Paramount International Export, Ltd.v.Q’Sai Co. Ltd

Trademark Trial and Appeal Board

Sep 15, 2017

No. 91221593 (T.T.A.B. Sep. 15, 2017)

This Opinion is Not a
Precedent of the TTAB

Oral hearing: July 13, 2017 Mailed: September 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Paramount International Export, Ltd.
v.
Q’Sai Co. Ltd.
_____

Opposition No. 91221593
_____

Christopher G. Ranson, Michael M. Vasseghi, Danielle M. Criona, Darya P. Laufer,
Roll Law Group PC
for Paramount International Export, Ltd.

Randolph E. Digges III of Rankin Hill & Clark LLP
for Q’Sai Co. Ltd.
_____

Before Zervas, Wolfson and Hightower,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Q’Sai Co. Ltd. (“Applicant”) seeks to register the mark depicted below:

for “processed kale” in International Class 29 and “preparations for making
beverages, namely, kale drinks,” in International Class 32.
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Paramount International Export, Ltd. (“Opposer”) opposes registration of
Applicant’s mark in International Class 32,1 under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), asserting a likelihood of confusion with its marks FIJI and
, previously registered for “natural, spring and artesian water for drinking” and
“drinking water; natural artesian water,” respectively, in International Class 32.
Both registrations have been registered with a claim of acquired distinctiveness
under Trademark Act Section 2(f).2
The proceeding is fully briefed. The Board conducted an oral hearing in this case
on July 13, 2017.
I. Record
The record in this case consists of the pleadings and the file of the involved
application. Trademark Rule 2.122(b)(1). The parties introduced all testimony and
evidence either by affidavit testimony (pursuant to their stipulation to submit
witness testimony in the form of written affidavits), or by notice of reliance.3

1. Opposer does not oppose registration of Applicant’s mark in Class 29.
2 Registration No. 2703620 for the typeset mark FIJI issued on April 8, 2003; renewed. Prior
to November 2, 2003, “standard character” drawings were known as “typed” drawings. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“‘[S]tandard
character’ marks formerly were known as ‘typed’ marks, but the preferred nomenclature was
changed in 2003 to conform to the Madrid Protocol … . [W]e do not see anything in the 2003
amendments that substantively alters our interpretation of the scope of such marks.”).
Registration No. 3282520 for the FIJI (stylized) mark issued on August 21, 2007; Sections 8
and 15 combined declaration accepted and acknowledged.
3 7 TTABVUE; see also 15 TTABVUE (accepting stipulation). The Board acknowledges that
although this case has not formally proceeded pursuant to the Board’s Accelerated Case
Resolution (“ACR”) process, the parties have nonetheless expedited determination on the
merits by entering into various procedural stipulations as set forth in their joint “Stipulations
For Introduction Of Evidence At Trial.” Specifically, the parties have agreed that witness
testimony may be offered and evidence introduced by sworn declaration; that produced
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Opposer made of record the May 3, 2016, testimonial affidavit of Clarence Chia,
Vice President of Marketing for FIJI Water Company LLC (Opposer’s licensee), and
accompanying exhibits, including written questions submitted as cross-examination
following Mr. Chia’s affidavit testimony, and Mr. Chia’s written answers to the cross-
examination questions.4 Opposer also introduced, under notice of reliance, certified
status and title copies of its two pleaded registrations (Registration No. 2703620 and
No. 3282520) and assignment documents showing chain of title in the registrations
terminating with Opposer.5 Opposer further introduced a photograph of a FIJI water
bottle;6 copies of unsolicited media publicity;7 a copy of Opposer’s Facebook page;8 and
screen captures of Applicant’s and Opposer’s websites showing the parties’ products
as advertised online.9
Applicant submitted the June 20, 2016, testimonial affidavit of Shinji Yamashita,
General Manager of the Human Resources and General Affairs Department of Q’Sai

documents shall be deemed to be authentic business records; and outlining a step-by-step
procedure whereby a draft declaration and proposed written cross questions may be reviewed
in advance of submission, thus enabling each party an opportunity to elect to submit the
declaration or cross questions, or conduct live testimony. We approve the use of such
efficiencies in Board proceedings.
4 12 TTABVUE. Confidential excerpts filed at 11 TTABVUE.
5 Opposer’s Notice of Reliance dated May 5, 2016; Exhibits 1, 2 and 3, 10 TTABVUE 7-16.
6 Id., Exhibit 4, 10 TTABVUE 17.
7 Id., Exhibits 9-18, 10 TTABVUE 39-59.
8 Id., Exhibit 8, 10 TTABVUE 29-38.
9 Id., Exhibits 5-7, 10 TTABVUE 19-27.
Opposition No. 91221593
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Co. Ltd. and accompanying exhibits.10 Applicant also introduced, by notice of reliance,
Opposer’s answers to Applicant’s requests for admissions.11
II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer’s
standing to oppose registration of Applicant’s mark is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252,
1254 (TTAB 2012). In addition, because Opposer’s pleaded registrations are of record,
priority is not an issue with respect to the goods covered by the registrations. Penguin
Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
Opposer has also proven its priority based on Clarence Chia’s testimony that
“[s]ales of FIJI® brand water in the United States commenced in 1997”12 and
Applicant’s admission, in its Answer, that it has not made use of its mark prior to the

