ORDER GRANTING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
Defendants Fiji Water Company LLC, Fiji Water Company Holdings LLC and Paramount International Export Ltd. (collectively “defendant”) move for summary judgment on the claims asserted by plaintiff CG Roxane LLC (“plaintiff’) and on their counterclaim for cancellation of the plaintiffs trademark. For the reasons set forth below, the court GRANTS defendant’s motion.
I. BACKGROUND
Plaintiff CG Roxane manufactures, markets and sells Crystal Geyser bottled water. Plaintiff began using the phrase “Bottled at the Source” on its bottles in 1990. Plaintiffs water bottles are cylindrical in shape with mountains behind a blue label and a red ribbon bearing the trademark BOTTLED AT THE SOURCE across the top. In 2002, plaintiff applied with the United States Patent and Trademark Office (“USPTO”) to trademark the phrase but was initially refused registration on the grounds that the phrase “merely described the goods.” Decl. Page Beykpour (“Beykpour Deck”), Ex. G (official USPTO Office Action). Plaintiff submitted a response to the office action citing “substantially exclusive and continuous use,” marketing efforts and sales success as evidence of the mark’s acquired secondary meaning. Id., Ex. H (response to USPTO Office Action). The mark was published in the Official Gazette on August 12, 2003. Id., Ex. I. The USPTO ultimately granted “Bottled at the Source” a registration number, 2779047, on November 4, 2003. Id., Ex. J.
Defendant Fiji Water Company is also in the bottled water industry. Defendant began using the phrase “Bottled at Source” in 1997, initially on the front label of its water and, since 2005, on the back label. Defendant’s water bottles are generally square in shape with a tropical flower surrounding the logo on the front of the bottle. The back label has a blue banner with white lettering reading “Bottled at Source” toward the bottom half of the bottle near the mineral composition chart. 1
*1025 The present dispute began in 2006 when plaintiff sent a cease and desist letter to defendant and defendant refused to stop its current packaging and advertising using “Bottled at Source.” Beykpour Deck, Ex. K. In response, plaintiff filed this lawsuit alleging federal trademark infringement as well as claims for state and federal unfair competition, trademark dilution, injury to business reputation, conversion, interference, false advertising, and negligent or intentional misrepresentation. Defendant counterclaimed for cancellation of the trademark based on lack of distinctiveness. On April 28, 2008, defendant filed the instant motion for summary judgment on all of plaintiffs claims and its counterclaim.
II. ANALYSIS
A. Trademark Validity
Plaintiff alleges that defendant’s use of “Bottled at Source” constitutes infringement of its registered trademark “Bottled at the Source” in violation of the Lanham Act, 15 U.S.C. § 1114. For a plaintiff to successfully assert a trademark infringement claim under § 1114 of the Lanham Act, it must first show that it has a valid mark and next that the defendant’s use of the mark is “likely to cause confusion, or to cause mistake, or to deceive” the consumer. 15 U.S.C. § 1114(l)(a). Validity of the trademark is a threshold question since “[a] necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.”
Tie Tech, Inc. v. Kinedyne Corp.,
A trademark is a “symbol affixed by the manufacturer ... to a vendible product, which designates and distinguishes such product and protects the manufacturer’s good will, existing because of his business and the quality of his product.”
Pac. Supply Co-op. v. Farmers Union Cent. Exch. Inc.,
Arbitrary, fanciful and suggestive marks automatically receive trademark protection because they are considered inherently distinctive since they identify a product’s source and not the product itself.
KP Permanent Make-Up,
*1026
Descriptive marks can be trademarked if they acquire secondary meaning and are therefore distinctive.
Filipino Yellow Pages, Inc. v. Asian Journal Publi’n, Inc.,
Registration of the mark with the USPTO is prima facie evidence of its validity.
Tie Tech,
1. Genericness of “Bottled at the Source”
Defendant contends that “Bottled at the Source” is a generic mark and thus unprotectable. Generic marks “give the general name of the product; they embrace an entire class of products” and receive no trademark protection.
