Paramount International Export, Ltd.v.FoJo Beans

Trademark Trial and Appeal Board

May 17, 2017

No. 91222612 (T.T.A.B. May. 17, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 17, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Paramount International Export, Ltd.

v.

FoJo Beans
___

Opposition No. 91222612
___

Michael M. Vasseghi, Danielle M. Criona and Darya P. Laufer
of Roll Law Group PC for Paramount International Export, Ltd.

Michael Keenan of Hinman, Howard & Kattell, LLP
for FoJo Beans.
______

Before Kuhlke, Adlin and Heasley, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
FoJo Beans, a limited liability company with two members, Daniel Foust and
Daniel Joseph (“Applicant”),1 seeks registration of FOJO BEANS in standard

1 The involved application indicates that Applicant is a partnership comprising Messrs.
Foust and Joseph, but in March 2016 Applicant converted to its current form.
Opposition No. 91222612

2

characters (with BEANS disclaimed) for “coffee and tea” in International Class 30.2
In its notice of opposition, Paramount International Export, Ltd. (“Opposer”) alleges
prior use and registration of FIJI, in both typed letters3 and the form shown below
4
for drinking water; both of Opposer’s pleaded registrations issued under Section 2(f)
of the Act. As grounds for opposition, Opposer alleges that use of Applicant’s mark
would be likely to cause confusion with, and dilute, Opposer’s marks. In its answer,
Applicant denies the salient allegations in the notice of opposition. On March 29,
2017, Opposer withdrew its dilution claim. 15 TTABVUE.5
Accelerated Case Resolution
In denying Applicant’s motion for summary judgment, the Board suggested that
the parties consider resolving this case through Accelerated Case Resolution (“ACR”).
13 TTABVUE 3-4. Shortly thereafter, the parties followed the suggestion, agreeing,

2 Application Serial No. 86404457, filed September 24, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use in commerce at
least as early as September 30, 2012.
3 Registration No. 2703620, issued April 8, 2003; renewed. The full identification of goods in
this registration is “natural, spring and artesian water for drinking” in International Class
32.
4 Registration No. 3282520, issued August 21, 2007; Section 8 affidavit accepted, Section 15
affidavit acknowledged. The full identification of goods in this registration is “drinking water;
natural artesian water” in International Class 32.
5 Citations to the record refer to TTABVUE, the Board’s online docketing system. Specifically,
the number preceding “TTABVUE” corresponds to the docket entry number, and any number
following “TTABVUE” refers to the page number of the docket entry where the cited
materials appear.
Opposition No. 91222612

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among other things: (1) to forego a traditional trial, and instead “submit the case to
the Board by means of their previously filed summary judgment briefs” and the
accompanying evidence; (2) that Opposer would withdraw its dilution claim and
submit status and title copies of its pleaded registrations; and (3) that “the Board
may resolve any remaining genuine disputes as to material facts” as necessary to
resolve this case. 14 TTABVUE.
The ACR Record
The record consists of the pleadings, and, by operation of Trademark Rule
2.122(b), the file of Applicant’s involved application. In addition, Opposer introduced
the following evidence with its summary judgment/ACR brief:
Affidavit of Clarence Chia, Vice President of Marketing for
Fiji Water Company LLC, which assigned Opposer’s
pleaded registrations to Opposer, received a license from
Opposer to use the marks and has used the marks since
1997. 10 TTABVUE 34-40.

Affidavit of Michael Vasseghi, Opposer’s counsel, and the
exhibits thereto. 11 TTABVUE.

Applicant introduced the following evidence with its summary judgment/ACR briefs:
“Attorney Affirmation,” under penalty of perjury, which is
construed as a declaration, of Michael Keenan, Applicant’s
counsel, and the exhibits thereto. 8 TTABVUE 2-86.

Affidavit of Mr. Joseph and the exhibits thereto. Id. at 112-
144.

Reply Affidavit of Mr. Joseph. 12 TTABVUE 11.

