WABI Fishing Co., Ltd.

Trademark Trial and Appeal Board

Aug 31, 1999

No. 75234823 (T.T.A.B. Aug. 31, 1999)

Paper No. 9
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re WABI Fishing Company, Ltd.
________
Serial No. 75/234,823
_______
Susan L. Heller of Howard, Rice, Nemerovski, Canady, Falk &
Rabkin for WABI Fishing Company, Ltd.
Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney)
_______
Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
ABI Fishing Company, Ltd. has appealed from the
refusal of the Trademark Examining Attorney to register
LEO’S OWN as a trademark for "food products, namely,
seafood."1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
Ser. No. 75/234,823
2
the ground that applicant’s mark so resembles the following
marks, all owned by the same registrant, that if used on
applicant’s identified goods it would be likely to cause
confusion or mistake or to deceive.
Packaged chopped ham,
packaged chopped beef
and packaged chopped
turkey, and bottled meat
flavored spreads2
chicken, turkey, ham,
and other meats3
packaged chopped ham,
packaged chopped beef
and packaged chopped
turkey and bottled meat
flavored spreads4

1 Application Serial No. 75/234,823, filed February 3, 1997,
based on an asserted bona fide intention to use the mark in
commerce.
2 Registration No. 744,162, issued January 22, 1963; Section 8
affidavit accepted; renewed. The drawing is lined for the color
red, but no claim to color is made.
3 Registration No. 949,900, issued January 2, 1973; Section 8
affidavit accepted; Section 15 affidavit received; renewed. The
drawing is lined for the colors yellow and red but no claim to
color is made.
4 Registration No. 745,926, issued February 26, 1963; Section 8
affidavit accepted; renewed. The drawing is lined for the colors
red and yellow.
Ser. No. 75/234,823
3
Both applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Food, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
Turning first to a consideration of the goods, the
Examining Attorney has made of record several third-party
registrations which show that a single entity has
registered the identical mark for the goods identified in
applicant’s application and the cited registrations. For
example, United Grocers, Inc. registered TEAM WORK for
meat, seafoods, poultry and sausage;5 Quantum Foods, Inc.
has registered BUTCHER’S FINEST for processed meats,
poultry and seafood sold in portions;6 and Sysco Corporation

5 Registration No. 2,073,622.
6 Registration No. 2,113,362.
Ser. No. 75/234,823
4
has registered HOT THANGS for meats, namely, beef, pork,
poultry, seafood.7 Although third-party registrations are
not evidence that the marks shown therein are in commercial
use, or that the public is familiar with them, third-party
registrations which individually cover a number of
different items and which are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed goods and/or services are of a type
which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition to the third-party registrations the
Examining Attorney has made of record a page from a booklet
from Geo. A. Hormel & Co. called "The Casual Cuisine" which
features two recipes, one for "Fruity Chicken Pita" which
lists, as an ingredient, cans of HORMEL Chunk Chicken, and
another for "Seafood Salad" which lists, as an ingredient,
cans of HORMEL Chunk Skinless & Boneless Pink Salmon.
These recipes would indicate to readers of them that a
single company produces both canned chicken and canned
salmon. The Examining Attorney has also submitted
advertisements featuring both seafood items and meat items.
Although there are obvious differences between the
meat products identified in the registrations and seafood,

