Captn’s Pack Products, Inc.

Trademark Trial and Appeal Board

Sep 7, 2004

No. 76446011 (T.T.A.B. Sep. 7, 2004)

Mailed: September 7, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Captn’s Pack Products, Inc.
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Serial No. 76446011
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Morton J. Rosenberg of Rosenberg, Klein & Lee for Captn’s
Pack Products, Inc.
Tanya Amos, Trademark Examining Attorney, Law Office 113,
(Odette Bonnet, Managing Attorney).
_______
Before Simms, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:

Captn’s Pack Products, Inc. (“applicant”), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark shown
below for frozen seafood, namely, frozen raw shrimp.1

1 Serial No. 76446011, filed August 28, 2002, based upon
allegations of use since February 1, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76446011
2
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 2,608,601, issued August 20, 2002, for the
mark BLACKJACK BURGER (“BURGER” disclaimed) for beef
burgers. Applicant and the Examining Attorney have filed
briefs but no oral hearing was requested.2
We affirm.
Briefly, the Examining Attorney argues that the
respective marks are very similar because the word portion
of applicant’s mark consists of the dominant wording of the
registered mark, the word “BURGER” in that mark being

2 The results of an Internet search submitted for the first time
with applicant’s reply brief are excluded. See Trademark Rule
2.142(d). We would add that even if this matter were properly of
record, it would not change the result in this case.
Serial No. 76446011
3
generic and containing no source-indicating significance,
and that the respective food products are closely related.
More particularly, concerning the card design in
applicant’s mark, the Examining Attorney argues that that
design is not enough to distinguish the marks and, in fact,
reinforces the commercial impression of the mark “BLACK
JACK,” having reference to the card game blackjack, in
which the cards shown in applicant’s mark are a winning
hand. The words in applicant’s mark are more likely to be
impressed on a purchaser’s memory and be used in calling
for applicant’s goods, the Examining Attorney contends.
Also, the registered mark is shown in standard characters,
so that registrant’s mark could in fact be used in a form
similar to the word in applicant’s mark, the Examining
Attorney argues. As to the respective goods--frozen raw
shrimp and beef burgers--the Examining Attorney has
submitted third-party registrations which show that the
same mark has been registered for both burgers and shrimp.
For example, the mark LONG BEACH SEAFOODS COMPANY and
design (Registration No. 1,564,839, issued November 7,
1989, Section 8 affidavit accepted) is registered to the
Long Beach Seafood Company, Inc. for goods which include
seafood, fresh fish, shrimp, salmon, swordfish, lobsters,
clams, crabs, poultry, pork ribs, hamburger patties, veal,
Serial No. 76446011
4
sausage and meatballs. The same company has registered the
mark FAN SEA for the same goods (Registration No.
1,665,145, issued November 19, 1991, renewed). Also, the
mark RIVERCAT has been registered to Rivercat Foods, Inc.
for such goods as seafood, salmon, shrimp, lobsters,
oysters, clams, deli meats, hotdogs, hamburgers, sausages,
chicken, liver, bacon and deli sliced cheese (Registration
No. 2,509,335, issued November 20, 2001), and
HOSSSTEAKS.COM – ACCESS TO AMERICA’S FINEST STEAKHOUSE BEEF
for such goods as fresh and frozen beef steaks, beef
hamburgers, pork ribs, crab cakes, shrimp and lobster tails
is registered by Hoss’s Enterprises, Inc. (Registration No.
2,506,414, issued November 13, 2001). The Examining
Attorney also submitted several registrations owned by
well-known restaurant chains showing the same mark
registered for hamburgers and seafood including shrimp as
well as other food products. The Examining Attorney argues
that there is no indication in the registration that
registrant’s beef burgers are fresh or frozen, and that,
accordingly, we must presume that registrant’s goods
encompass both types of burgers and that they are sold
wherever fresh and frozen food is sold in supermarkets.
Therefore, both frozen raw shrimp and burgers could be sold
in the frozen food aisle of supermarkets, argues the
Serial No. 76446011
5
Examining Attorney. The Examining Attorney maintains that
there is nothing in the cited registration to indicate that
registrant’s burgers are sold in fast food outlets, as
applicant has contended. Because these items are
relatively inexpensive food products, the general public is
held to a lesser standard of purchasing care, a factor
which increases the likelihood of confusion, the Examining
Attorney argues. Finally, the Examining Attorney maintains
that the third-party registrations (referred to by
applicant, infra) alone do not establish use of those
registered marks and that, even if the registered mark is
considered weak, even weak marks are entitled to protection
against the registration of marks likely to cause
confusion.
Applicant, on the other hand, contends that the
Examining Attorney has given too little weight to the
allegedly distinguishing design and the stylization of the
words “BLACK JACK” in applicant’s mark; that the words
“BLACK JACK” are not the dominant part of applicant’s mark
but rather the design element and the stylization are the
dominating and distinguishing portions of applicant’s mark;