10 16 TTABVUE. Confidential excerpts filed at 18 TTABVUE.
11 17 TTABVUE 11, request for admission No. 1.
12 11 TTABVUE 6.
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September 18, 2014 filing date of its application.13 Moreover, Applicant “does not
contest Opposer’s standing or priority in this proceeding.”14
III. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services, the first two du Pont factors. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (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 bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham, 55 USPQ2d at 1848.
We address in turn each of the du Pont factors for which the parties submitted
evidence or argument. To the extent that any other du Pont factors for which no
evidence was presented may be applicable, we treat them as neutral.

13 Applicant’s amended Answer, ¶13, 14 TTABVUE 3.
14 Applicant’s Brief, 23 TTABVUE 17.
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Fame of Opposer’s Marks
Opposer contends that its FIJI marks are famous. In the likelihood of confusion
context, fame “varies along a spectrum from very strong to very weak.” Midwestern
Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435,
1440 (Fed. Cir. 2012) (quoting Palm Bay, 73 USPQ2d at 1694); see also Joseph Phelps
Vineyards v. Fairmont Holdings, 857 F.3d 1323, 122 USPQ2d 1733 (Fed. Cir.
2017); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d
1492, 1507 (TTAB 2005) (stating that “[f]ame is relative . . . not absolute”), aff’d, 479
F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007). A famous mark is one that has extensive
public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis.
Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). In view of the wider latitude of legal protection a famous mark
receives, it is the duty of the party asserting that its mark is famous to clearly prove
it. The commercial strength 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. In addition, some context in which to
place raw statistics may be necessary. Id. at 1309.15

15 Opposer argues that because the mark is registered on the Principal Register, and has
become incontestable, it has a “presumption of distinctiveness.” Reply Brief, 24 TTABVUE
10. Regardless of its incontestable status, a concept that is inapposite in a Board proceeding,
an inherently descriptive mark registered on the Principal Register remains so even after
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Opposer submitted testimony that the mark FIJI has been continuously used in
connection with bottled water in the United States since 1997.16 Since 2005, Opposer
sold over 153 million cases of water17 and expended over $137 million dollars in
marketing and advertising, including $30 million for a television marketing
campaign under the tagline “Earth’s Finest Water.”18 According to a media data sheet
prepared in 2015, Opposer has spent more on advertising than its competitors in the
“water category.”19 Opposer has an online social media presence on Facebook,

five years. As for Opposer’s contention that “geographical descriptiveness is a completely
irrelevant issue in this proceeding,” we disagree. Reply Brief, 24 TTABVUE 7. Opposer’s FIJI
marks were registered with a claim of acquired distinctiveness under Section 2(f) in
recognition of the fact that FIJI identifies a known geographical location. As Opposer
recognizes, “The presumption to which a § 2(f) registration is entitled is not that the
designation is inherently distinctive, but that it had acquired secondary meaning as of the
date of registration.” (citing 2 McCarthy on Trademarks and Unfair Competition § 15:34 (4th
ed.)). Opposer’s registrations for its FIJI marks may not be cancelled on merely descriptive
grounds because they are over five years old, but the term FIJI retains its geographic
significance as an inherently geographically descriptive term for goods that originate in Fiji.
“Of course, the fact that a word may have acquired a secondary meaning as a trademark does
not generally erase its primary significance.” Am. B.D. Co. v. N.P. Beverages, Inc., 213 USPQ
387, 389 (TTAB 1981) (no likelihood of confusion found between OPICI and AMICI, both used
on “wine”); cf. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1177 (TTAB 2001) (finding in the
dilution context that “a mark can be a famous mark in a particular field but not be distinctive
outside that field”). Accordingly, we have considered the degree of inherent distinctiveness of
the FIJI mark, apart from its marketplace recognition, when determining where the mark
FIJI belongs along “the spectrum from very strong to very weak.” See Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 11:83 (4th ed.) (“The first enquiry focuses on the
inherent potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the time the
mark is asserted in litigation to prevent another’s use.”).
16 Chia Aff., ¶ 30, 12 TTABVUE 6.
17 Id., ¶ 47, 12 TTABVUE 10, Exhibit I.
18 Id., ¶¶ 52 and 54, 12 TTABVUE 11, Exhibit J.
19 12 TTABVUE 85, Exhibit K.
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Instagram and Twitter, with over 500,000 “likes” on Facebook.20 Public exposure to
Opposer’s FIJI water has come by way of unsolicited media coverage, including
candid photographs showing Hollywood celebrities drinking from or holding a bottle
of FIJI water21 and product placements in television shows and motion pictures.22
Opposer has sponsored festivals and charitable events as promotional vehicles
featuring FIJI water.23 It was the “official water” of several special events such as the
Screen Actor Guild Awards from 2010-2015, the Emmy Awards Red Carpet and
Governors Ball in 2014 and 2015, and the Annual Golden Globe Awards in 2015.24
Opposer’s FIJI water received a “tasting” award in 1999 and was ranked first in the
category of premium bottled water in 2004 by Men’s Health magazine; it has also
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.”25 According to Opposer’s witness,
“FIJI water is now the number one brand of bottled water in the United States and
has sold over 153 million cases of water in over a decade of existence, translating into
over 2.75 billion bottles of FIJI® Brand water sold.”26