7 Registration No. 1,967,267.
Ser. No. 75/234,823
5
it is not necessary that the goods of the parties be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same person under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In view of the Examining Attorney’s evidence that meat
products and seafood can emanate from the same producer, be
sold under the same mark, and be advertised together, we
find that the Office has established the necessary
relationship between the goods, such that the use of
similar marks on them is likely to cause confusion.
Applicant asserts that its product is a high-quality,
specially-prepared, expensive and healthful salmon product,
and argues that consumers are unlikely to assume that a
company that offers "a healthful and specially-prepared
gourmet seafood product would also offer packaged,
preserved meats.
Ser. No. 75/234,823
6
The difficulty with applicant’s position is that its
goods are not identified as a "high-quality, specially-
prepared, expensive and healthful salmon product." Rather,
applicant has identified its goods as "food products,
namely, seafood." It is a well-established principle that
the question of likelihood of confusion must be determined
on the basis of the identification of goods set forth in
the subject application and the cited registration. In re
William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
Because there is no limitation on the seafood identified in
the application that would restrict it to the special,
gourmet salmon referred to in applicant’s brief, we must
deem applicant’s goods to include canned as well as fresh
seafood of all types, including inexpensive, non-gourmet
products. We also note that the cited registrations are
not just for "chopped ham and packaged chopped beef and
packaged chopped turkey." The registration for LEO’S
GOURMET CUT is for chicken, turkey, ham and other meats.
This identification would include fresh meats, and would
encompass expensive as well as inexpensive cuts of meat.
Moreover, applicant’s and registrant’s goods, as
identified, can be sold in the same channels of trade to
the same class of consumers, namely, the general public.
Ser. No. 75/234,823
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Turning then to a consideration of the marks, we find
that LEO’S OWN is confusingly similar to the registered
marks LEO’S and design and LEO’S GOURMET CUT and design.
Although marks must be compared in their entireties, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark. In re In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). In this case, while there
are minor differences between LEO’S OWN and the registered
marks, these differences are not sufficient to distinguish
them. Specifically the design feature in the registered
marks would be perceived as merely a simple background for
the word mark, while the descriptive and disclaimed words
"gourmet cut" have no source-indicating quality. Because
of the prominent display of the word LEO’s, and the fact
that the registrant’s goods would be called for by this
name, it is this word which is the dominant part of these
marks.
As for applicant’s mark, although it includes the word
OWN as well as the word LEO’S, the effect of this
additional word is to indicate that this is a product
produced by LEO. Applicant itself argues that the
inclusion of the word OWN suggests that the LEO’S OWN
product is Leo’s Own personal, specialty product. In our
Ser. No. 75/234,823
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view the commercial impressions of all three marks are the
same, that is, that the products sold under the marks LEO’S
OWN, LEO’S and LEO’S GOURMET CUTS all emanate from "Leo."
We would also point out that since applicant’s mark is
depicted as a typed drawing, a registration for this mark
would encompass use of the mark in the script form shown in
the cited registrations.
As noted previously, the purchasers of applicant’s and
the registrant’s goods must be deemed to be the public at
large, and not the health-conscious gourmets applicant has
described as the consumers of its goods. Such consumers
are not likely to make a detailed analysis of the marks.
Rather, they are likely to assume that LEO’S OWN, used on
seafood, is a variant of the registrant’s LEO’S and LEO’S
GOURMET CUT marks.
Finally, we find that the third cited registration,
for the design of a lion wearing a chef’s hat, with the
word LEO on the hat, creates a sufficiently different
commercial impression from LEO’S OWN, that confusion is not
likely.
Decision: The refusal of registration is affirmed
with respect to Registrations Nos. 744,162 for LEO’S and
design and 949,900 for LEO’S GOURMET CUT and design, and
Ser. No. 75/234,823
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reversed with respect to Registration No. 745,926 for LEO’s
with lion design.
E. J. Seeherman
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser. No. 75/234,823
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ay well be packages of eitherfresh chopped meat, or frozen
will not assume its seafood product, which it describes as
a salmon product that is smoked and packaged through a
special process, is distinct from packaged meat products,
and that fish is entirely different from meat
Applicant argues that "fish is entirely different from
meat and the two cannot be considered confusingly similar
products." Brief, p. 5. Applicant also asserts that its
product is a high-quality, specially-prepared and healthful
salmon product, and that consumers are unlikely to assume
that a company that offers "a healthful and specially-
prepared gourmet seafood product would also offer packaged,
preserved meats.
There are several problems with applicant’s position.
First, although applicant describes its product as a salmon
product that is smoked and packaged through a special
process, in its application its goods are identified as
"food products, namely, seafood." It is a well-established
principle that the question of likelihood of confusion must
be determined on the basis of the identification of goods
set forth in the subject application and the cited
regsitration. In re William Hodges & Co., Inc., 190 USPQ
Ser. No. 75/234,823
11
47 (TTAB 1976). Because there is no limitation on the
seafood identified in the application that would restrict
it to the special, gourmet salmon referred to in its brief,
we must deem applicant’s goods to include canned as well as
fresh seafood of all types, including inexpensive, non-
gourmet products. Further, the cited registrations are not
just for "chopped ham and packaged chopped beef and
packaged chopped turkey. The registration for LEO’S
GOURMET CUT is for chicken, turkey, ham and other meats.
This identification would include fresh meats, and would
encompass expensive as well as inexpensive cuts of meat.
Nor can we assume, as applicant asserts, that the products
listed in the other registrations would include
preservatives. The fact that registrant’s goods are
identified as packaged chopped beef, turkey and ham does
not require that they have preservatives. Fresh or frozen
chopped meat does not necessarily require preservatives.
The evidence submitted by the Examining Attorney
amply demonstrates that seafood and various meats may be
produced by the same company, and sold by that company
under a single mark. Such goods may also be advertised
together.
may well be packages of eitherfresh chopped meat, or frozen
Ser. No. 75/234,823
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will not assume its seafood product, which it describes as
a salmon product that is smoked and packaged through a
special process, is distinct from packaged meat products,
and that fish is entirely different from meat
Ser. No. 75/234,823
13