FIJI brand water was the official water of the Film
`
`Independent Spirit Awards from 2013-2023, the Screen Actor Guild Awards from
`
`2010-2022, the Critic’s Choice Awards from 2015-2023, the 70th Annual Tony Awards
`
`and Creative Art Awards in 2016, the Recording Academy GRAMMY Awards in 2017
`
`& 2022–2023, the Emmy Awards Red Carpet and Governors Ball from 2014-2023,
`
`and the Annual Golden Globe Awards from 2015-2019.”29 While we acknowledge that
`
`these are star-studded events with national media exposure, there is no evidence, for
`
`example, of the scope of publicity that the pleaded mark received by virtue of its being
`
`the official water for these events, so we cannot determine with certainty the scope of
`
`public exposure to the brand. Nonetheless, we infer due to the high-profile nature of
`
`the events, and without evidence to the contrary, that such exposure would have been
`
`significant.
`
`To establish and maintain in the mind of consumers that FIJI brand water is a
`
`status product, Mr. Chia testified that Opposer focuses on strategic placement of FIJI
`
`water in select television shows and motion pictures.30 To that end, FIJI brand water
`
`has been the subject of product placement in many television shows, including CSI
`
`
`29 Id. at 7 (Chia Aff., para. 17).
`
`30 Id. at 8 (Chia Aff., para. 20).
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`Opposition No. 91280233
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`New York, Will & Grace, The Apprentice, Two and a Half Men, Keeping up with the
`
`Kardashians, House of Cards, Dancing with the Stars, The Office, 90210, Veep,
`
`Gilmore Girls, Curb Your Enthusiasm, and Friends: The Reunion.31 As for motion
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`pictures, FIJI water was placed in, for example, Ocean’s 8, What Men Want, and
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`Selena Gomez: My Mind and Me.32 While we acknowledge that these shows are
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`generally popular and widely available on network television and/or on popular
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`streaming services, such as Netflix, Opposer provided no other information about the
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`product placement. For example, the record does not disclose the number of episodes
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`of Will & Grace that the FIJI water appeared in or how many consumers viewed that
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`episode or even how many average viewers watch the program; consequently, we are
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`hard-pressed in turn to assess with any amount of certainty the consumer exposure
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`to the mark through these product placements.
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`For unsolicited media coverage, Opposer points to print media, the bulk of which
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`generally consist of photographs of celebrities merely holding a FIJI water bottle
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`and/or articles mentioning celebrities storing FIJI water in their refrigerator; while
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`these photos and related articles do not describe the general reputation of the mark
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`and the identified goods, they do serve to reinforce FIJI water as a status product.33
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`There are, however, three articles that generally address the reputation of the goods:
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`(1) an InTouch “Hot Stuff!” article, dated July 2, 2018, featuring FIJI water and the
`
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`31 Id. at 8-9 (Chia Aff., para. 21).
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`32 Id. at 9 (Chia Aff., para. 22).
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`33 Id. at 10, 49-97 (Chia Aff., para. 29 and Exhibit E).
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`Opposition No. 91280233
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`bottle’s new flip-top sports cap;34 (2) a Yahoo! Lifestyle article, dated October 16, 2019,
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`summarizing the results of a taste-test of ten bottled-water brands, where FIJI
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`ranked second;35 and (3) a mention in New York Magazine, dated June 30, 2020,
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`describing the appealing taste of FIJI water.36
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`The record also contains evidence that FIJI water is part of pop culture. For
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`example, in September 2018, hip-hop artist and fashion designer, Kanye West, was
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`the musical guest on “Saturday Night Live.”37 Rapper Lil Pump performed with him
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`while wearing a FIJI water bottle costume.38 A photograph of Mr. West’s daughter
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`wearing the FIJI water bottle costume later appeared in People magazine.39
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`Additionally, Mr. Chia testified that FIJI Water “has sponsored or been affiliated
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`with numerous events throughout the United States[,]” and he lists many events,
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`without description, that appear to involve the film industry, the music and arts
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`industry, and the fashion industry.40 While FIJI Water was involved with some
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`events for only one or two years, other events enjoyed a longer term involvement,
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`some of which we list here: The Gotham Independent Film Awards, New York, from
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`2012–2023; Film Independent Spirit Awards from 2012–2023; Screen Actor Guild
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`Awards from 2012–2022; Critic’s Choice Movie Awards, Los Angeles, from 2015–
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`
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`34 Id. at 60.
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`35 Id. at 87-88.
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`36 Id. at 90.
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`37 Id. at 9-10 (Chia Aff., para. 24).
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`38 Id.
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`39 Id. at 65.
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`40 Id. at 4-7 (Chia Aff., para. 16).