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,
Generic adjectives are not protected either since they describe a characteristic of a class of products such as “dis-infectable” nail files, “light beer” and “brick oven” pizza.
Rudolph Int’l, Inc. v. Realys, Inc.,
One criterion used to determine when a mark is generic is whether the primary significance of the mark is the product itself or the source of the product.
Rudolph,
Courts look to other sources to determine genericness such as whether competitors use the mark, use by the media and the plaintiffs own use of the mark.
Classic Foods,
In Classic Foods, the Central District of California, examining the genericness of “kettle chip,” looked at several competitors who used the term “kettle” both in their name, as a category of potato chip and in describing the cooking process for their product. Id. at 1191. The court stated that “when consumers see ‘kettle’ linked directly to the cooking process by several companies, they are informed that a kettle chip is a potato chip that has ... been [ ] cooked in a kettle” and “does not help identify the source of the product.” Id. The court concluded that the term “kettle” was a type of chip as well as the name of a process of making chips and was not associated with any one source. Id. at 1194. “Kettle chip” lacked distinctiveness, classifying it as generic and therefore ineligible for trademark protection. Id.
Similarly in
Schwan’s,
the Eighth Circuit determined that the mark “brick oven” could not be trademarked in reference to pizza because four competitors used the phrase concurrently with the plaintiff.
Schwan’s,
In considering usage by competitors, the evidence weighs in favor of the defendant that the mark “bottled at the source” is generic. Defendant provided a substantial amount of evidence regarding competitors’ use of plaintiffs mark, including almost two dozen competitors using the mark on their bottles. Decl. Mark Campbell (“Campbell Deck”), Ex. C at 35-95.
2
Defendant also provided documents
*1028
showing fifty other bottled water companies that use the phrase “bottled at the source” to describe their products to consumers in websites, advertisements and marketing.
Id.,
Ex. G at 104-214. Plaintiff correctly points out that some of these companies do not sell water in the United States. Opp’n at 7-8. A term’s primary significance is determined by “a usual buyer or other relevant members of the public” such as retail consumers in the parties’ domestic markets.
H. Marvin Ginn Corp. v. Int’l Assoc. of Fire Chiefs, Inc.,
The disputed mark in this case is very similar both to “kettle chips” and “brick oven” pizza at issue in
Schwan’s
and
Classic Foods.
“Bottled at the source” is a factual statement about the manufacturing process used to bottle water, a process that both plaintiff and defendant appear to employ. Beykpour Deck ¶¶ 40-41; Decl. John Cochran ¶¶ 1-2. In
Classic Foods,
the term “kettle chips” described a type of potato chip that was cooked in a kettle thereby making it crispier than other chips. Here, the phrase “bottled at source” describes a manufacturing process that purports to be purer than other forms of bottled water. Cochran Deck ¶ 3. Brick oven baked pizza similarly has distinct characteristics based on the mode of production (being baked in a brick oven) much like bottled water “from the source.”
Schwan’s,
Plaintiff attempts to differentiate between public use of the phrase “bottled at the source” in a general way and the public’s use of the trademark to signify a type of bottled water. This distinction was not made in
Schwan’s
or
Classic Foods,
but another trademark holder unsuccessfully made a similar argument in
Retail Services, Inc. v. Freebies Publ’g,
In addition to examining usage of a term among competitors as indicative of genericness, courts often refer to the marks usage in “popular press as strong evidence of how the public perceives the term.”
Classic Foods,
The court in
Classic Foods
concluded that 37 articles referring to kettle chips in a generic sense was a strong indication of the mark’s genericness.
Classic Foods,
The
Schwan’s
court looked at articles, newspapers and other restaurants using the term “brick oven” in a generic manner to grant summary judgment for the defendant and rule that the mark was generic.
