Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja California, F.C.L.

Trademark Trial and Appeal Board

Aug 14, 2014

No. 85835945 (T.T.A.B. Aug. 14, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Federacion Regional de Sociedades Cooperativas
de la Industria Pesquera, Baja California, F.C.L.
_____

Serial No. 85835945
_____

Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja
California, F.C.L.pro se,1

Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
_____

Before Seeherman, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja
California, F.C.L. (“Applicant”) seeks registration on the Principal Register of the
mark REY DEL MAR and Design, shown below, for “Abalones; Ark-shells; Lobsters;
Oysters” in International Class 29.2

1 Applicant’s briefs as well as its Response to the first Office Action were signed by Edgar
Alonso Aguilar Castillo, Applicant’s “Principal.”
2 Application Serial No. 85835945 was filed on January 30, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as October 15, 1986.
Serial No. 85

The
“REY D
includes
The
Section
Applica
(in stan
Applica
to cause
After
Board. W
I. A
Whe
to the r
1357, 17

3 Registr
January
835945
applicatio
EL MAR”
the follow
The
letter
prong
leaf c
Examinin
2(d) of th
nt’s mark
dard cha
nt’s mark
mistake,
the Exam
e affirm t
pplicable
n the ques
elevant fa
7 USPQ 5

ation No.
31, 2012.
n includes
in the mar
ing descri
mark cons
“Y” is rep
ed spear.
rown is on
g Attorney
e Tradem
so resembl
racters) fo
in connect
or to deceiv
ining Atto
he refusal
Law
tion is like
ctors set o
63, 567 (C

4093682 fo
the follow
k is “KIN
ption of th
ists of the
resented
The silhou
top of the
has refu
ark Act, 1
es the pre
r “seafoo
ion with A
e.
rney mad
to registe
lihood of c
ut in In r
CPA 1973
r KING OF
- 2 -
ing trans
G OF THE
e mark:
words “R
by a styliz
ette of a
spear.
sed regist
5 U.S.C. §
viously reg
d” in Inte
pplicant’s
e the refus
r.
onfusion,
e E. I. du
). See also
THE SEA
lation: Th
SEA.” In
EY DEL
ed design
man wear
ration of
1052(d),
istered m
rnational
goods is l
al final, A
we analyz
Pont de N
In re Vit
issued on

e English
addition, t
MAR”. Th
of a thre
ing a laur
Applicant’
having de
ark KING
Class 29
ikely to ca
pplicant a
e the facts
emours &
erra Inc., 6
the Princi
translatio
he applica
e
e-
el
s mark u
termined
OF THE
3 that us
use confu
ppealed to
as they re
Co., 476
71 F.3d 1
pal Registe
n of
tion
nder
that
SEA
e of
sion,
this
late
F.2d
358,
r on
Serial No. 85835945
- 3 -

101 USPQ2d 1905 (Fed. Cir. 2012); and In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
A. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We begin with the du Pont factors of the relatedness of the goods, channels of
trade and conditions of purchase. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
In this case, the goods identified in the cited registration are “seafood,” which
must be considered to be legally identical to or to encompass the abalones, ark-
shells, lobsters and oysters identified in the application. As such, the goods must
also be deemed to travel in the same channels of trade, such as grocery stores and
seafood markets, and be sold to the same classes of purchasers. Viterra, 101
USPQ2d at 1908 (absent restrictions in an application and/or registration, the
identified goods are “presumed to travel in the same channels of trade to the same
class of purchasers.”), quoting Hewlett-Packard, 62 USPQ2d at 1005. Further,
because of the nature of the goods, they will be purchased by the public at large,
who cannot be presumed to have any degree of sophistication.
Applicant argues that it offers non-kosher goods which originate from Mexico,
while Registrant sells only “kosher tuna,” and that the goods are different and move
Serial No. 85835945
- 4 -

in different channels of trade.4 We cannot consider these purported limitations on
the scope of Registrant’s goods because no such limitations are reflected in the
registration. In considering the scope of the cited registration, we are bound by the
identification in the registration itself and not to extrinsic evidence about
Registrant's goods. In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). As
the Examining Attorney correctly states,
the issue is whether “seafood” (the goods specified in
registrant’s identification of goods) is related to
applicant’s goods, not whether “kosher tuna” is related to
applicant’s goods. Applicant’s arguments regarding
registrant’s goods as (a) limited to “tuna” or “kosher
tuna,” (b) “not from Mexico,” or (c) “canned” or not are
irrelevant and moot.
Ex. Att. Br. at 11.
These du Pont factors of the similarity of the goods, channels of trade and the
conditions of purchase favor a finding of likelihood of confusion.
B. Comparison of the Marks
We next turn to the first du Pont factor focusing on the similarity between the
marks. We must compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting du Pont,