20 Chia Aff., ¶ 34, 12 TTABVUE 6; Exhibit 8 to Opposer’s Notice of Reliance.
21 See, e.g., Exhibit 16 to Opposer’s Notice of Reliance, 10 TTABVUE 56 (Jennifer Lopez).
22 Chia Aff., ¶ 43, 12 TTABVUE 9.
23 Id., ¶ 37, 12 TTABVUE 7-8.
24 Id., ¶ 39, 12 TTABVUE 8.
25 Id., ¶ 50, 12 TTABVUE 10.
26 Id., ¶ 47, 12 TTABVUE 10.
Opposition No. 91221593
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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. There is no context from which to determine the
accuracy of the figures in Opposer’s media data sheet, which was apparently prepared
at Opposer’s behest. 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
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 deficiencies in Opposer’s fame evidence, Opposer has been
selling its goods in the United States for a fairly long time, its marketing expenditures
are substantial and its unit sales figures are impressive. FIJI water has been touted
by the media, received awards for its quality, and made gratuitous appearances in
popular media and well as being strategically placed in movies and television shows.
Opposer actively polices its mark.27 Considering the totality of the evidence, we find

27 Id., ¶ 58, 12 TTABVUE 12.
Opposition No. 91221593
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that Opposer’s mark has achieved a degree of public recognition and renown such
that it is commercially famous for a premium quality bottled water.28 The fifth du
Pont factor accordingly favors a finding of likelihood of confusion. Nonetheless, this
factor alone is not sufficient to establish a likelihood of confusion. If the du Pont factor
of fame were interpreted as removing the conceptual nature of a mark from the
public’s perception of the mark, owners of famous marks would essentially have a
right in gross in a term. However, as the court said in University of Notre Dame, 217
USPQ at 507:
The fame of the University’s name is insufficient in itself
to establish likelihood of confusion under § 2(d). “Likely ***
to cause confusion” means more than the likelihood that
the public will recall a famous mark on seeing the same
mark used by another. 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 principles of trademark law and to
concepts embodied in 15 USC § 1052(d).
See also Recot Inc. v. M.C. Becton, supra, 54 USPQ2d at 1898 (“fame alone cannot
overwhelm the other du Pont factors as a matter of law”); University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 507 (Fed.
Cir. 1983) (“[T]he fame of the [plaintiff's] name is insufficient in itself to establish
likelihood of confusion under §2(d)”). Therefore, we continue with our analysis of the
other relevant du Pont factors.

28 See Chia affidavit, ¶15, 12 TTABVUE 4, “FIJI® brand water is premium bottled water.”
Opposition No. 91221593
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Similarity of the Marks
We consider the marks in their entireties as to appearance, sound, connotation
and commercial impression, to determine whether or not they are confusingly similar.
In re Viterra, 101 USPQ2d at 1908; Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Our
comparison of the marks is not predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985);
see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). The “touchstone of this factor is consideration of the marks in total.”
Jack Wolfskin Ausrustung Fur Draussen GmbH KGAA v. New Millenium Sports,
S.L.U., 707 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). Nonetheless,
different features may be given greater weight in determining whether the marks are
similar. National Data, 224 USPQ at 751 (nothing improper in giving more or less
weight to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties).
Applicant seeks to register the combination word and design mark .
Opposer’s marks are FIJI (in typed form) and . For purposes of the du Pont
factors that are relevant to this appeal we will consider Applicant’s involved mark
Opposition No. 91221593
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and the unstylized FIJI mark that is the subject of Opposer’s Registration No.
2703620. If likelihood of confusion is found as to the mark and goods in this
registration, it is unnecessary to consider Opposer’s other registration because the
unstylized mark FIJI is more similar to the mark in Applicant’s application than is
the stylized mark , and the goods recited in both registrations are essentially
the same. Conversely, if likelihood of confusion is not found as to the mark and goods
in Registration No. 2703620, we would not find likelihood of confusion as to the mark
and goods in Opposer’s other registration.
The marks FIJI and are striking in their distinct connotations and
significantly different overall commercial impressions. Opposer’s mark FIJI names
the Republic of Fiji, in the south Pacific Ocean. Specifically, the mark identifies the
water itself, which originates from Fiji. As Mr. Chia, Fiji Water’s Vice President of
Marketing, testified:
16. FIJI® brand water originates from rainfall, which
filters over many decades through strata of sandstone and
basaltine beds bearing naturally occurring silica within
volcanic highlands on the main island of Viti Levu in the
Republic of Fiji.
17. FIJI® brand water is bottled at its source. The bottling
factory for FIJI® brand water, which is operated by
Natural Waters of Viti Limited ("Natural Waters"), an
affiliate of FIJI, is located directly above a pristine and
protected aquifer where the water is drawn into a totally
sealed system and immediately bottled.29

