Ocean Divers, Inc.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 74268952 (T.T.A.B. Aug. 17, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 17, 99
Paper No. 24
ejs
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ocean Divers, Inc.
________
Serial No. 74/268,952
_______
Michael Slavin of McHale & Slavin P.A. for Ocean Divers,
Inc.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney)
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Ocean Divers, Inc. has filed an application to
register the mark shown below for the following services,
as amended: "arranging excursions for tourists in the field
of underwater diving" and "restaurant, bar, retail gift and
dive shop services."1

1 Application Serial No. 74/268,952, filed April 24, 1992 and
asserting first use on August 1, 1975 and first use in commerce
on August 1, 1976. Color is claimed as part of the mark, as
follows: The hatching of the mark indicates the blue-gray colors
Ser. No. 74/268,952
2
In the first Office action the Examining Attorney required,
inter alia, that applicant enter a disclaimer of "Ocean and
Divers," indicating that a properly worded disclaimer
should read as follows: "No claim is made to the exclusive
right to use Ocean and Divers apart from the mark as
shown." Applicant responded to this requirement as
follows: "Applicant agrees to a disclaimer of the words
’Ocean’ and ’Divers’ apart from the mark as shown." The
Examining Attorney apparently accepted this disclaimer, and
examination continued with respect to other issues.2 Those
issues were resolved but subsequently, upon further
examination, the Examining Attorney determined that

of a hammerhead shark, the lining of the mark indicates the
orange-red colors of the sun.
2 In particular, the Examining Attorney refused registration in
light of Registration No. 1,729,908. In attempting to overcome
this refusal applicant first sought to submit a concurrent use
agreement, following which it brought a cancellation proceeding
against the owner of the cited registration, and ultimately asked
that a concurrent use agreement be treated as a consent
agreement. The Examining Attorney ultimately withdrew the
Section 2(d) refusal; we further note that Registration No.
1,729,908 was cancelled on May 11, 1999 for failure to file a
Section 8 affidavit.
Ser. No. 74/268,952
3
applicant submit a disclaimer of OCEAN DIVERS, rather than
the individual elements OCEAN and DIVERS. It is from this
requirement that applicant has appealed.
Both applicant and the Examining Attorney have filed
briefs3; an oral hearing was not requested.
As applicant has stated in its brief, it has
disclaimed the word OCEAN and the word DIVERS, and it makes
no claims to those words individually. Brief, p. 8.
However, it is well-established that disclaimers of
individual components of complete descriptive phrases are
improper. See In re Wanstrath, 7 USPQ2d 1412, 1413
(Comm’r. 1988) and cases cited therein. Thus, the only
issue before us is whether or not OCEAN DIVERS, as used in
applicant’s mark, constitutes a unitary phrase which must
be disclaimed in its entirety.4
The Examining Attorney has submitted excerpts from the
NEXIS database showing that the phrase "ocean divers" is
used to refer to people who do underwater diving in the
ocean. See, for example, the following:

3 With its brief applicant has submitted a promotional brochure.
The Examining Attorney has not objected to this document, and we
have therefore treated it as of record.
4 We note that applicant mentioned, in its brief, that it has
used the words OCEAN DIVERS "together to indicate a source of
services to the public since 1976…." Brief, p. 8. Applicant has
not, however, asserted that the phrase OCEAN DIVERS has acquired
distinctiveness, and that this portion of its mark is registrable
Ser. No. 74/268,952
4
Headline: Diving into a Prickly
Situation; In Search of Sea Urchins,
Ocean Divers Contend with Constant
Threat of Sharks
"Los Angeles Times," January 11, 1995
Dr. Tom Millington, an east county
family practitioner specializing in the
care of ocean divers, has seen an
increase this year in an ailment he
calls "diver’s ear."
"Los Angeles Times," April 15, 1993
Great Lakes divers face different
conditions from ocean divers.
"USA Today," August 30, 1990
Further, applicant’s own promotional materials show
that applicant operates a dive resort under its mark. Its
advertisement in the December 1991 issue of "Diver"
magazine touts "PADI 5 star dive facility…," "Open water
training dives …," "Night dives …," and "Dive the finest
wrecks…." Featured on the cover of its brochure is the
statement "Professional Dive Charter and Scuba Instruction
in the Florida Keys," and the brochure advertises that
"Ocean Divers is the Florida Keys' most
complete dive resort. Located on a
scenic deep-water canal just minutes
away from the magnificent coral reefs
and the dense, colorful fish
populations of the Key Largo National
Marine Sanctuary, Ocean Divers fleet of
custom dive boats assures maximum diver
comfort and convenience. All rental
dive gear and tanks are easily
accessible at dockside, and Ocean

pursuant to Section 2(f). Thus, the question of registrability
pursuant to Section 2(f) is not before us.
Ser. No. 74/268,952
5
Divers with its competitive everyday
low prices and two retail centers,
provides a wide selection of resort
wear, T-shirts, scuba and snorkel
equipment, film and video tape, and
underwater photographic accessories.
Ocean Divers can even offer unique
scuba and snorkel programs with trained
dolphins daily….
When the two words OCEAN and DIVERS, are combined in
applicant's mark and used in connection with the identified
services of, inter alia, arranging excursions for tourists
in the field of underwater diving and dive shop services,
it is clear that it is the entire phrase, OCEAN DIVERS,
which is merely descriptive of applicant's services, in
that this phrase directly conveys information about these
services, namely, that the services are for those who wish
to go diving in the ocean, or as the newspaper articles
refer to them, ocean divers.
Applicant argues that individual disclaimers can be
proper and acceptable for multi-word marks, citing First
Savings Bank F.S.B. v. First Bank System Inc., 902 F.Supp.
1366 (D. Kan. 1995). That decision, which was reversed at
33 F.3d 1367, 40 USPQ2d 1865 (10th Cir. 1996), did not
discuss the issue of the propriety of disclaimers of
individual words versus phrases. It simply mentioned, in
the course of a likelihood of confusion analysis, that one
of the parties had obtained a registration for the mark
Ser. No. 74/268,952
6
FIRST BANK SYSTEM and design with a disclaimer of the
individual words BANK and SYSTEM, and that a second
registration issued for FIRST BANK SYSTEM per se 18 years
later.
Although we have no quarrel with the proposition that
in certain marks individual words may be separately
disclaimed, we do not view the decision cited by applicant
as supporting such a result in this case. The Court never
discussed the propriety of the disclaimer or indicated why
in certain marks individual elements can be disclaimed
separately and in other marks elements must be disclaimed
as a phrase.
Decision: The requirement for a disclaimer of the
unitary phrase OCEAN DIVERS is affirmed. However, if
applicant submits the required disclaimer within thirty
days of the mailing of this decision, the refusal will be
set aside. See Trademark Rule 2.142(g).
E. J. Seeherman
C. E. Walters
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board