New Zealand King Salmon Co. Ltd.

Trademark Trial and Appeal BoardJan 12, 2009

No. 76664911 (T.T.A.B. Jan. 12, 2009)

Hearing: Mailed: 19 November 2008 12 January 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re New Zealand King Salmon Co. Ltd. ________ Serial No. 76664911 _______ Robert T. Maldonado of Cooper & Dunham LLP for New Zealand King Salmon Co. Ltd. Darryl M. Spruill, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _______ Before Drost, Zervas, and Taylor, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On August 21, 2006, applicant New Zealand King Salmon Co. Ltd. applied to register the mark REGAL and design shown below on the Principal Register for goods ultimately identified as “fish, namely, salmon” in Class 29.1 1 Serial No. 76664911. The application is based on an allegation of a bona fide intention to use the mark in commerce and applicant’s ownership of New Zealand Registration No. 710199 dated January 13, 2005. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76664911 2 The examining attorney has refused to register applicant’s mark under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) because of a registration for the mark REGAL and design shown below for “crab meat” in Class 29.2 When the refusal was made final, applicant filed this appeal. A hearing was held on November 19, 2008. In a case involving a refusal under Section 2(d), we analyze the facts as they relate to the relevant factors set out in 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) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In 2 Registration No. 1117376, issued May 1, 1979, renewed. Ser No. 76664911 3 considering the evidence of record on these factors, we must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). “The first DuPont factor requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” 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, 177 USPQ at 567). In this case, both marks are for the identical word, “Regal.” The only difference in the marks is their designs. Applicant’s mark has an outline of a fish above the letter “G” in “Regal” while registrant’s mark has a crown above the letter “R.” Applicant has a border around the word and design but this adds little to the mark. B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1508 n.23 (TTAB 2007) (“Plain geometric designs, such as the oval carrier or frame for the design of a man wearing a sombrero would not be seen by consumers as a particularly distinctive element of applicant’s mark”). The difference between the scripts in the two marks is Ser No. 76664911 4 minor and unlikely to be used by consumers to distinguish the marks. In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (“Although the style of the script is somewhat different from the lettering style in which ‘SPARKS’ is presented in applicant’s mark, the difference is not significant”). See also In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“While applicant’s mark is in script form and registrant's is in block letters, that is the only difference between them and that is not a significant difference in view of the fact that purchasers are unlikely to remember this simple distinction. Rather, it is the word itself which will more likely be recalled”). Regarding the marks’ designs, applicant’s mark includes a fish design while registrant’s mark has a crown. The examining attorney argues that “both the applicant’s and registrant’s marks feature the identical word portion REGAL. The addition of the design elements to the parties’ marks does not obviate the similarity between the marks in this case.” Brief at unnumbered p. 8. Applicant in turn argues that the “the design elements are not confusingly similar, and the Trademark Attorney has not argued that they are confusingly similar.” Reply Brief at 7. While we must consider the marks as a whole, “there is nothing improper in stating that, for rational reasons, more or Ser No. 76664911 5 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. Indeed, this type of analysis appears to be unavoidable.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, we find that the designs would not be significant features in distinguishing the marks. Consumers are unlikely to study these marks and rely on the difference in designs to distinguish the sources of the goods. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973). While the design elements are different, they are not particularly distinctive. A crown design simply reinforces the word “regal” and the outline of a fish design for salmon would likely be viewed as a representation of the goods. These elements would hardly lead many consumers to Ser No. 76664911 6 conclude that the sources of the REGAL brand goods are different. See, e.g., Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477, 1478-79 (TTAB 1987) (“[W]hen considered in their entireties, the marks are readily distinguishable, and the goods sold by opposer under its mark differ from the services rendered by applicant… The highly stylized depiction of humanized frankfurters, prancing arm in arm to musical notes, creates a distinctive commercial impression”). See also In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003) (Marks held to be generally similar because they use the identical words “BLUE MOON,” even though “the two moon figures are quite different. The registered mark contains a cartoon- type design of a moon with a face and wearing sunglasses, while the Coors mark features a large circular arc suggestive of a full