El Rey USA Meats & Seafood, Inc.

Trademark Trial and Appeal Board

Jan 15, 2016

No. 86084125 (T.T.A.B. Jan. 15, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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El Rey USA Meats & Seafood, Inc.
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Serial No. 86084125
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F. William McLaughlin of Wood, Phillips, Katz, Clark & Mortimer,
for El Rey USA Meats & Seafood, Inc.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Cataldo, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
El Rey USA Meats & Seafood, Inc. (“Applicant”) seeks registration on the
Principal Register of the following mark:1

1 Application Serial No. 86084125 was filed under Section 1(a) of the Trademark Act, 15
U.S.C. § 1(a), on October 7, 2013, based upon Applicant’s claim of first use of the mark
anywhere and in commerce at least as early as October 2009.
Serial No. 86084125
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for “Fish filets, whole tilapia and fish not live,” in International Class 29. Applicant
claims the colors black and blue as a feature of the mark and the application
includes the following description of the mark: “The mark consists of two words SEA
KING with a trident in between them and two wavy lines underneath the words.”
The Applicant has disclaimed the term SEA apart from the mark as shown.2
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
marks in the following two U.S. Registrations owned by different entities:
• Reg. No. 1016139 for the mark SEA KING and design in the following form,

for “Cocktail sauce and spiced seasoning for seafoods; and prepared, cooked
and frozen seafoods some of which are sold for consumption on or off the
premises-namely, crabcakes, breaded oysters, deviled crabs, soft shell and
hard shell crabs, breaded and cooked shrimp, breaded filet of fish, padded
oysters and shrimp (the word ‘padded’ herein means prepared in cracker
meal and ready to fry), slaws and potato salads,” in International Class 29;3
and
• Reg. No. 4093682 for the mark KING OF THE SEA, in standard characters,
for “Seafood,” in International Class 29.4

After the refusal was made final, Applicant appealed. The case is fully briefed.

2 The Applicant submitted a disclaimer of SEA in its brief and the Examining Attorney has
accepted it. In the event registrability is found, the disclaimer will be entered.
3 Issued July 15, 1975; renewed.
4 Issued January 31, 2012.
Serial No. 86084125
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Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the goods and the similarities between the marks. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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.”). The du
Pont factors about which there is evidence or argument are the similarity of the
marks, the similarity of the goods, and the number and nature of similar marks in
use in connection with similar goods.
A. The nature and similarity or dissimilarity of the goods, the established, likely-
to-continue trade channels and classes of purchasers.