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`Opposition No. 91280233
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`2023; Emmy Awards Red Carpet and Governors Ball, Los Angeles, from 2015–2022;
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`and Recording Academy Annual Grammy Awards in 2016 & 2022-2023.41 Again, we
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`acknowledge the high-profile nature of these events, but again Mr. Chia’s testimony
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`lacks any detail as to the visibility of the FIJI mark at these events and he fails to
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`testify as to the number of people who were likely exposed to the mark by, for
`
`example, advertising or promotional efforts at the event itself or via subsequent
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`media coverage of the events, and/or if water bottles bearing the mark were
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`distributed to attendees. To the extent that Mr. Chia testified that FIJI Water
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`“sponsored” the event, we can infer that the mark was advertised and promoted in
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`some meaningful way due to the nature of the event itself; however, it is unclear what
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`meaningful exposure attendees may have had to the pleaded mark to the extent that
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`FIJI Water was merely “affiliated with” the event. As Mr. Chia does not distinguish
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`between events FIJI Water “sponsored” as opposed to those it was “affiliated with,”
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`this portion of his testimony is not as probative as it could be on the issue of fame of
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`the pleaded mark.
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`As for awards, Opposer’s FIJI water has won several, some of which are set out in
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`Mr. Chia’s testimony.42 Additionally, Mr. Chia testified that in 2023, FIJI water was
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`“ranked America’s favorite bottled water among adults, per a study conducted by
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`third-party Morning Consult.”43
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`41 Id.
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`
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`42 Id. at 10 (Chia Aff., paras. 27-28).
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`43 Id. (Chia Aff., para. 27).
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`Opposition No. 91280233
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`c. Summary
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`Although there are some shortcomings in the evidence of the commercial strength
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`or fame of the FIJI mark, as addressed above, we accept Mr. Chia’s unrebutted
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`affidavit and related exhibits as evidence that Opposer’s mark has been in long use
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`and heavily promoted and, we find the evidence sufficient to show that the FIJI mark
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`falls on the very strong side of the spectrum from very strong to very weak. See e.g.,
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`Joseph Phelps Vineyards, 857 F.3d at 1325.
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`Despite any inherent or conceptual weakness of the term FIJI because it may be
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`considered geographically descriptive and therefore registered under the provisions
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`of Section 2(f), the evidence shows the FIJI mark to be very commercially strong for
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`bottled water. On balance, the evidence regarding the commercial strength of the
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`FIJI term with the identified goods overcomes the mark’s intrinsic shortcoming. As a
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`result, we find that Opposer’s mark is entitled to a broad scope of protection.
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`This weighs heavily in favor of likelihood of confusion.
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`2. Similarity or Dissimilarity of the Marks
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`We now turn to the first DuPont factor, which assesses the similarity or
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`dissimilarity of the marks. DuPont, 476 F.2d at 1361. We analyze “the marks in their
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`entireties as to appearance, sound, connotation and commercial impression.” Viterra,
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`671 F.3d at 1362 (quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these
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`elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
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`John’s, LLC, Ser. No. 87075988, 2018 TTAB LEXIS 170, at *13 (TTAB 2018), aff’d
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`mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, Ser. No. 85497617,
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`2014 TTAB LEXIS 214, at *4 (TTAB 2014)).
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`Opposition No. 91280233
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`The proper test regarding similarity “is not a side-by-side comparison of the
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`marks, but instead whether the marks are sufficiently similar in terms of their
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`commercial impression such that persons who encounter the marks would be likely
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`to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d
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`1367, 1373 (Fed. Cir. 2018) (quoting Coach Servs. v. Triumph Learning LLC, 668 F.3d
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`1356, 1368 (Fed. Cir. 2012)). When assessing the similarity of the marks, we keep in
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`mind that “[s]imilarity is not a binary factor but is a matter of degree.” In re St.
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`Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting Coors Brewing, 343 F.3d at
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`1344).
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`As a reminder, Opposer’s mark is FIJI in standard characters and Applicant’s
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`mark is the composite mark
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` (FIJIAN SPICE COMPANY disclaimed).
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`Considering Opposer’s mark, it consists solely of the geographically descriptive word
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`FIJI. The sole point of overlap in the marks is the geographically descriptive term
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`FIJI(IAN).
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`Turning to Applicant’s mark, all three literal elements have been disclaimed.
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`Because the disclaimer was entered via examiner’s amendment without issuance of
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`an Office Action,44 the record does not include an explanation for the disclaimer;
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`however, the disclaimer of the term FIJIAN suggests that the term is geographically
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`descriptive of the goods and that the goods will emanate from Fiji. Adjectival forms
`
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`44 March 1, 2022 Examiner’s Amendment.
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`Opposition No. 91280233
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`of geographic terms, here, FIJIAN, are considered primarily geographically
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`descriptive. See e.g., In re Jack’s Hi-Grade Foods, Inc., Ser. No. 333701, 1985 TTAB
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`LEXIS 60, at *3 (TTAB 1985) (holding NEAPOLITAN primarily geographically
`
`deceptively misdescriptive of sausage emanating from the United States, where the
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`term is defined as “of or pertaining to Naples in Italy”); see also TMEP § 1210.02(a)
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`and cases cited therein.
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`Opposer argues that FIJIAN is the dominant portion of Applicant’s mark because
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`it is the first literal element of the mark and that it is more source-identifying than
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`the other literal elements SPICE COMPANY, which are disclaimed because they are
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`either descriptive or generic when considered in light of Applicant’s identified goods,
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`i.e., spices.45 We agree with Opposer on the general principal that when a mark
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`comprises both a word and a design, the literal elements are normally accorded
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`greater weight because they would be used by purchasers to request the goods or
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`services. See Viterra, 671 F.3d at 1362 (“In the case of a compo