When Boxed Water is Better, LLC launched its first line of sustainably packaged waters in 2009, it was a pioneer in a category that was (and still is) dominated by single-use plastic bottles. But there’s competition beyond store aisles, as well: the company has waged a years-long effort to convince the United States Patent and Trademark Office (USPTO) to register the name “Boxed Water™” for sole use by the company.
Rob Koenen, chief revenue officer for Boxed Water, said the company is now nearing the end of a yearslong process to secure the trademark for its brand name and believes it has created substantial evidence that Boxed Water “is indeed a brand, not a thing.” The company currently owns trademarks for several variations of the name, including “Boxed Water is Better®” and – very specifically – the name “Boxed Water” with a raindrop icon included, both of which are featured prominently on the brand’s packaging, but securing a registered mark for “Boxed Water” on its own has been a longtime goal for the brand.
“We’ve created a product that’s distinctive from any other carton water out there,” Koenen told BevNET this week. “We have the highest sustainable content, 92% of our carton [is sustainable]. We plant trees and nobody else does that and we’ve won taste awards ranking our brand ahead of our competitors. We have a whole bunch of sustainable efforts that nobody else has done. And so when somebody asks for us by brand name, you know, ‘I want a Boxed Water,’ we don’t want them to be disappointed and get somebody else’s water. If someone asks for a Coke, they don’t want a Pepsi.”
Since its 2009 launch, Boxed Water has seen competition emerge in the form of other carton packaged water brands such as Flow, JUST Water and ReThink Brands. As eco-consciousness has risen among consumers, there has been more focus on environmentally friendly brands that capitalize on shoppers’ rising distaste for plastic bottles.
But the growth of the product type, Koenen feels, also presents a danger for his brand: if the company’s mark isn’t protected, there is a looming threat that “boxed water” could become a generic catchall for any water brand in paper packaging. And it’s not only a hypothetical risk — earlier this month, for example, a Washington Post article about hotel minibars used “boxed water” as a description for JUST Water’s products, and the term also currently appears in the name of several of JUST’s Amazon listings.
That has put Boxed Water on the lookout for cases where it has to protect the name from watered-down uses. As part of their ongoing policing efforts, the company has to be diligent in requesting corrections or retractions from cases of what it perceives as misuse. Koenen said this is vital, as allowing generic uses of the name to fly unchecked could threaten to prevent the company from ever being able to properly trademark it. Brand standards for the company’s name and logo are also available publicly on its website.
“Although we already own ‘common law’ trademark rights to Boxed Water, despite not yet owning a registration, we are very diligent to make sure that all references to ‘Boxed Water’ are references to our brand,” he said. “Brand education serves the dual purpose of being a diligent trademark owner and also brings ever-increasing brand awareness.”
Skating Against the Tide
For Koenen personally, Boxed Water’s trademark fight has an air of deja vu. In the 1990s, Koenen served as VP of product management for inline skate brand Rollerblade Inc. He noted that because Rollerblade was a first-to-market product and pioneer of its category, genericization spread quickly and the company needed to respond diligently in order to protect its mark.
“I learned at that time how important it was, because we took all the necessary steps to defend the brand and make sure that [competing products] were referred to as inline skates,” he said. “And over time we were able to successfully protect the brand Rollerblade and even secure a trademark registration for it.”
So why has it taken nearly 13 years for Boxed Water to receive a registered trademark for its name? The issue comes down to alleged descriptiveness. According to Nadya Davis, an intellectual property attorney and partner with firm Holland & Hart LLP, terms that are “merely descriptive” of, or generic for, a product are usually difficult to trademark – it would be unfair, for example, for an apple farmer to brand his products as “Apple” and claim ownership over the word. However, arbitrary words and phrases are much easier to secure, i.e. Apple Computer.
Davis, who is not involved with Boxed Water’s case and referred only to publicly available documents, said the company has done well to protect its ownership of the name in the press and among competitors, but noted that isn’t always a surefire guarantee of winning a trademark.
“‘Boxed Water’ with no other designs and no other term for drinking water was probably always going to be their biggest challenge,” Davis said.
The State of Registration
Boxed Water’s most recent application to register the “Boxed Water” word mark in the U.S. was filed in June 2020 with the USPTO. That request was initially rejected in a nonfinal office notice three months later in September 2020, claiming the term was “merely descriptive,” to which the company responded and indicated that the mark is not descriptive but rather has acquired distinctiveness in the market. In June 2021, the USPTO issued another office action, continuing the rejection (this filing was mis-characterized as a final office action but that has since been overturned). Boxed Water filed a response providing further evidence to support its position that the mark is not descriptive. On January 14, an amended nonfinal office action was posted as a correction and Koenen said the company is now continuing its efforts.
At the heart of the dispute, it appears, is whether Boxed Water is a distinctive brand or just another “boxed water” that calls itself Boxed Water.