4 Applicant suggests that Registrant no longer uses the mark KING OF THE SEA for
seafood as Registrant’s website appears to be “disconnected.” Br. at 10. To the extent
Applicant is attempting to claim that Registrant has abandoned its mark, this would be
considered an impermissible collateral attack. See In re Dixie Rests., Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997).
Serial No. 85

177 US
but inst
impress
connect
F.3d 13
on the r
than a
190 USP
In co
legally
likelihoo
disparit
Estate C
Cir. 199
Scherin
1325 (T
Alth
contend
in that
words K
design o
letter “y
835945
PQ at 567
ead ‘wheth
ion’ such t
ion betwee
56, 101 US
ecollection
specific im
Q 106 (TT
mparing
identical,
d of conf
y between
orp. v. Ce
2); Jansen
g-Plough H
TAB 2007)
ough the
s that, und
c
ING OF
f the man
” connote
. “The pro
er the ma
hat person
n the part
PQ2d 171
of the ave
pression o
AB 1975)
the marks
the degre
usion nee
the goods
ntury Life
Enterpri
ealthCar
.
marks do
er the doc
omprises
THE SEA
wearing
Neptune o
per test is
rks are su
s who enc
ies.” Coac
3, 1721 (F
rage purc
f tradema
.
, we are
e of simil
d not be
. Coach S
of America
ses Inc. v.
e Products
not look
trine of for
Spanish w
. The Exa
a crown a
r Poseidon
- 5 -
not a side
fficiently s
ounter the
h Servs., I
ed. Cir. 20
haser, who
rks. See S
mindful th
arity betw
as great
ervs., 101
, 970 F.2d
Rind, 85
Inc. v. In
or sound
eign equiv
ords that
mining A
nd the thr
, the myt
-by-side c
imilar in t
marks wo
nc. v. Triu
12) (citati
normally
ealed Air
at where
een the m
as where
USPQ2d a
874, 23 U
USPQ2d 1
g-Jing H
alike, t
alents, th
translate
ttorney fu
ee-pronged
hological “
omparison
erms of th
uld be like
mph Lear
on omitted
retains a
Corp. v. S
, as here,
arks nec
there is
t 1721; Ce
SPQ2d 16
104, 1108
uang, 84 U
he Exami
e meaning
directly in
rther cont
spear re
king of th
of the ma
eir comme
ly to assum
ning LLC,
). The focu
general ra
cott Paper
the goods
essary to
a recogniz
ntury 21
98, 1700 (
(TTAB 20
SPQ2d 1
ning Atto
s are the s
to the Eng
ends that
presenting
e sea” and
rks,
rcial
e a
668
s is
ther
Co.,
are
find
able
Real
Fed.
07);
323,
rney
ame
lish
the
the
his
Serial No. 85835945
- 6 -

trident, thereby reinforcing the similarity of the marks in terms of meaning and
commercial impression.5 The Examining Attorney submitted an official “true and
accurate translation” statement from the Translations Service Center of the USPTO
in which the translator states, “I certify that I am fluent in the Spanish language,
and that the wording rey del mar means ‘king of the sea.’” In addition, as noted
above, the application includes a translation of the literal portion of Applicant’s
mark, REY DEL MAR, as “KING OF THE SEA,” which was provided by Applicant.
By contrast, Applicant argues that the doctrine of foreign equivalents does not
apply here because the words are not exact equivalents. Despite Applicant’s own
translation in the application, Applicant contends that the common translation of
REY DEL MAR is SEA KING, rather than KING OF THE SEA, and that “mar” also
commonly translates to “ocean” and “briny.” As for REY, Applicant asserts that “the
Spanish word ‘REY’ can be translated into the English word NOUN, and is also a
city in Iran,” and also can
be used as a surname throughout the world, or as a given
name for both males and females, sometimes as an
alternative to “Raymond.” Moreover, the word “REY” can
alternatively be translated in to [sic] the English
language words RULER or MONARCH.