29 12 TTABVUE 4.
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Contrasting with the meaning of the term FIJI, the meaning of the term FUJI in
Applicant’s mark suggests Japan, specifically the iconic mountain known as Mt. Fuji,
a well-known symbol of Japan.30 Indeed, Applicant’s goods originate in Japan. Mr.
Yamashita testified: “The kale used to manufacture Applicant’s products is grown in
the Shimane Prefecture, on the main island of Honshu, in southern Japan using
practices that meet the USDA’s certified organic standards.”31 Opposer does not
dispute that “Fuji” is a reference to Mt. Fuji, but argues that “both are exotic, remote
locations, which the typical U.S. consumer may not be familiar with and would likely
confuse.”32 However, there is no evidence in the record to support the argument that
the typical U.S. consumer would be unfamiliar with either location. In overall
meaning and commercial impressions, the distinct geographic connotations of the
marks are inescapable, strong and very different.
The geographic connotations of both parties’ marks are reinforced by their
emphasis on the origin of their respective products. Opposer emphasizes the
derivation of its water as coming from the islands of Fiji in its television commercials,
on its website and social media pages, and on the containers (water bottles)
themselves (which tag line reads: “From the islands of …”):

30 See, e.g., Chia Aff., Exhibit C, showing numerous depictions of Mount Fuji resulting from
a Bing Images search for the term “fuji.” 12 TTABVUE 28-33.
31 Yamashita Aff. ¶ 5, 16 TTABVUE 2.
32 Brief, 19 TTABVUE 26.
Opposition No. 91221593
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Likewise, Applicant makes it clear on the front of its packaging that its beverage
preparations are “Imported from Japan”:33

33 Applicant argues that because the circle design in its mark is depicted in the color red, that
consumers would draw a connection with the flag of Japan, which consists of a large red circle
displayed against a white background. While this hypothesis may be true, it is confined to
the marketplace, and does not affect our likelihood of confusion analysis. We compare the
marks as they appear in Office records, and Applicant’s mark as filed does not contain a color
claim.
Opposition No. 91221593
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“Evidence of the context in which a particular mark is used on labels, packaging,
etc., or in advertising is probative of the significance which the mark is likely to
project to purchasers.” Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244
(TTAB 1985) (finding no similarity between the opposer’s mark POWER KICK and
the applicant’s mark POWER STEP despite opposer’s advertising use of “one step” in
association with its mark); see also 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1721
(TTAB 2007) (finding context in which marks GULPY and BIG GULP appeared was
probative of significance of marks; opposition dismissed). In this case, the trade dress
evidence strongly reinforces the geographical meaning of each mark and tends to
negate a finding that Applicant’s mark presents a confusingly similar commercial
impression. Having carefully considered the marks, and the context in which they are
Opposition No. 91221593
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used, we are not persuaded that purchasers would regard the terms FIJI and FUJI
as having substantially the same meaning.
Considering the marks in their entireties, we note that Applicant’s mark is further
distinguished by the addition of the reverse lettering design element contained in
concentric circles. The addition of the term KALE further distinguishes the marks
and is capitalized, strengthening its visual impact. Of course, Applicant’s goods are
made from kale and the term “kale” is highly descriptive, if not generic, for the goods.
Nonetheless, even though kale is the name of the vegetable used in making
Applicant’s product, it may not be ignored in Applicant’s mark. See Juice Generation,
Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015)
(“The Board did not err in giving less emphasis to the word JUICE when it noted that
the term is generic …. But the Board did not set forth an analysis showing that it
avoided the error of giving no significance to the term, which is impermissible
notwithstanding that the term is generic and disclaimed.”); In re Viterra Inc., 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (“Although the court may place more weight on
a dominant portion of a mark, for example if another feature of the mark is descriptive
or generic standing alone, the ultimate conclusion nonetheless must rest on
consideration of the marks in total.”). Further, when considering the mark’s
pronunciation, we do not disregard the fact that the addition of KALE changes the
sound of the mark and that consumers are likely to call for the goods using both words
rather than by the term FUJI alone.34 Thus, visually and aurally, there are