that the respective marks have different commercial
impressions; that the registered mark suggests the high
quality of registrant’s goods (because it suggests the best
Serial No. 76446011
6
hand at blackjack); that the mark BLACKJACK is registered
to others for such goods and services as blackeyed pea
salsa, beer and ale, chewing gum and restaurant services
featuring the home delivery of pizza; that the registered
mark is, therefore, “inherently weak” (brief, p. 14) and is
entitled to a narrow scope of protection; and that the
respective goods are sold in different markets because
registrant’s goods are “probably” sold in fast food
restaurants while applicant’s frozen shrimp is sold in
grocery stores. Even if these goods are sold in the same
supermarkets, applicant argues that frozen seafood would be
sold in a separate section from that where beef burgers are
sold. Further, applicant argues that “Where a potential
purchaser is obtaining a cooked hamburger, such a person
would be extremely naïve to confuse such with frozen raw
shrimp.” Response, p. 10, filed May 20, 2003. Applicant’s
attorney also indicates that there have been no instances
of actual confusion.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely.
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
Serial No. 76446011
7
factors bearing on the likelihood of confusion issue. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The means of
distribution and sale, although certainly relevant, are
areas of peripheral inquiry. The fundamental inquiry
mandated by [Section] 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, it is well settled, of
course, that marks must be considered and compared in their
entireties, not dissected or split into component parts so
that parts are compared with other parts. This is because
it is the entire mark which is perceived by the purchasing
public and, therefore, it is the entire mark that must be
compared to any other mark. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
and Franklin Mint Corp. v. Master Manufacturing Co., 667
F.2d 1005, 212 USPQ 233 (CCPA 1981). However, although
marks must be compared in their entireties, there is
nothing improper in stating that, for rational reasons,
Serial No. 76446011
8
more or less weight has been given to a particular feature
of a mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985)(“On the other hand, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.”).
Moreover, the test to be applied in determining
likelihood of confusion is not whether the marks are
distinguishable upon a side-by-side comparison, but rather
whether the marks, as they are used in connection with
registrant’s and applicant’s goods, so resemble one another
as to be likely to cause confusion. That is because, under
actual marketing conditions, consumers do not necessarily
have the opportunity to make side-by-side comparisons
between marks. Dassler KG v. Roller Derby Skate Corp., 206
USPQ 255, 259 (TTAB 1980). The proper emphasis is thus on
the recollection of the average customer, and the correct
legal test requires us to consider the fallibility of human
memory. The average purchaser normally retains a general,
rather than a specific, impression of trademarks. See
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
Serial No. 76446011
9
(TTAB 1991), affirmed in unpublished opinion, Appeal No.
92-1086 (Fed. Cir. June 5, 1992)(SILVER SPOON CAFÉ and
SILVER SPOON BAR & GRILL for restaurant and bar services v.
SPOONS, SPOONBURGER, SPOONS with cactus design, and SPOONS
within a diamond logo design); and Envirotech Corp. v.
Solaron Corp., 211 USPQ 724, 733 (TTAB 1981).
When applicant’s mark and the registered mark are
considered in light of these principles, we agree with the
Examining Attorney that the marks are very similar in sound
and commercial impression. While, as noted, the marks must
be considered in their entireties, the literal portion of
applicant’s mark plays a more prominent role in designating
the source of product. Although the design cannot be
ignored, we believe that it does not detract from the
commercial impression created by the words “BLACK JACK”
because it represents the hand in the card game that is
referred to as blackjack. Also, the word “BURGER” in the
registered mark names the product involved and does nothing
to indicate source. If applicant’s mark and the registered
mark BLACKJACK BURGER were used on commercially related
products, confusion would be likely.
Turning next to the goods, as often stated, Board
proceedings are concerned with registrability and not use
of a mark and, thus, the identification of goods in the
Serial No. 76446011
10
cited registration and applicant’s application frames the
issue. Here, there are no restrictions in the
identification of goods in registrant’s registration and we
do not read limitations into that identification of goods.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”). See also Schieffelin
& Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB
1989)(“[M]oreover, since there are no restrictions with
respect to channels of trade in either applicant's
application or opposer's registrations, we must assume that
the respective products travel in all normal channels of
trade for those alcoholic beverages”); and In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
It is also true that the respective goods need not be
identical or competitive. They need only be related in
some manner or the circumstances surrounding their
marketing be such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