Pursuant to the parties’ ACR stipulation, Opposer filed printouts from an Office
database establishing the status of its pleaded registrations. The Chia Affidavit
Opposition No. 91222612

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establishes Opposer’s ownership of those registrations. 15 TTABVUE 4-14; 10
TTABVUE 35 (Chia Aff. ¶¶ 6-7).
Standing and Priority
Opposer’s pleaded registrations establish its standing. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). And priority is not at issue with respect to the goods identified in those
registrations. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).6
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In

6 Opposer’s arguments that Applicant “has no standing to apply for a federally registered
mark,” and has not used its mark in commerce, are not well taken. Standing applies only to
plaintiffs in inter partes proceedings, not defendants. Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012) (“Under Article III of
the United States Constitution, a plaintiff must show a ‘case or controversy’ between the
parties to establish standing … The purpose of the standing requirement is ‘to prevent
litigation where there is no real controversy between the parties, where a plaintiff, petitioner
or opposer, is no more than an intermeddler.’”) (citations omitted). And because Opposer did
not plead nonuse as a ground for opposition, we do not consider this “claim.” Syngenta Crop
Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009). In any event, even
if we considered nonuse, the claim would be rejected as it is based on the factually incorrect
premise that Applicant only sold its goods intrastate, and the legally incorrect premise that
intrastate use is necessarily insufficient to establish trademark use. 12 TTABVUE 11 (Joseph
Reply Aff. ¶ 3) (“prior to applying for its mark at issue herein, Applicant sold and shipped
coffee and tea bearing Applicant’s FOJO BEANS mark from Applicant’s headquarters in
Upstate New York to customers in Pennsylvania”); Christian Faith Fellowship Church v.
adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016) (“Because one need not direct
goods across state lines for Congress to regulate the activity under the Commerce Clause,
there is likewise no such per se condition for satisfying the Lanham Act’s ‘use in commerce’
requirement.”).
Opposition No. 91222612

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re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Opposer bears
the burden of establishing that there is a likelihood of confusion by a preponderance
of the evidence. Cunningham, 55 USPQ2d at 1848. We consider the likelihood of
confusion factors about which the parties introduced evidence or presented argument,
and treat the remaining factors as neutral.
We focus our analysis on Opposer’s pleaded registration for FIJI in typed form, as
that mark is entitled to the broadest scope of protection, and if we find confusion
likely between that mark and Applicant’s mark, we need not consider the likelihood
of confusion between Applicant’s mark and Opposer’s other pleaded, stylized mark.
On the other hand, if we find no likelihood of confusion between Applicant’s mark and
FIJI in typed form, we would not find confusion between Applicant’s mark and FIJI
in stylized form. See Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066,
1073 n.14 (TTAB 2011); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Fame
When an opposer’s mark is famous, that fact “plays a ‘dominant role in the process
of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63
Opposition No. 91222612

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USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). It is settled that a strong mark “casts a long
shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
In the absence of direct evidence of fame, “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.” Bose, 63 USPQ2d at 1305. Other relevant
factors include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Services. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Opposer has established its use of FIJI for drinking water since 1997, and that it
uses the mark “in all of its advertising and promotional activities.” These activities
include:
advertising on Facebook, Instagram and Twitter, with Fiji
Water’s Facebook page receiving “more than one-half a
million ‘likes;’”

sponsoring many charity events, and FIJI water being the
“official water” of several award shows; and

“product placement” in television shows and movies,
including “Desperate Housewives,” “CSI,” “The Sopranos,”
“Will & Grace,” “West Wing,” “Grey’s Anatomy,” “The
Apprentice,” “Kill Bill Vol. 2,” “Along Came Polly,”
“Barbershop,” “50 First Dates,” “The War of the Worlds,”
“Birdman or the Unexpected Virtue of Ignorance” and
several others.