34 Opposer in its reply brief acknowledges that “’Kale’” does change the sound of the mark.”
24 TTABVUE 17-18. Moreover, Applicant’s marketing and sales materials consistently refer
Opposition No. 91221593
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conspicuous differences between Applicant’s and Opposer’s marks.35 We consider
these differences and the entirely dissimilar meanings of the marks to outweigh
whatever similarities in appearance and pronunciation result from the shared letters
within the terms FIJI and FUJI. Moreover, consumers are not going to dissect the
competing trademarks into discrete points of similarity and dissimilarity; rather they
will focus on the overall commercial impression created by the marks. See Fuji
Jyukogyo Kabushiki Kaisha v. Toyota Jidosha Kabushiki Kaisha, 228 USPQ 672, 674
(TTAB 1985) (SUPRA for automobiles not confusingly similar to SUBARU for
automobiles; “that the number of letters in the two marks is almost the same is
immaterial. Purchasers do not count letters when reacting to trademarks in the
marketplace.”); see also In Re Digirad Corp., 45 USPQ2d 1841, 1845 (TTAB 1998) (to
those in the medical field, DIGIRAY suggests X-ray, while DIGIRAD suggests a
measure of radiation); Am. B.D. Co. v. N.P. Beverages, Inc., 213 USPQ 387, 388 (TTAB
1981) (“However, in determining whether there is a likelihood of confusion, we must

to the goods as “FUJIKALE.” On its website and packaging, customer testimonials likewise
refer to the goods as “FUJIKALE.”
35 We bear in mind that because Opposer’s mark is presented as a “typed” mark, which is
equivalent to a standard character mark, Opposer is entitled to all depictions of its mark
regardless of font style, size, or color, including in the all-lower case format of Applicant’s
“fuji,” or in the same lettering style as the word “kale” in Applicant’s mark. See In re Viterra
Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
Nonetheless, this does not mean we consider that Registrant’s mark could be depicted in
concentric circles with reversed lettering such as that used in Applicant’s mark. The addition
of design elements such as these do not fall within the parameters of “font style, size, or
color.”

Opposition No. 91221593
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consider the marks in their entireties. Purchasers are not expected to, and do not,
count the number of letters which marks have in common.”).
On balance, we find the first du Pont factor weighs against a finding of likelihood
of confusion. The differences in the marks in terms of their appearance and
pronunciation, together with the different connotations and mental impressions that
are conveyed by the marks, support our finding that Applicant’s FUJI KALE and
design mark and Opposer’s FIJI mark do not convey confusingly similar commercial
impressions.
Similarity of the Goods, Channels of Trade, Classes of Consumers
The second and third du Pont factors assess the similarity or dissimilarity of the
parties’ goods and services and their established, likely-to-continue trade channels.
In comparing the parties’ goods, “[t]he issue to be determined . . . is not whether the
goods of plaintiff and defendant are likely to be confused but rather whether there is
a likelihood that purchasers will be misled into the belief that they emanate from a
common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989). The parties’ goods or services need not be similar or competitive
to support a finding of likelihood of confusion. It is sufficient that the respective goods
are related in some manner, or that the conditions surrounding their marketing are
such that they would be encountered by the same purchasers under circumstances
that could, in light of the similarity of the marks, give rise to the mistaken belief that
they originate from or are associated with the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). On the other hand, if the
Opposition No. 91221593
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goods are not related or are not marketed in such a way that they would be
encountered by the same persons in situations that would create the incorrect
assumption that they originate from the same source, then, even if the marks are
identical, confusion is not likely. Shen Manufacturing Co. v. Ritz Hotel Ltd, 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004).
The record does not support a finding that the goods are related or marketed in
such a way as to be encountered by potential buyers under conditions that would give
rise to consumer confusion. “Preparations for making beverages, namely kale drinks”
do not encompass nor are they encompassed by Opposer’s “natural, spring and
artesian water for drinking.” Opposer proffered no evidence that the goods are sold
through similar trade channels, or that, should Applicant commence selling its goods
in a supermarket or grocery or convenience store, they would be sold in proximity to
Opposer’s bottled water or advertised in similar media. We base our findings on
evidence, not suppositions, and nothing in the record indicates that the goods would
be sold together or similarly promoted. Nor does the record reflect any third-party
uses or registrations that would tend to show that merchants commonly carry both
types of goods under a single trademark.
Opposer argues that commonsense informs that the goods are complementary and
that Applicant’s website advertising underscores the fact that its kale powder mixes
with, among other things, water to form a drinkable beverage. Opposer points to
Opposition No. 91221593
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Applicant’s marketing materials showing that its kale powder may be mixed with
“water, milk or juice” to make a drink:36
37
In Martin’s Famous Pastry Shoppe, the Board found bread and cheese to be
complementary products that not only “travel in the same channels of trade” but are
sold by the same retail outlets in “close proximity” to each other:
Although dairy products generally need to be refrigerated
and may be kept in a separate area of a market, it was not
error for the Board to take notice of the fact that “a wide
variety of baked goods are now stored and sold in
supermarkets in frozen or refrigerated form” or that “deli
counters may well display bread and rolls in close
proximity to the cold cuts and cheeses purveyed there.”
Martin’s, 223 USPQ at 1290. In Martin’s the record showed not just that “bread” and
“cheese” are used in combination (as ingredients for making a sandwich), but that