In justifying that initial rejection, the USPTO cited the prominence of other carton packaged products like JUST Water, Flow and Aqua Blox as contributing to genericization of the phrase “boxed water.” As well, the office notice argued that although the company may be able to credibly lay claim to being the first to use the phrase, being first in itself was not enough to gain the mark. The prevalence of “boxed” offerings in other food and beverage categories was also cited as another reason why the application was rejected.
“Further, the term ‘BOXED’ specifically, and even ‘box’ generally, is commonly applied to beverages and food that are sold in boxes, such as boxed wine, boxed coffee, boxed milk, boxed cocktails, boxed chocolates, and even juice boxes,” the notice stated. “…Thus, consumers are clearly exposed to the term ‘BOXED’ in connection with food and beverages and understand it to refer to food and beverages that come in boxes, just like applicant’s water.”
However, Koenen said those arguments have since been refuted by the company – for one, the brand’s packaging is modeled after a milk carton, with a gabled top, making it distinctive from multiserve boxed products which come in flat, rectangular cardboard cases. “Just as no one refers to milk in a carton as ‘boxed milk,’ it is not correct to say that ‘boxed water’ is the name of the carton water category,” he added.
The company also collected dozens of testimonials from consumers, retailers and other industry professionals attesting to recognition of the Boxed Water brand which were submitted to the USPTO late last year.
Air Cover
The trademark fight comes as Boxed Water is Better, LLC continues to grow its presence in the market. Now, the company may have a great chance to improve its brand awareness via an exclusive partnership inked last year with Alaska Airlines to replace plastic bottled waters on all flights. That deal has now brought the brand a measure of national exposure, as Boxed Water was featured prominently in a Super Bowl commercial this weekend highlighting the airline’s dedication to sustainability and care for consumers.
Koenen said the timing of the ad is coincidental – the company initially didn’t expect Alaska Airlines to feature the product in its commercial spot – but that it may be beneficial to the trademark push and the company hopes it will be another strong point in favor of registration. The rise in impressions is also accompanied by a rise in sales, he added.
“We have more customers calling us and signing up than ever,” Koenen said. “We just closed out January and our wholesale accounts, I think our applications were up over 50%. People recognize us as the premium brand.”
According to Koenen, the brand is available in CVS, regional Whole Foods accounts and Southeast Grocers among others and is distributed via UNFI, noting that the company is aiming to maintain its premium positioning in the water set.
But, if the brand is continuing to grow and many consumers associate the name with the brand regardless of ownership, why does it matter so much? According to Justin Prochnow, an attorney with the firm GreenbergTraurig which is not involved in the case, there’s several reasons to move to protect the mark. Genericization can eventually erode brand equity over time and even lead to the cancellation of existing marks. Escalator, Teleprompter and Dumpster were once their own trademarks, for example.
There’s a long game, as well, Prochnow said: the more intellectual property a company has, the more valuable it may be in a potential acquisition. While that may not be Boxed Water’s intent, it could certainly benefit any hypothetical future deal.
“Private equity guys always want to know about the IP in a company’s portfolio,” Prochnow said.
Being able to ensure its competition can’t use its name as a descriptor also helps the company to fortify its position in the market. Anecdotally, the brand dominates Google search results for “boxed water,” but products like JUST Water still appear in keyword advertisements. However, as most of the competing paper-packaged water brands have avoided the phrase in their own messaging while still crafting identities around sustainability, it’s to be determined if Boxed Water winning the registration would have a significant impact on its competitors. Rather, it’s more pertinent that Boxed Water fend off genericization – because once a trademark is ruled generic it can’t be reversed, Davis said.
According to Davis, one key lesson other companies can take away from this case is to consider branding decisions carefully from an early stage. However, while it may be safest to choose an arbitrary trademark that won’t risk scrutiny for descriptiveness, she acknowledged there may also be considered advantages for brands willing to take the risk.
“Obviously, if you choose a mark that’s closer to the protectable side of the spectrum, you know, an arbitrary or fanciful mark, you’re never going to end up in this situation,” Davis said. “That being said, there are a lot of considerations that come into play [for brands] when marketing, or whoever the decision makers are, around choosing a mark. And sometimes the benefits of a mark that maybe is arguably descriptive … nevertheless, outweigh known challenges that may exist with respect to getting trademark protection.”
As it reaches more national exposure, Boxed Water has certainly benefited from the strength of its name. But that has also come at a literal price; Koenen said the brand has spent “hundreds of thousands of dollars” to protect the brand’s IP and secure its position as a distinctive mark over the past 13 years. However, despite the challenges, he said the fight for the trademark has been “an essential and worthwhile investment.”
So, for the brand’s future, it seems that a raindrop is good, but being able to print “Boxed Water®” would be better.