Opposition No. 91222612

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10 TTABVUE 35-38 (Chia Aff. ¶¶ 14, 17-18, 21-23). “Since 2005 FIJI Water has
expended over $137 million in the marketing, advertising, sales and promotion of its
FIJI® brand water product.” Id. at 39 (Chia Aff. ¶ 30). Furthermore, Opposer’s FIJI
water “has been the subject of articles in many major U.S. publications, including
People magazine, The New York Times, Glamour, US Weekly, USA Today, Men’s
Health, Marie Claire, Variety and The Wall Street Journal.” Id. at 39 (Chia Aff. ¶ 28).
Opposer’s goods and marketing efforts have apparently been successful, as FIJI water
“is now the number one premium brand of bottled water in the United States and has
sold over 153 million cases of water … translating into over 2.75 billion bottles of
FIJI® Brand water sold.” Id. at 38 (Chia Aff. ¶ 25).
We acknowledge some deficiencies in Opposer’s evidence of fame. For example,
there is no evidence regarding the circulation figures for the various publications
cited, or attendance/viewing figures for the movies or television shows in which
Opposer’s products have appeared. Furthermore, it is unclear how Opposer defines
“premium” bottled water brands, how many products fit in that category or even what
being “number one” in that category means with respect to the bottled water market
as a whole. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1831 (TTAB 2012) (“We have no context for opposer’s advertising and sales figures,
such as how the figures for [FIJI water] compare with … other brands of” bottled
water); see also, Bose, 63 USPQ2d at 1309 (“some context in which to place raw
statistics is reasonable”). It is unclear how many people have been exposed to
Opposition No. 91222612

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Opposer’s mark or products at award shows or how its number of Facebook likes
compares to the social media success of Opposer’s competitors.
Notwithstanding these and other deficiencies in Opposer’s fame evidence, we
recognize that many of the publications, movies and television shows in which
Opposer’s products have appeared are well-known and popular. And by any measure,
the number of units Opposer has sold and its advertising expenditures are
impressive. Considering the totality of Opposer’s fame evidence, we find based on
Opposer’s long-term use of FIJI for drinking water, significant sales success,
extensive advertising and widespread media attention, that Opposer’s FIJI mark is
famous for bottled water. See, Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734,
1740 (TTAB 2014) (recognizing similar deficiencies in the opposer’s evidence of fame,
but nonetheless finding fame for the opposer’s primary service, acknowledging that
context and “comparative information may be difficult, if not impossible to obtain,
because companies may view such information as proprietary and not disclose it
publicly”).7
The Marks
The marks are quite dissimilar “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). In fact, while we agree with Opposer that

7 Applicant introduced five third-party registrations containing FIJI and argues that they
“impair[] the distinctiveness and strength of” Opposer’s FIJI marks. 8 TTABVUE 77-86, 104.
We are not persuaded, because none of the third-party marks are registered for beverages.
Opposition No. 91222612

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FOJO is the dominant portion of Applicant’s mark, because BEANS is descriptive or
generic and disclaimed, FOJO looks and sounds different and conveys a different
meaning than FIJI.
Obviously, while the consonants in the two marks are the same and located in the
same position, the vowels, comprising one-half of the letters in each mark, are
different, making FIJI and FOJO look fairly different. The differences between the
marks’ vowels have a significant impact on how FIJI and FOJO sound, regardless of
whether any of the vowels are pronounced with a long or short sound.
Moreover, FIJI and FOJO have completely different meanings. FIJI is a country
in the South Pacific.8 Opposer’s interrogatory responses indicate that: (1) “all of the
water sold under the FIJI Marks [is] derived from the Island of Fiji;” (2) “all of the
water sold under the FIJI Marks [is] bottled on the Island of Fiji;” and (3) “every
bottle of water currently sold under the FIJI Marks includes the phrase ‘From the
islands of’ above the FIJI Mark.” 8 TTABVUE 61 (Opposer’s responses to Applicant’s
Interrogatory Nos. 8-10). By contrast, FOJO is comprised of the first two letters of
the last names of Applicant’s members (Daniel Foust and Daniel Joseph). 8
TTABVUE 119 (Joseph Aff. ¶ 30) (“The intent of the FoJo Beans mark is that ‘FoJo’
is a mashup of the two owners’ last names, ‘Foust’ and ‘Joseph’, and ‘Beans’ signifies
that the business deals in coffee products.”). While this origin of Applicant’s mark
may be lost on potential consumers, and is not reflected in the drawing of the mark,
FOJO shares no connotation with FIJI.