36 Opposer’s Reply Brief, 24 TTABVUE 19.
37 Yamashita Aff., Exhibit E, 16 TTABVUE 60.
Opposition No. 91221593
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they are “stored and sold” in the same refrigerated sections of supermarkets and
displayed next to each other at deli counters. Here, in contrast, Opposer’s assertion
that Applicant’s preparations would be commonly sold and used in conjunction with
Opposer’s water is unsupported by any evidence of record. Unlike in Martin’s, nothing
in the record suggests that bottled water is sold in proximity to preparations for
making beverages, or that the goods would be specifically purchased together for that
use.
Opposer relies on two unpublished cases, In Re Vitaplex., 2002 WL 31236420, slip
op. at *1 (TTAB 2002) and Aaron T. Tabor, M.D. v. Frank J. Labarba, II, 2007 WL
1776168, slip op. at *5 (TTAB 2007) for the proposition that the goods are
complementary. To the extent that these cases stand for the proposition that water
and another product are complementary simply because they are blended together to
make a drink (without showing that they would be purchased together), the findings
in the cases are incomplete. More is required than just that the goods may be used
together. As the Federal Circuit explained in Martin’s, the fact that the goods (in that
case, bread and cheese) are likely to be used together was only one consideration in
its likelihood of confusion analysis:
In giving credence to complementary use, the Board has
stressed that it did not wish to overdraw the importance of
this element, viewing it as but one factor in the likelihood
of confusion equation ... yet not something to be ignored in
close cases such as that now before us where the kinds of
products involved do exhibit cognizable differences.... It
provides one leg to the kind of product association that we
believe would lead purchasers and consumers to assume a
common source in the face of the same marks on such
Opposition No. 91221593
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products—and that, after all, is the critical inquiry in these
cases rather than complementary use per se.
Martin’s, 223 USPQ at 1290 (citing Board decision at 221 USPQ at 336).
Here, in contrast, it is not common knowledge that mixing bottled water and
powered kale preparations “is a frequent and normal food consumption practice
which hardly requires documentation.” Martin’s, 221 USPQ at 366. Moreover, the
facts of the cases are distinguishable. In Vitaplex, the applicant sought to register the
mark VERITAS for “bottled water.” Registration was refused on the basis of a prior
registration for the identical mark VERITAS for “nutritional products, vitamins,
minerals, weight loss products, namely, dietary supplements.” After noting that the
goods did not have to be as close because the marks were identical, the Board, in
reliance on third-party registrations, found the goods related. Such registrations
demonstrated that vitamins and minerals were commonly dissolved in bottled
drinking water as nutritional enhancements. Here, there is nothing to suggest that
companies commonly dissolve vegetables in water in the same way the Board in
Vitaplex found that “bottled water has become a delivery system for additional
vitamins and nutrients dissolved in the water.”
In Tabor, the Board found that the applicant’s mark REVIVAL for, inter alia,
“bottled water, spring water, drinking water” was not likely to cause confusion with
the goods of the opposer’s registered mark REVIVAL WATER, namely, “soybean-
derived dietary supplement,” and “soy protein for use as a food additive in cereals,
breads, muffins and meat.” However, the Board did find a likelihood of confusion with
the opposer’s previously used, but unregistered, REVIVAL WATER “soy shake mix”
Opposition No. 91221593
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that was designed for use with water, “particularly here, where the marks are nearly
identical.” As to channels of trade and classes of purchasers, the Board found that the
parties operated in overlapping markets because both specifically targeted
“individuals and organization in the Christian community.”
These circumstances are not present in the case at hand. “The extent to which
particular food products are deemed related will depend on the facts of each
individual case.” Martin’s, 223 USPQ at 1290. There is no evidence of record from
which we may conclude that bottled drinking water is related to preparations for
making kale drinks. Further, insofar as Applicant’s product will be used for making
beverages, Applicant’s marketing material educates its customers to also think of
milk or juice in addition to water as a base. There is no evidence that consumers will
select bottled water, let alone premium bottled water, with which to mix preparations
for making kale drinks rather than simply use tap water for mixing up the beverages.
Applicant’s website also describes other uses for its kale powder, for example, in
pancake batter, with eggs, in salads, and as an ingredient in green sherbet.38 That
kale powder may be mixed with these various foods does not make them
complementary goods.
As for trade channels, while we presume that the goods, which are unrestricted,
move in all channels of trade normal for those goods and are available to all potential