5 “Neptune” is defined as: “[Greek name Poseidon] The Roman and Greek god who ruled the
sea. Note: Neptune is frequently portrayed as a bearded giant with a fish’s scaly tail,
holding a large three-pronged spear, or trident.” based on The American
Heritage New Dictionary of Cultural Literacy, Third Edition (2005). The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85835945
- 7 -

Br. at 8. Further, Applicant contends that the marks are dissimilar in appearance
and sound, and that the design element helps distinguish its mark from the cited
mark.
“Under the doctrine of foreign equivalents, foreign words from common
languages are translated into English to determine … similarity of connotation in
order to ascertain confusing similarity with English word marks.” Palm Bay, 73
USPQ2d at 1696. The doctrine of foreign equivalents is applied when it is likely
that “the ordinary American purchaser would ‘stop and translate [the term] into its
English equivalent.’” Id. at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ 109,
110 (TTAB 1976). See also In re Thomas, 79 USPQ2d 1021 (TTAB 2006). “The
‘ordinary American purchaser’ in this context refers to the ordinary American
purchaser who is knowledgeable in the foreign language.” Id. at 1024. See also La
Peregrina, 86 USPQ2d at 1647-48. In this case, the average purchaser is a Spanish
speaking American who eats seafood, and there is no dispute that there are a
significant number of Spanish speakers in the United States who would understand
the phrase.
Applicant takes issue only with the correct translation of REY DEL MAR, not
with whether purchasers would “stop and translate” the phrase. Thus, this is not a
situation such as in In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1984), where TIA
MARIA was found not similar to AUNT MARY’S because consumers would not stop
and translate TIA MARIA. See also Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494
F.2d 1395, 1396-97, 191 USPQ 646, 647 (CCPA 1974) (although CORDON BLEU
Serial No. 85835945
- 8 -

literally translates as BLUE RIBBON, American public would not stop and
translate because the two terms create different commercial impressions, CORDON
BLEU having been adopted in the English language and acquiring a different
meaning from BLUE RIBBON).
Based on the official translation from the USPTO Translations Service Center
and Applicant’s own translation statement in the application, we find that REY
DEL MAR is a direct and exact translation of KING OF THE SEA. See In re Hub
Distrib., Inc., 218 USPQ 284, 284-285 (EL SOL is “direct foreign language
equivalent” of SUN); In re Perez, 21 USPQ2d 1075 (TTAB 1991) (EL GALLO is
Spanish equivalent of ROOSTER). Applicant’s suggested alternate meaning for
REY DEL MAR, SEA KING, is the equivalent of KING OF THE SEA, while its
suggested meanings for the individual words, e.g., REY is a city in Iran or a
surname or a shortened form of Raymond, would not have these meanings when
used in the phrase REY DEL MAR; thus, they have no impact on the equivalency
between REY DEL MAR and KING OF THE SEA. Cf. In re Buckner Enterprises
Corp., 6 USPQ2d 1316 (TTAB 1987) (PALOMA, meaning both “dove” and “pigeon,”
not confusingly similar to DOVE). Moreover, the design element in Applicant’s
mark visually represents Neptune or Poseidon, the mythological “king of the sea”
who is frequently depicted carrying a trident, and reinforces the meaning of REY
DEL MAR as KING OF THE SEA.
Thus, despite the differences in appearance and sound, because of the identity in
connotation, and therefore similarity in commercial impression, we find the marks
Serial No. 85

to be co
1987).
C
We h
evidenc
because
the mar
and cha
items p
occur in
Registra
upon en
and lobs
the sam
and the
Dec
affirmed
835945
nfusingly
. Concl
ave carefu
e submitte
REY DEL
ks are ide
nnels of t
urchased
the mark
nt’s seafo
countering
ters, that
e entity,
Spanish m
ision: The
.
similar. In
usion
lly consid
d, even if
MAR and
ntical in m
rade are l
by the gen
etplace. Bi
od sold un
the Span
the goods
with the E
ark direct
refusal to
re Americ
ered the e
not specifi
KING OF
eaning an
egally ide
eral publ
lingual (E
der the ma
ish equiva
originated
nglish ma
ed to Span
register
- 9 -
an Safety
ntire recor
cally addr
THE SEA
d commer
ntical, and
ic without
nglish and
rk KING
lent
with or a
rk directe
ish-speaki
under Sec
Razor Co.
d, includin
essed in th
are foreig
cial impre
because
great car
Spanish)
OF THE S
for aba
re associa
d to Engl
ng consum
tion 2(d) o
, 2 USPQ2
g all argu
is opinion
n equival
ssion, bec
the goods
e, confusi
consumer
EA are lik
lones, ark
ted with o
ish-speaki
ers. Id. at
f the Tra
d 1459 (T
ments and
. We find
ents and, t
ause the g
are consu
on is likel
s familiar
ely to bel
-shells, oys
r sponsore
ng consum
1460.
demark A
TAB
the
that
hus,
oods
mer
y to
with
ieve,
ters
d by
ers,
ct is