Schwan’s,
Defendant provided approximately fifty examples of the media and popular press using the phrase “bottled at the source” to describe a type of water or a manufacturing process. Campbell Deck, Ex. H at 215-345. Defendant’s evidence is similar to that in Schwan’s, Classic Foods and Surgicenters wherein reputable press and media evidence was submitted to demonstrate genericness. Many of the articles use the mark in a sentence to describe a type of water and never refer to plaintiffs brand of water. Id. For example, a New York Times article discusses Mountain Valley Spring Water which is “bottled at the source in Hot Springs, Arkansas.” Id. at 221. Another Chicago Tribune article references a bottled water industry consultant, Arthur von Wiesenberger, who believes that there are three main categories of bottled water: natural spring bottled at the source water, artesian water and tap water. Id. at 229. Referring to natural spring bottled at the source water, Wiesenberger says, “[tjhis category of bottled water comes from a natural spring but it is not transported for bottling” and also calls it a “premium category” of water. Id.
Although plaintiff challenges this evidence on the basis that some of the articles are duplicates, this again leaves sufficient evidence to overcome a presumption of validity created by the trademark registration. Plaintiff once again argues that the media’s use is not in a generic sense and, for the reasons stated above, this distinction is unwarranted.
Retail Services,
Lastly, courts will also look to the trademark holder’s own use of the mark to determine genericness.
Colt Def. LLC v. Bushmaster Firearms, Inc.,
In
Colt,
the plaintiff used the term “M4” to describe a type of gun in a patent application and summary judgment was accordingly granted in favor of the defen
*1030
dant.
Id.
Likewise, the
Retail Services
court found the owner’s use of the trademarked term in a generic sense important in determining the validity of the mark.
Retail Services,
Plaintiffs use of the term “bottled at the source” is likewise inconsistent with its assertion that the mark is not generic. Defendant presents evidence of plaintiff using the phrase “bottled at the source” on its own bottle in describing the product as well as in its advertising. This includes statements in advertisements such as “always bottled at the source to maintain the quality and freshness of our natural spring water” and “our spring water is bottled at the source.”
The court finds that defendant submitted undisputed evidence sufficient to overcome a presumption of validity created by the registration of the mark. The existence of a trademark registration certificate is not
per se
sufficient to defeat summary judgment where defendant can carry the burden of demonstrating that the mark is not entitled to protection.
See, e.g., Retail Services,
2. Secondary Meaning
As an alternative ground for finding that “Bottled at the Source” is not a protectable mark, defendant asserts that the disputed phrase is descriptive and lacks secondary meaning. A descriptive mark is one that directly and immediately conveys some knowledge of the characteristics of a product. 2 McCarthy § 11:16. It communicates about a product without requiring any imagination on the consumer’s part.
Surfvivor Media, Inc. v. Survivor Prod.,
Descriptive marks are not inherently distinctive and, without more, are not protected.
Id.
But descriptive marks can sometimes acquire distinctiveness if consumers predominately associate the mark with a specific producer, such that the mark acquires secondary meaning.
Id; see also Self-Realization Fellowship Church v. Ananda Church of Self-Realization,
Secondary meaning is an association in the public’s mind between a product and its source.
Carter-Wallace, Inc. v.
*1031
Procter & Gamble Co.,
Evidence of secondary meaning is established in many ways, including direct consumer testimony, survey evidence, exclusive use of the mark, manner and length of use of a mark, amount and manner of advertising, amount of sales and number of customers, established place in the market and proof of intentional copying by the defendant.
Filipino Yellow Pages,
In
Filipino Yellow Pages,
the plaintiff presented evidence of secondary meaning with a declaration from the founder and president.
Filipino Yellow Pages,
Similarly in
Self-Realization Fellowship Church,
the defendant presented evidence that members of the relevant public community did not associate plaintiffs mark with a single source.
Self-Realization Fellowship Church,
Although courts look to advertising and sales as evidence of secondary meaning, this evidence is not conclusive. Naturally, a “large expenditure of money does not in itself create legally protectable rights.”