moon rising over a forest scene.” However, no confusion because of differences in the goods). We part company with both applicant and the examining attorney in their arguments as to the classification of the word “Regal.” The examining attorney argues that the term “Regal” “as used in the registrant’s mark is an arbitrary term.” Brief at 9. Applicant maintains that “the Regal portion of the Registrant’s mark is descriptive of the ‘crab meat’ for which it was registered.” Reply Brief at Ser No. 76664911 7 6-7. But see Reply Brief at 7 (“Moreover, the Registrant’s mark, REGAL & Design, is not arbitrary, but rather is, at best, suggestive”). We disagree with the examining attorney’s argument that the term “regal” is arbitrary. Regal is defined as “of or pertaining to a king” and “splendid.” The Random House Dictionary of the English Language (unabridged) (2d ed. 1987). We take judicial notice of this definition. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Therefore, the term would have a suggestive, laudatory meaning. Applicant, on the other hand, relies on the report of an incident in California in arguing that the term “Regal” is descriptive. Applicant submitted evidence from www.cbs2.com that reported in 2006 that the California Department of Health Services issued a warning concerning eating “raw or undercooked freshwater sawagani crabs.” The warning indicated that the sawagani crabs are “also known as regal crabs.” The County of Los Angeles also issued a similar health advisory about eating “Freshwater Crab (a.k.a. Sawagani Crab, Japanese River Crab, or Regal Ser No. 76664911 8 Crab).” www.lapublichealth.org.3 This single warning about eating certain freshwater crab does not establish that the term “regal” is a recognized merely descriptive term for crab meat. Even more importantly, the cited registration issued on the Principal Register without a disclaimer of the only term in the mark. Under these circumstances, an applicant cannot attack a cited registration on the ground that the term is merely descriptive. Dixie’s argument that DELTA is not actually used in connection with restaurant services amounts to a thinly-veiled collateral attack on the validity of the registration. It is true that a prima facie presumption of validity may be rebutted. See Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However, the present ex parte proceeding is not the proper forum for such a challenge. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). See also Contour Chair- Lounge Co., Inc. v. The Englander Company, Inc., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963). Therefore, we conclude that the term “Regal” is suggestive for the goods. Applicant has also submitted a list of registrations with its appeal brief and argues that the “cited mark 3 Applicant also included two excerpts that refer to a “regal crab” that is an endangered species in Thailand and Burma. It is illegally caught and sold “as a pet since it has beautiful colors.” www.wildlifefund.or.th. See also www.sierraclub.org. These references to an endangered crab in Asia would not show that the term REGAL for crab meat in the United States is merely descriptive. Ser No. 76664911 9 coexists with numerous other registered marks for some form of the term REGAL used in connection with food products.” Brief at 12. The list in the brief includes twelve registration numbers with the words in the mark and the goods. The examining attorney has specifically objected only to the “additional list of registrations that were not properly made of record (Reg. No. 085569, 1270164, 1911583, 2498905, 3000387, 3215927, and 3299539).” Brief at 4. We sustain the examining attorney’s objection to these additional registrations. In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of registrations is insufficient to make them of record”). See also In re First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB 2005) (“Submission of the TARR printout with its appeal brief, however, is an untimely submission of this evidence”). We add that applicant, with its response to the first Office action, included a list of five registrations. In his final Office action (p. 3), the examining attorney did not object to these registrations and, in fact, discussed these registrations. Therefore, we will consider the information in this list to be of record. In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007) (parenthetical omitted) (“Printouts of these registrations were submitted for the first time with applicant's appeal Ser No. 76664911 10 brief. Although we normally would not consider this evidence because it is untimely, we shall consider it in this case because the Trademark Examining Attorney, in her appeal brief, has not objected to this evidence and instead has presented arguments in rebuttal of the evidence”). TBMP § 1208.02 (2d ed. rev. 2004) (“The Board will not consider more than the information provided by applicant. Thus, if applicant has provided only a list of registration numbers and marks, the list will have very limited probative value”). Regarding the information about the five registrations of record, we note that “third party registrations relied on by applicant cannot justify the registration of another confusingly similar mark.” Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). See also In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006) (“[T]he registrations are not evidence of use of the marks shown therein. Thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of similar marks in the marketplace, and as a result are able to distinguish between the JUMP marks based on slight differences between them”). We note that these registrations are for REGAL CHEF and design for meat, REGAL CROWN for ham, REGAL SPRINGS for Ser No. 76664911 11 tilapia, REGAL HARVEST for meat, and REGAL for vegetable oil for use in manufacturing candy. These registrations contain additional wording and/or they are for goods that are not as similar as applicant’s salmon. Therefore, even if they were evidence of third-party use, they would not show that the registered mark is entitled to only a narrow scope of protection. Here, we find that the term “Regal” is the dominant part of both applicant’s and registrant’s marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without doubt the word portions of the two marks are identical, have the same connotation, and give the same commercial impression. The identity of words, connotation, and commercial impression weighs heavily against the applicant”). The marks REGAL and crown design and REGAL and fish design are identical in meaning and pronunciation and very similar in commercial impression. Even their appearances are similar inasmuch as both contain the identical word displayed without a noticeably different script and with the only significant difference being the addition of a fish or crown design that is not very noteworthy. See In re Chica Inc., 84 USPQ2d 1845, 1849 (TTAB 2007): Ser No. 76664911 12 The stars in registrant’s mark are relatively minor and the heart design in applicant's mark simply reinforces the dominant word “Corazon,” which is translated as “Heart.” These “minor design features do not necessarily obviate likelihood of confusion arising from consideration of the marks in their entireties. Moreover, in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Next, we look at whether the goods in the application and registration are related. It “has often been said that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that goods or services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services.” In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The examining attorney has attached examples of the same marks being used by a common entity on both crab and “fish, namely, salmon.” See, e.g., www.crownprince.com Ser No. 76664911 13 (CROWN PRINCE crab meat and pink salmon); www.bumblebee.com (BUMBLE BEE salmon and crab); www.portchatham.com (PORTLOCK Dungeness crab and sockeye salmon); www.kelley-clarke.com (“Kelley-Clarke Seafood prides itself as a preferred supplier of a full line of fresh and frozen seafood” including crab and salmon); and www.gortonsfreshseafood.com (crab and smoked salmon).4 Furthermore, the examining attorney also submitted several use-based registrations to show that a common mark has been registered by the same entity for, inter alia, fish, which would include salmon, and crab meat. See, e.g., Registration No. 2734355 (fish, crabs, salmon cakes, crab cakes, and crab meat); No. 2781517 (jonah crabs, jonah crab meat, and vacuum packed salmon steaks); No. 2784281 (crabs, crab meat, and salmon); No. 2794587 (crabs and fish); No. 2905986 (salmon and crab meat); No. 3096472 (fish and crabs); No. 3057642 (fish and crab); No. 3166193 (salmon and crab); No. 3167788 (salmon cakes and crab); and No. 3241596 (crab and fish). Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have 4 Interestingly, applicant’s original identification of goods included “seafood and shellfish.” As the examining attorney pointed out, crabs are crustaceans that are included within the definition of shellfish. First Office Action at 2. Ser No. 76664911 14 some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). Based on the nature of the goods and the evidence of record, we conclude that these goods are closely related. Consumers are likely to assume that there is some association or relationship between salmon and crab meat when they encounter them marketed under similar marks. We also cannot conclude that the channels of trade or purchasers of these goods would be significantly distinct. The evidence suggests that they would be marketed to overlapping purchasers in the same channels of trade. See www.oceanbeauty.com (salmon and crabs advertised as being available for “daily distribution and air shipments) and www.alaska-seafood.com (various crab and salmon products advertised together). See also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“Considering first the goods of the parties as set forth in the subject application and registration, namely, floating water toys and balloons, both are simple inexpensive toys, likely to be enjoyed by the same age group and normally available through the same channels of trade. Nothing in the Ser No. 76664911 15 specific nature of balloons and floating water toys negates the likelihood that such goods could be thought to come from the same source”); and 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”). Based on the evidence in this case, we find that the marks REGAL and fish design and REGAL and crown design are very similar. Furthermore, the evidence convinces us that fish, namely, salmon and crab meat are closely related. When we consider the record in light of the relevant du Pont factors, we conclude that there would be a likelihood of confusion if applicant’s mark were used on its goods in view of the registered mark for the identified goods. Decision: The examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act is affirmed.