38 16 TTABVUE 52. “Our beautifully designed, 4-color guide has 38 different recipes for you
to enjoy. Recipes range from Drinks & Smoothies, to Breakfast Items like fujiKale pancakes
or Eggs Benedict. There are great recipe ideas for Lunch like tostadas and chicken strips,
and Dinner (Lasagna, Mac & Cheese), plus side dishes, salads and snacks. We've even got
you covered for desserts (green sherbet or pound cake) and special treats for the holidays!”
Opposition No. 91221593
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classes of ordinary consumers, see Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012), there is no support for finding
that the normal channels of trade for Applicant’s preparations for making kale drinks
are the same or overlap with the usual channels through which Opposer’s goods
travel, except to the extent both parties indicate that they sell online over the
Internet. However, “the mere fact that goods and services may both be advertised and
offered through the Internet is not a sufficient basis to find that they are sold through
the same channels of trade.” Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734,
1743 (TTAB 2014) (citing Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021
(TTAB 2007). And while it is common sense that Applicant’s goods may, at some
future date, be sold at specialty health and nutrition outlets, there is no evidence to
show that Opposer’s goods are or will be sold in such stores. Moreover, there is no
evidence to show that if Applicant’s goods were to be sold in supermarkets, grocery
or convenience stores, they would be found on the same shelves or in close proximity
to Opposer’s goods.
On this record, we find that the second du Pont factor favors a finding of no likely
confusion. With respect to the third du Pont factor, while the purchasers of
Applicant’s goods likely include consumers who also purchase bottled drinking water,
there is no evidence that the trade channels in which the goods are sold will overlap.
Thus, on this record, we find the third du Pont factor is neutral.
D. Conditions of Sale
Opposition No. 91221593
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We have not overlooked the evidence that the goods are relatively inexpensive
items that may be purchased on impulse, or that both Opposer’s water and
Applicant’s kale powder are promoted as healthy and convenient. We find that du
Pont factor four slightly favors a finding of likelihood of confusion.
E. Actual Confusion
Opposer argues that there has been actual confusion in the marketplace. Opposer
submitted copies of several search results from Google, Instagram, and Bing Images
in support of its argument that “from November 2015 until February 2016, more than
750 individuals searched for FIJI® brand water, utilizing the keywords ‘FUJI
WATER.’”39 The search results purportedly show that consumers who typed the
request “FUJI WATER” were actually seeking to buy Opposer’s FIJI water, since they
allegedly “eventually clicked on FIJI Water’s website.”40 Opposer contends that 750
users (out of an undisclosed total number) actually clicked on Opposer’s website. We
have no corroborating evidence showing the “Google Analytics” methodology or
context within which to place the 750 allegedly improper searches. The record
contains a representative copy showing the results of each of the searches conducted
on Google, Bing or Instagram, but not the Google Analytics. In addition to excerpts
for Opposer’s website are excerpts for “Fuji Water” websites that other users may
have accessed.41 Moreover, it may be that the protocol established by the search

39 19 TTABVUE 27
40 19 TTABVUE 27, citing Chia Aff. at 12 TTABVUE 13.
41 We note that Applicant suggests that users may have been searching for FUJI A bottled
water, 12 TTABVUE 12, and submitted a copy of a registration for the mark FUJI A for, inter
Opposition No. 91221593
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engines produces “FIJI” results any time a user types a four-letter term having the
construct “F-J-,” where the hyphens match any vowel. As Applicant points out, the
letters “U” and “I” are adjacent to each other on a QWERTY keyboard and could be
mistyped. Accordingly, the fact that the searches returned hits for “FIJI,” and that
users apparently ultimately selected and accessed Opposer’s website does not prove
that they were confused when they typed “FUJI WATER” to commence their search.
We find this du Pont factor to be neutral.
IV. Conclusion
Although FIJI and FUJI differ by only one letter, they convey vastly different
meanings. FIJI is the name of a group of islands in the South Pacific forming the
Republic of Fiji. FUJI is short for “Mt. Fuji,” an iconic symbol of Japan. The goods are
not related, in that preparations for making kale drinks and water bear no relation,
except to the extent that Applicant’s preparations may be mixed with water.
Nonetheless, the record does not support a finding that the products would be offered
for sale in close proximity or purchased together under conditions that would give
rise to a likelihood of confusion. No actual confusion has been shown. Finally, we have
weighed the evidence of the public recognition and renown of Opposer’s mark as a
significant factor in Opposer’s favor, and also considered that the conditions of sale
slightly favor a finding in Opposer’s favor. On balance, we find the differences in the
connotations and commercial impressions of the marks to be the critical