Carter-Wallace, Inc. v. Procter & Gamble Co.,
Lastly, although secondary meaning is a distinct legal principle from likelihood of confusion, they are often intertwined. 2 McCarthy, § 15:11. The Ninth Circuit affirmed a district court’s recognition that “one of the indicia of secondary meaning is the likelihood of confusion among buyers.”
Surgicenters,
Defendant primarily attacks the presumption of secondary meaning created by the trademark registration based on the non-exclusive use of the mark. Mot. at 9-10. As discussed above, defendant presented ample evidence that the mark is used by media and other competitors without referring to plaintiffs company. This speaks to the Sleekcraft factors of the strength of the mark, evidence of actual confusion and the defendant’s intent in selecting the mark. These factors weigh in favor of defendant’s position.
Defendant also contends that secondary meaning must have been established at the time of infringement in 1997. Mot. at 9-10 (“Any presumption of secondary meaning does not apply in this case because the alleged infringing mark was in use prior to registration.”). Plaintiffs argument — that the mark’s registration creates a presumption of validity based on secondary meaning, even though the defendant infringed before registration of the mark — has been rejected by courts before.
Minn. Specialty Crops, Inc. v. Minn. Wild Hockey Club, LP,
In the present case, the defendant presents undisputed evidence that it has been using the mark since 1997, five years before plaintiff registered the mark with the USPTO. As in
Minnesota Specialty Crops,
since the defendant was using the mark prior to its registration, plaintiff is not entitled to a presumption that the mark is valid. Indeed, in order to prove the validity of the mark without this presumption “[t]he user must [] show that secondary meaning existed prior to the date on which the defendant commenced using the same or similar mark.”
Scott Paper Co. v. Scott’s Liquid Gold, Inc.,
In addition, defendant asserts that confusion and therefore secondary meaning is very unlikely since the trade dress between plaintiff and defendant is very dissimilar. Reply at 12-13. Indeed, defendant’s bottle has a tropical theme and is square in shape while plaintiffs bottle has an alpine theme and is cylindrical. There *1033 is no likelihood of confusion that these two very different products came from the same producer. Defendant also asserts that placing defendant’s housemark very close to the Bottled at Source mark makes confusion very unlikely. Id. at 16. Because, as discussed above, defendant’s evidence indicates that the mark is generic, that evidence is sufficient to counter any assertion that the mark is descriptive with secondary meaning under the Sleekcraft factors.
Plaintiff presents little evidence to overcome the determination that the mark is generic or at most descriptive without secondary meaning. As discussed previously, plaintiff offers evidence of sales and marketing expenditures to establish the validity of the mark. Decl. Jordan Nelson ¶¶ 1-5 However, the Ninth Circuit has held that this is not determinative of secondary meaning.
Smith v. Chanel, Inc.,
Plaintiff also asserts that there is a likelihood of confusion and therefore secondary meaning. Looking at the
Sleekcraft
factors for determining confusion, plaintiff claims that its mark is strong, the marks are identical, the parties are in direct competition, the defendant did not use the mark in good faith, the parties use similar marketing channels and that there is a small degree of customer care in choosing bottled water. Opp’n at 17-21. Plaintiffs arguments fail when examined in light of the total evidence submitted. The undisputed evidence before the court shows that the mark is weak and most likely generic or at most descriptive. Although the wording of the marks is similar, the marks should be compared in the totality of the circumstances when determining a likelihood of confusion.
Reno Air Racing Ass’n., Inc.,
*1034 Just as defendant provided sufficient evidence to establish that the mark has a primary significance in referring to a type of bottled water and is generic, defendant has also sufficiently shown that plaintiffs mark does not have the secondary meaning required for a descriptive mark to warrant protection. Looking at the totality of the circumstances, it is clear that plaintiffs mark has no secondary meaning and that the likelihood of confusion with defendant’s use of the mark is negligible.
