IP Law Daily, TRADEMARK—TTAB: FIJI water not confusable with FIJIAN SPICE COMPANY for spices, (Oct 23, 2024)

By Jonathan Anderson

FIJI is commercially strong, but the marks are more dissimilar than similar and the goods are not related.

The Trademark Trial and Appeal Board has dismissed FIJI Water Company’s likelihood-of-confusion opposition to an application for the design mark FIJIAN SPICE COMPANY for spices. The FIJI mark is commercially strong and entitled to a broad scope of protection. However, the Board found the marks more dissimilar than similar and FIJI conceded that the goods are not related, factors that the Board said weighed against confusion. While there was no evidence of overlapping trade channels, purchasing care, or consumer sophistication, the Board considered these factors neutral (Fiji Water Company Pte. Ltd. v. Patel, No. 91280233 (T.T.A.B. Oct. 18, 2024)).

Background. Applicant, Hitesh Patel, sought registration on the principal register of a design mark for “Spices; Turmeric for food; Edible turmeric” in International Class 30. The mark consists of the wording “FIJIAN SPICE COMPANY” (all words disclaimed) in orange below a geometric design with triangles, squares, and bars in orange reminiscent of a tiki design.

Opposer, Fiji Water Company Pte. Ltd., filed a notice of opposition alleging likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on two registered marks: FIJI in standard characters for “natural, spring and artesian water for drinking” in International Class 32 (acquired distinctiveness claimed in whole), and a design mark consisting of the wording FIJI for “Drinking Water; Natural Artesian Water” also in International Class 32 (acquired distinctiveness claimed in whole).

Likelihood of confusion. The Board applied all DuPont factors for which there was evidence and argument and focused its analysis on Opposer’s FIJI mark in standard character format.

Strength or weakness of opposer’s mark. The Board said Opposer’s mark is entitled to a broad scope of protection, which weighs heavily in favor of likelihood of confusion. Although the mark FIJI is conceptually weak because it is geographically descriptive of certain islands in the South Pacific Ocean, the Board concluded that the mark falls on the very strong side of commercial strength, noting in part Opposer’s long use and heavy promotion of the mark.

Similarity or dissimilarity of the marks. The Board found the marks are more dissimilar than similar. Regarding appearance, the dominant element of Applicant’s mark is the FIJIAN term because it appears first, but the Board also recognized that the term is disclaimed and that Applicant’s distinctive design has equal importance to the wording given its size and location. The marks also sound similar to the extent they both include “Fiji” when pronounced.

Visually, Applicant’s mark is different given the inclusion of the large, distinctive design element and literal elements SPICE COMPANY. As for connotation, both marks have some similarity in meaning because they relate to the remote island of Fiji.

When considering the marks in their entireties, the remoteness of the Fiji island relative to consumers in the United States causes the marks to engender different commercial impressions when considering the identified goods. FIJI for water suggests clear, blue water that is unspoiled. Applicant’s mark, by contrast, suggests a different commercial impression as an exotic spice.

Similarity or dissimilarity and nature of the goods. The Board found this factor weighs heavily against a finding of likelihood of confusion. Opposer explicitly conceded that the goods are unrelated but also advanced the notion that there is some degree of relatedness because the goods are both “consumables.” The Board found this argument unpersuasive.

Similarity or dissimilarity of established, likely to continue channels of trade. The Board found this factor neutral because Opposer did not show the parties’ channels of trade overlap. Although Opposer argued that FIJI water and Applicant’s spices travel through some of the same trade channels, such as grocery stores, convenience stories, and the internet, Opposer failed to introduce any evidence supporting this claim. The Board said it must presume the goods identified in Opposer’s registration and Applicant’s application travel through all normal and usual trade channels for such goods because the parties did not identify any limitations as to channels of trade.

Sales conditions and purchaser sophistication. The Board found this factor neutral. Although the record contains pricing information as to Opposer’s identified goods, there is no evidence in the record about purchasing conditions, pricing, and types of purchasers who would purchase Applicant’s identified goods.

Balancing the factors, the Board concluded that confusion is not likely. Fiji’s opposition was dismissed.

The Case is Opposition No. 91280233.

Judge: Allard, M.

Attorneys: Michael M. Vasseghi and Danielle M. Criona (The Wonderful Co. LLC) for Fiji Water Co. Pte. Ltd. Gene Bolmarcich (Law Offices of Gene Bolmarcich) for Hitesh Patel.

Companies: Fiji Water Co. Pte. Ltd.

Cases: Trademark USPTO