8 This is apparently why Opposer’s registrations issued under Section 2(f).
Opposition No. 91222612

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The marks are even more different when, as required, we consider Applicant’s
mark in its entirety. As stated, Opposer is correct that FOJO is the dominant portion
of Applicant’s mark, but Opposer is incorrect to the extent it suggests that we may
ignore the term BEANS and compare only FOJO to FIJI. Cf. In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“The technicality of a disclaimer
in National’s application to register its mark has no legal effect on the issue of
likelihood of confusion. The public is unaware of what words have been disclaimed
during prosecution of the trademark application at the PTO.”); Schwarzkopf v. John
H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (CCPA 1965).9 Here, FOJO BEANS looks
and sounds even more different than FIJI than does FOJO alone. And perhaps more
importantly, FOJO BEANS conveys a much different meaning than FIJI, because
FOJO BEANS conveys coffee (or another product containing or derived from beans),
while FIJI conveys a particular geographic location. Shen Manufacturing Co. v. Ritz
Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (“And, while ‘kids’
is undeniably used to indicate that the product is geared toward children, it
distinguishes RHL’s mark from Shen’s …”).
In short, this factor weighs heavily against a finding of likelihood of confusion.

9 Applicant’s reliance on the unpublished decision in In re Critchley, 2012 WL 5196146
(TTAB 2012) is misplaced, because there the Board merely found that KICK ASS was the
dominant portion of KICK ASS COFFEE, just as we find here that FOJO is the dominant
portion of FOJO BEANS.
Opposition No. 91222612

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The Goods and Channels of Trade
Obviously, the parties’ marks are all used for beverages, Opposer’s for drinking
water and Applicant’s for coffee and tea (which we read to include both coffee beans
and tea leaves as well as coffee and tea beverages). See In re White Jasmine LLC, 106
USPQ2d 1385, 1392 (TTAB 2013) (“Indeed, tea encompasses ‘beverages made of
tea.’”). However, this is not enough by itself to establish a relationship between the
goods. In re W.W. Henry Co., 82 USPQ2d 1213, 1215 (TTAB 2007) (“It is true that
applicant’s goods, as identified, include a Portland cement based patch for use in
repairing wall and floor surfaces, while the cited registration covers a chemical filler
for use in the cosmetic repair of polyolefin surfaces, and therefore they can both be
broadly described as preparations for repairing surfaces. However, to demonstrate
that goods are related, it is not sufficient that a particular term may be found which
may broadly describe the goods.”); Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“All computer software programs process
data, but it does not necessarily follow that all computer programs are related.”).
Opposer has not introduced any evidence whatsoever that drinking water is sold
under the same mark(s) as coffee or tea.10 We cannot find a relationship between the
goods under these circumstances, other than that Opposer and Applicant both offer
beverages.11

10 Applicant’s reliance on the unpublished decision in In re Critchley, 2012 WL 5196146 is
also misplaced on this point. There, unlike Opposer in this case, the Examining Attorney
introduced evidence that coffee and fruit-based drinks are related.
11 There is no evidence that bottled drinking water is used to brew coffee, much less that
both drinking water and coffee are offered under the same mark(s).
Opposition No. 91222612

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As for channels of trade, Opposer correctly points out that because there are no
limitations on channels of trade in either party’s identification of goods, we must
presume that Applicant’s coffee and tea and Opposer’s drinking water travel in all
channels of trade normal for those goods, which, Opposer contends, include
“supermarkets, convenience stores, i.e. general retail outlets.” 10 TTABVUE 23.
This is also not enough to establish that the channels of trade overlap. “A wide
variety of products, not only from different manufacturers within an industry but also
from diverse industries, have been brought together in the modern supermarket for
the convenience of the customer. The mere existence of such an environment should
not foreclose further inquiry into the likelihood of confusion arising from the use of
similar marks on any goods so displayed.” Federated Foods, 192 USPQ at 29; Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1472 (TTAB 2016); 7-Eleven,
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007) (“Opposer contends that
because applicant’s products may be sold in convenience stores and because opposer
sells pet products, the channels of trade overlap. However, we must recognize the
following facts: (i) opposer is a convenience store chain whose individual stores sell a
wide variety of products including groceries, snacks, drugstore items, and sometimes
gasoline; and (ii) the products at issue are of such diverse nature and utilized for such
different purposes that even if all of the products are sold in opposer’s convenience
stores, consumers would not believe that they emanate from a single source.”).
In short, while coffee, tea and drinking water are all beverages, and we are aware
that some coffeeshops and grocery stores may sell coffee or tea on the one hand and
Opposition No. 91222612