Serial No. 76446011
11
23 USPQ2d 1795 (TTAB 1992); and Chemical New York Corp. v.
Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB 1986).
In order to demonstrate relatedness of the goods, the
Examining Attorney has made of record a number of third-
party registrations. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). Moreover, as our
primary reviewing Court stated in Recot Inc. v. M.C.
Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898 (Fed. Cir.
2000): “Even if the goods in question are different from,
and thus not related to, one another in kind, the same
goods can be related in the mind of the consuming public as
to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion
analysis.” The same Court reiterated, in the case of
Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002): “Even if the
goods and services in question are not identical, the
consuming public may perceive them as related enough to
cause confusion about the source or origin of the goods and
services.”
Serial No. 76446011
12
We agree with the Examining Attorney that frozen
shrimp and beef burgers are related food products that
could be sold in the same frozen food section of
supermarkets. Suffice it to say that a purchaser, who had
purchased or at least is aware of registrant’s BLACKJACK
BURGER beef burgers, who then encounters applicant’s BLACK
JACK and design frozen shrimp is likely to believe that
these food products come from or are licensed or sponsored
by the same company.
Furthermore, the third-party registrations referred to
by applicant of the mark BLACKJACK are not evidence of use
of those marks in the marketplace, and they do not show
that the public is familiar with those marks. See Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992); and AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973)(“The existence of [third party] registrations
is not evidence of what happens in the market place or that
customers are familiar with them...”). There is no
evidence, for example, relating to the nature and extent of
the use of these marks. Moreover, while third-party
registrations may be looked at in the same manner as a
dictionary to determine a term’s significance in a
particular trade, it is not seen how the several
Serial No. 76446011
13
registrations of this mark for salsa, beer and ale and
pizza delivery services shed any light on this
significance, except perhaps to show that the term may have
a somewhat laudatory meaning (as the best hand in the card
game, rather than the card game itself). Accordingly, we
do not believe that the registered mark has been shown to
be weak. Even if we deem the protection to be accorded the
cited registered mark as being more limited than that for a
totally arbitrary mark, it still extends to prevent the
registration of a mark which conveys the same commercial
impression and which is used for goods which the record
shows may emanate from a single source.
Further, without evidence of the nature and extent of
the sales and advertising of applicant’s and registrant’s
food products, or of any geographic overlap in the
marketing and sale of these goods, we can give relatively
little weight to applicant’s statement that there have been
no instances of actual confusion. That is, the lack of
actual confusion is a meaningful factor only where the
record demonstrates appreciable and continuous use by an
applicant of its mark in the same markets as those served by
registrant under its mark. See, for example, Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992); and Chemetron Corp. v. Morris Coupling & Clamp Co.,
Serial No. 76446011
14
203 USPQ 537, 541 (TTAB 1979). Specifically, there must be
evidence showing that there has been an opportunity for
incidents of actual confusion to occur. See Cunningham v.
Laser Golf Corp., supra at 55 USPQ2d 1847. See also In re
Majestic Distilling Co., Inc., supra, 65 USPQ2d at 1205
(“The lack of evidence of actual confusion carries little
weight … especially in an ex parte context”). And any
confusion about sponsorship or affiliation would not
necessarily be brought to the attention of either applicant
or registrant, where such relatively inexpensive items as
food products are involved. Furthermore, because applicant
did not commence use of its mark until the year 2000, the
period of contemporaneous use has been relatively short.
Thus, we do not believe that there has been a meaningful
opportunity for confusion to have occurred.
Finally, as noted above, because registrant’s beef
burgers and applicant’s frozen shrimp are relatively
inexpensive, purchasers may not spend a great deal of time
in the purchasing decision, a factor which favors
registrant in the likelihood of confusion analysis. It is
not, as applicant seems to contend, that a purchaser of
registrant’s beef burgers will purchase applicant’s BLACK
JACK and design frozen shrimp thinking that he or she has
just purchased a beef burger; rather, it is that such a
Serial No. 76446011
15
purchaser may well believe that applicant’s frozen shrimp
is produced by or under license from the same source that
produces the beef burger under a similar mark.
Of course, if there is any doubt concerning the
conclusion of likelihood of confusion, such doubt, in
accordance with precedent, must be resolved in favor of the
registrant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); and In re Pneumatiques Caoutchouc
Manufacture et Plastiques Kelber-Columbes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.