TTABlog Test: Is FIJIAN SPICE COMPANY for Spices Confusable with FIJI for Drinking Water?

Fiji Water opposed an application to register the mark FIJIAN SPICE COMPANY & Design, shown below, for spices [SPICE COMPANY disclaimed], alleging a likelihood of confusion with its registered mark FIJI for "“natural, spring and artesian water for drinking." Applicant Hitesh Patel employed a rope-a-dope strategy, taking no testimony and submitting no evidence and no trial brief. The Board found that the FIJI mark "falls on the very strong side of the spectrum from very strong to very weak." But are the marks similar enough? Are the goods related? How do think this came out? Fiji Water Company Pte. Ltd. v. Hitesh Patel, Opposition No. 91280233 (October 18, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

Strength of the FIJI Mark: The Board found that, because the term FIJI is geographically descriptive (registered under Section 2(f)), the mark is conceptually weak. Commercially, opposer claimed that the FIJI mark is famous for Section 2(d) purposes, pointing to sales of FIJI water in the United States for more than 18 years, amounting to over 206 million cases, which equates to 3.5 billion individual bottles of water. [17 bottles per case? - ed.]. In addition, substantial advertising expenditures, a long and widespread advertising campaign, high-profile event sponsorship, movie and television placements, and media recognition led the Board to conclude that "the FIJI mark falls on the very strong side of the spectrum from very strong to very weak."

On balance, the evidence regarding the commercial strength of the FIJI term with the identified goods overcomes the mark’s intrinsic shortcoming. As a result, we find that Opposer’s mark is entitled to a broad scope of protection.

The Marks at Issue: Turning to the marks, the Board noted that "[t]he parties’ marks only point of similarity is the geographically significant term FIJI and its variation FIJIAN." It found that "Applicant’s distinctive design has equal importance to the wording due to its sheer comparative size and its location at the top of the mark."

[C]onsidering the marks in their entireties, we find that the remoteness (relative to US consumers) of the Fiji island causes the FIJI and FIJIAN terms to engender different commercial impressions when considered in light of the identified goods. FIJI for water engenders the commercial impression of clear, blue water and, due to its geographical remoteness, it also engenders the commercial impression that the water is untainted and unpolluted. However, in connection with Applicant’s mark, the remoteness of the Fiji islands engenders a different commercial impression, i.e., that of an exotic spice. The tiki design of Applicant’s mark reinforces the exotic nature of the identified goods

Observing that the opposer must "demonstrate that there is confusion as to the source of the goods, and not merely confusion because the parties’ goods may both originate from the same country," the Board concluded that the marks are "more dissimilar than similar."

The Goods: Opposer asserted in its brief that "[w]hile the goods are not related, they are both consumable goods, making it more likely for consumers to think that 'the bottled water people' are now also selling spices." The Board took that as a concession that the goods are not related. In any case, the fact that the goods are both consumables does not mean they are related for Section 2(d) purposes. Since the opposer offered no probative evidence on this point, the Board concluded that the second DuPont factor "weighs heavily against a finding of likelihood of confusion."

Channels of Trade: Opposer submitted evidence as to its channels of trade, but there was no evidence as to the normal channels of trade for applicant's spices. Although the Board "must assume that the parties’ respective goods travel in all the normal channels of trade and to all prospective purchasers for the relevant goods or services, due to the lack of evidence, [it was] unable to compare the normal trade channels for the respective goods. Therefore, this DuPont factor was neutral.

Purchaser Care: Since there was no evidence regarding "purchasing conditions, pricing, and types of purchasers who would purchase Applicant’s identified goods," the Board found this fourth factor to be neutral.

Conclusion: "Due to dissimilarity of the marks and Opposer’s concession that the parties’ goods are not related, we conclude that Applicant’s mark is not likely to cause confusion with Opposer’s mark. In reaching our conclusion, we find that the first and second factors are dispositive and outweigh the other factors, including the fifth factor relating to the fame of Opposer’s mark."

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TTABlogger comment: How did you do? Hat tip to FOB Gene Bolmarcich, Applicant's cornerman in this one-sided TTABout.

Text Copyright John L. Welch 2024.