We first consider the similarity of the goods. Applicant’s goods are identified as
“fish filets, whole tilapia and fish not live.” Registrants’ goods are, inter alia,
“prepared, cooked and frozen seafoods some of which are sold for consumption on or
off the premises-namely . . . breaded filet of fish” and “seafood.” The goods are in-
part identical inasmuch as Applicant’s “fish filets” encompasses one Registrant’s
“breaded filet of fish” and the other Registrant’s “seafood” encompasses Applicant’s
“fish filets, whole tilapia and fish not live.”
Serial No. 86084125
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Where, as here, Applicant’s and Registrants’ goods are in-part legally identical,
we must presume that the channels of trade and classes of purchasers for those
goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption
in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same).
In view of the foregoing, the du Pont factors relating to the similarity of the
goods, the channels of trade and classes of purchasers all favor a finding of
likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the similarity of the marks. In comparing the marks we must
consider their 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, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be
on the recollection of the average purchaser who normally retains a general, rather
than specific, impression of trademarks. Although we consider the mark as a whole,
“in articulating reasons for reaching a conclusion on the issue 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. . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 86084125
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In addition, “when the goods at issue are identical, ‘the degree of similarity
necessary to support a conclusion of likely confusion declines.’” Viterra, 101
USPQ2d at 1912 (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)).
We begin with a comparison of the mark SEA KING with a seahorse design in
Reg. No. 1016139 and Applicant’s mark, SEA KING with a trident and wave design.
We have no doubt that consumers will recognize that the s-shaped seahorse in
Registrant’s mark serves as a highly-stylized letter “S.” Thus, these marks are
identical in sound because their word portions consist entirely of the words SEA
KING. In appearance, the marks have some differences in that they have different
design elements—Applicant’s mark has a trident and wave design whereas
Registrant’s mark has a seahorse in place of the letter “S.” Nevertheless, these
design elements all suggest an association with the sea which is reinforced by the
descriptive word SEA in both marks, which are each used on food which comes from
the sea. Accordingly, we find the design elements to be subordinate to the dominant
words SEA KING. See Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word
and design mark likely will be the dominant portion”). Furthermore, because the
literal elements of the marks are essentially identical, and their designs do not alter
the meaning of the words, the marks’ connotation and commercial impression are
the same.
We next compare the mark KING OF THE SEA in Reg. No. 4093682, with
Applicant’s mark. We begin by noting that KING OF THE SEA is depicted in
Serial No. 86084125
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standard characters and therefore may appear in any typeface including one similar
to Applicant’s. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011) (“[T]he registrant is entitled to depictions of
the standard character mark regardless of font style, size, or color.”). We find that
the connotation and commercial impression of these marks are essentially the same:
the suggestion of a “king of the sea” or “sea king.”
The only difference between the word portions of the marks is the order of the
words and the absence of the insignificant words “of the.” The Board has often found
confusion likely between two marks consisting of reverse combinations of the same
elements if they convey the same meaning or create substantially similar
commercial impressions. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139,
1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design likely
to be confused with AMERICAN WINE SOCIETY 1967 and design); In re
Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST
BUSTER likely to be confused with BUST RUST); In re Gen. Tire & Rubber Co., 213
USPQ 870 (TTAB 1982) (holding SPRINT STEEL RADIAL likely to be confused
with RADIAL SPRINT). Further, because the marks include the same words, in
reverse order, the marks sound somewhat similar.
In sum, when we consider the marks in their entireties, we find them to be
similar in terms of appearance, sound, connotation and commercial impression.
This du Pont factor weighs in favor of a finding of a likelihood of confusion with
respect to both cited registrations.
Serial No. 86084125
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C. The number and nature of similar marks in use on similar goods

Applicant argues that the marks are weak and entitled to a narrow scope of
protection: “The fact that the Office has accepted for registration three marks
including the words SEA and KING in class 29 indicates that the Office does not
consider these words alone to distinguish among the various marks.”5 This is the
sixth du Pont factor relating to the number and nature of similar marks in use on
similar goods. Du Pont, 177 USPQ at 567. In support of its argument, Applicant
submitted one third-party registration, now cancelled, for the mark SEA DRAGON
KING, also for seafood in International Class 29.6
A cancelled registration such as this is of no probative value. See In re Brown-
Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006). Furthermore, we find that
the co-existence on the register of two or even three marks containing the terms
SEA and KING, in addition to other matter, is insufficient to show that the
combination is weak for seafood, or that the combination has a “normally
understood and well-recognized descriptive or suggestive meaning” in the field of
seafood. Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674 (Fed. Cir. 2015) (“[E]xtensive evidence of third-party use and
registrations” may indicate elements of a mark have a suggestive or descriptive
connotation.).
Finally, even assuming, arguendo, that the combination of SEA and KING is
weak, even weak marks are entitled to protection against registration of similar

5 Applicant’s Br. at 6, 4 TTABVUE 7. Emphasis in original.
6 Registration No. 3377501; issued February 5, 2008, cancelled September 12, 2014.
Serial No. 86084125
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marks used for related goods. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB
1982); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974) (“Confusion is confusion. The likelihood thereof is to be avoided,
as much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’
and a ‘strong’ mark.’”). This du Pont factor is neutral.
D. Conclusion

When we consider the marks in their entireties, we find it likely that consumers
familiar with either of Registrants’ seafood products would presume that
Applicant’s seafood products are related. Because the marks are similar, and the
goods are in-part identical and travel in the same trade channels, there is a
likelihood of confusion between Applicant’s mark, SEA KING and design, and the
marks, SEA KING and design and KING OF THE SEA, in the cited registrations.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Lanham Act is affirmed.