'Bottled at the Source' Mark Can't Hold Its Own Water

The term "bottled at the source" is too generic to warrant trademark protection, a California federal judge has ruled in a dispute between two water bottling companies over the phrase.

U.S. District Judge Ronald M. Whyte granted defendant Fiji Water Co.'s motion to dismiss CG Roxane's trademark infringement lawsuit and to cancel its trademark of the phrase "bottled at the source."

According to the opinion, Roxane markets Crystal Geyser and began using the phrase "bottled at the source" in 1990. It registered the mark with the U.S. Patent and Trademark Office in 2003.

Fiji-brand water is bottled at the site of an artesian spring on the Fiji Islands and has used the phrase on its product since 1997.

Roxane's suit, filed last year in the U.S. District Court for the Northern District of California, also alleged trademark dilution, unfair competition and other charges.

Fiji counterclaimed, seeking to cancel the trademark based on a lack of distinctiveness. It argued that the phrase is descriptive and generic, has not acquired secondary meaning, and that other bottled water companies use it generically.

Judge Whyte agreed that the mark is generic, likening it to terms such as "light beer," "brick oven" and "kettle chips" because they describe a characteristic of a class of products.

He noted that because the mark was registered, it was endowed with a strong presumption of validity against genericness and that the burden rested with Fiji to overcome that presumption.

Fiji presented evidence that 70 other water bottling companies use an identical or similar term in marketing materials and advertisements and that as many as two dozen of them put the phrase on their bottles. It also presented about 50 news articles that used the phrase "bottled at the source" generically to describe a type of water or manufacturing process, according to the opinion.

Finally, Roxane has used the phrase generically on its own bottles and in advertising to describe its product, Judge Whyte said.

Even if the phrase is descriptive, Roxane did not prove that it has acquired secondary meaning such that the public associates the phrase with Roxane's product, he added.

Further, Fiji presented ample evidence that competitors and members of the media use the phrase in generic descriptions of bottled water and not to refer to Crystal Geyser's product in particular, the judge said.

Since the mark lacks secondary meaning, it is invalid, he held.

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