B. Trademark Infringement
Alternatively, defendant argues that even if the mark is found to have secondary meaning and therefore valid, its use is undisputedly within the bounds of fair use. It is technically unnecessary to discuss fair use since “[t]he fair use defense only comes into play once the party alleging infringement has shown by a preponderance of the evidence that confusion is likely.”
KP Permanent Make-Up, Inc.,
For the defendant to succeed with a fair use defense, the defendant’s use “must not ‘create an improper association between a mark and a new product’ but must, instead, ‘merely identify the trademark holder’s products.’ ”
Horphag Research Ltd. v. Garcia,
Defendant presents evidence that the mark is not used as a trademark, but as a factual statement since its water is indeed bottled at a source in Fiji. Mot. at 12. The use appears to be in good faith since defendant understood and presented evidence that the term is widely used and the mark is placed in small font on the back of the bottle. Id. Plaintiff contends that the defendant uses the term as a trademark since it is used alone and not as part of a sentence. Opp’n at 15. But the phrase “bottled at the source” or “bottled at source” can naturally be placed alone to convey information to a consumer without it being considered a trademark. Taking into account that it is an actual description of the defendant’s product and the manner in which it is used, there is no material issue of fact as to whether or not defendant has a complete defense under fair use.
C. Plaintiffs Other Claims
Plaintiff also asserts several other state and federal unfair competition, trademark dilution, injury to business reputation, conversion, interference, false advertising, and negligent or intentional misrepresentation claims based upon defendant’s use of “bottled at source” on its labeling and other advertising. State and federal trademark infringement, unfair competition and dilution claims follow essentially the same test. 4 McCarthy § 23:1. Simply put, plaintiff must prove that it has a valid mark and that there is a likelihood of confusion.
Id.; Levi Strauss & Co. v. Blue Bell, Inc.,
Plaintiffs injury to business reputation claim likewise fails where it has no protectable interest in the defendant’s use of the mark. Plaintiffs conversion claim similarly fails since the plaintiff must own the property to assert a conversion claim and this court has determined that the mark is not valid.
Burlesci v. Petersen,
D. Conclusion
Based on the evidence presented of competitor’s use, the media’s use and the plaintiffs own use of the mark, the court concludes that defendant has overcome the presumption that the trademark “Bottled at the Source” is valid. “Bottled at the Source” is generic and cannot be trademarked. In the alternative, defendant has proffered sufficient undisputed evidence showing that “Bottled at the Source” is a descriptive mark that has not acquired secondary meaning and that there is no likelihood of confusion with defendant’s use of the mark. Plaintiff has not met its burden to show otherwise. Because the court finds the mark to be invalid, plaintiffs other claims also fail.
III. ORDER
For the foregoing reasons, the court grants defendant’s motion for summary judgment as to all plaintiffs claims and on defendant’s motion for summary judgment for cancellation of plaintiffs trademark.
Notes
. On June 2, 2008, plaintiff submitted a number of objections to the evidence presented by defendant in support of its motion for summary judgment. The court will address these *1025 objections where pertinent to the discussion below. One of these objections, no. 25, is that defendant submitted two physical exhibits, 500 ml bottles of Crystal Geyer and Fiji Water, on May 6, 2008, which was 11 days after defendant initially filed its motion for summary judgment. Defendant timely submitted photos of these bottles and there does not appear to be any dispute that the bottles of water are what defendant says they are. Plaintiff's timeliness objection is overruled.
. Plaintiff objects to the photographs of bottled water contending that no foundation has been laid. The court overrules this objection. Defendant has sufficiently established that the photographs are of bottles of water acquired between February and April 2008 and were taken at the direction of Mark Campbell. Campbell Deck ¶ 4. Plaintiff's additional objection that the exhibit does not reflect the perception of American consumers is a legal *1028 argument to the merits of the import of the exhibit and is overruled. Plaintiff’s similar objections to exhibits G-N are likewise overruled.