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drinking water on the other, there is no evidence that these items are sold under the
same mark, that they are sold in the same sections of the same stores, or that they
are marketed to the same consumers. We therefore cannot find that the parties’ goods
are related or travel in the same channels of trade based on this record.12
The question we are faced with here is whether consumers “would consider the
goods to emanate from the same source.” Coach Services, 101 USPQ2d at 1723; 7-
Eleven, 83 USPQ2d at 1724. There is no evidence that they would. These factors
therefore weigh against a finding of likelihood of confusion.
Purchaser Care and Sophistication
Finally, Opposer argues that the parties’ goods “are relatively inexpensive,” and
unlikely to be purchased with care. 10 TTABVUE 21. Opposer perhaps overstates the
point, in that it characterizes its “artesian” water as “the number one premium brand
of bottled water in the United States,” while Applicant’s “coffee and tea are priced far
above the norms for the coffee industry.” 8 TTABVUE 119 (Joseph Aff. ¶ 37); 10
TTABVUE 28. However, we recognize that we must base our decision on the “least
sophisticated potential purchasers” for the goods as identified, which are “drinking
water,” “coffee” and “tea.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

12 While we assume that Applicant’s customers will at some point purchase or drink water,
and that some of Opposer’s customers will at some point purchase or drink coffee or tea, that
is not a basis upon which to find that the channels of trade or classes of consumers are the
same. Coach Services, 101 USPQ2d at 1723; Sports Authority Michigan Inc. v. PC Authority
Inc., 63 USPQ2d 1782, 1794 (TTAB 2002) (“We think it a fit subject for judicial notice that
purchasers of computer hardware and software also would be purchasers of, at least, footwear
and apparel, and perhaps sporting goods and equipment. There is nothing in the record,
however, to suggest that merely because the same consumer may purchase these items, such
consumer would consider the goods as likely to emanate from the same source or have the
same sponsorship.”).
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F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage
Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on
other grounds, 2014 WL 343267 (TTAB 2014)). This factor therefore weighs in favor
of finding a likelihood of confusion.
Conclusion
While Opposer’s marks are famous for drinking water, and we assume that
consumers will not exercise a great deal of care in purchasing the parties’ goods, this
is not enough for us to find confusion in the face of such different marks and unrelated
goods.
It must also be established that there is a reasonable basis
for the public to attribute the particular product or service
of another to the source of the goods or services associated
with the famous mark. To hold otherwise would result in
recognizing a right in gross, which is contrary to the
principles of trademark law and to concepts embodied in 15
U.S.C. § 1052(d).

The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d
1372, 217 USPQ 505, 507 (Fed. Cir. 1983). See also, Burns Philp Food, Inc. v. Modern
Products, Inc., 24 USPQ2d 1157, 1159 (TTAB 1992), aff’d, 1 F.3d 1252, 28 USPQ2d
1687 (Fed. Cir. 1993) (“even though the parties’ goods are relatively inexpensive and
would presumably be purchased without much care, and even though opposer’s mark
is famous in the field of spices, it is our firm belief that applicant’s mark, considered
in its entirety, is sufficiently different from opposer’s in sound, appearance and
meaning that confusion is unlikely”); Electronic Data Systems, 23 USPQ2d at 1464.
Opposition No. 91222612

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In short, as important as fame is, it “cannot overwhelm the other DuPont factors.”
Coach Services, 101 USPQ2d at 1720.

Decision: The opposition is dismissed.