alia, “bottled water.” Reg. No. 4255630, 12 TTABVUE 109, Exhibit M. None of the excerpts
in the Google, Bing or Instagram searches appear to be related to FUJI A water however.
Opposition No. 91221593
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countervailing factor, outweighing (together with the differences in the goods) the
similarities of sight and sound in the marks. Considering the record as a whole, we
find that Opposer has not carried its burden to establish by a preponderance of the
evidence that Applicant’s mark is likely to cause confusion with Opposer’s
mark FIJI.
Decision: The opposition is dismissed.
- o O o -
Opinion by Hightower, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority decision. First and foremost, I disagree
with the analysis of the similarity of the parties’ marks. The distinctive and dominant
portions of the marks, FIJI and FUJI, are highly similar visually and similar aurally.
In addition to being a short monosyllabic term, the trailing word KALE is generic in
association with Applicant’s identified goods. It cannot be ignored, but certainly is
entitled to little weight as an indicator of source. See Juice Generation, 115 USPQ2d
at 1676 (stating that the Board “did not err in giving less emphasis to the word JUICE
when it noted that the term is generic”); Primrose Ret. Cmtys., LLC v. Edward Rose
Senior Living, LLC, 122 USPQ2d 1030, 1037 (TTAB 2016) (noting that the generic
terminology SENIOR LIVING “plays little role in the source-indicating function of
Applicant’s mark as a whole”). Considering the marks in their entireties, I would find
FIJI and to be highly similar in appearance, similar in sound, and to convey
similarly exotic overall commercial impressions.
Opposition No. 91221593
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While the underlying meanings of the marks are different, the majority tasks
Opposer with proving a negative when it states that “there is no evidence in the
record to support the argument that the typical U.S. consumer would be unfamiliar
with either location.” There also is no evidence – and in my estimation, it is highly
unlikely – that a typical American consumer will stop to contemplate the significance
of remote geographic associations conveyed by the terms while shopping for these
inexpensive goods, which are subject to impulse purchase (the fourth du Pont factor),
thereby distinguishing between the parties as their source.
Nor do I necessarily assume that consumers will be informed by text currently
presented (in tiny print) on the parties’ packaging mentioning Japan and “the islands
of.” This wording forms part of neither the composite mark in the application nor the
word marks in the pleaded registrations. Cf. Ultracashmere House Ltd. v. Spring
Mills Inc., 828 F.2d 1580, 4 USPQ2d 1252, 1254 (Fed. Cir. 1987) (stating that
registrability must be resolved on the basis of the application); Kimberly-Clark Corp.
v. H. Douglas Enters., 774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985) (“It is
settled . . . that a distinction in trade dress cannot weigh against likelihood of
confusion with respect to the registration of a simple word mark. . . . The reason is
that such dress might well be changed at any time; only the word mark itself is to be
registered.”); see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1470 (TTAB 2016) (rejecting as irrelevant to likelihood of confusion that parties use
their marks with distinguishing matter).
Opposition No. 91221593
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Viewed as a whole, I would find the marks to be similar and the first du Pont
factor to weigh in favor of a likelihood of confusion, particularly in light of the wide
latitude of protection accorded to Opposer’s famous mark under the fifth du Pont
factor. See, e.g., Bridgestone Ams. Tire Ops. LLC v. Fed. Corp., 673 F.3d 1330, 102
USPQ2d 1061, 1063 (Fed. Cir. 2012) (“A ‘strong mark . . . casts a long shadow which
competitors must avoid.’”) (quoting Kenner Parker Toys, 22 USPQ2d at 1456); Coach
Servs., 101 USPQ2d at 1720 (“The fame of the registered mark plays a ‘dominant’ role
in the DuPont analysis, as famous marks ‘enjoy a wide latitude of legal protection.’”)
(quoting Recot, 54 USPQ2d at 1897).
The majority acknowledges that the fourth and fifth du Pont factors weigh in favor
of finding confusion likely. As for the remaining factors, record evidence cited by the
majority shows that the goods are complementary. Applicant’s marketing materials
state that its “preparations for making beverages, namely, kale drinks” may be mixed
with Opposer’s identified goods, water, illustrated by water poured from a bottle:1

1 Excerpt from Yamashita Aff., Exhibit E, 16 TTABVUE 61.
Opposition No. 91221593
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Applicant’s counsel, moreover, conceded at oral argument that the trade channels
for the parties’ beverages likely will overlap.2 Thus, the second and third du Pont
factors also weigh in favor of a finding that confusion is likely.
Because in my view the first, second, third, fourth, and fifth du Pont factors all
support a finding that confusion is likely and no factor weighs against, I would
sustain the opposition.

2 The majority does not address the fact that the application, which contains no limitations
as to channels of trade, was filed on an intent-to-use basis pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).