MarinerSeafood Marketing, Inc.

Trademark Trial and Appeal Board

Jul 20, 2006

No. 76590006 (T.T.A.B. Jul. 20, 2006)

Mailed:
20 July 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mariner Seafood Marketing, Inc.
________

Serial No. 76590006
_______

Cristina M. Offenberg of Silva, Thomas, Martland &
Offenberg, LTD. for Mariner Seafood Marketing, Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Grendel, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 3, 2004, applicant Mariner Seafood Marketing,
Inc. applied to register the mark shown below on the
Principal Register for “frozen seafood; frozen fish; frozen
flounder; cod, catfish, tilapia, grouper and snapper” in
Class 29.1 The application (Serial No. 76590006) is based

1 We note that there is a slight discrepancy between the
identification of goods in the USPTO’s electronic records shown
above and the filing receipt that identifies the goods as “frozen
seafood – frozen fish; frozen flounder; cod, catfish, tilapia,
grouper and snapper.” The difference does not change the outcome
in this case.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76590006
2
on an intention to use the mark in commerce. Applicant has
disclaimed the term “Select.”

The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark, if it were used on the
identified goods, would likely cause confusion with the
marks MARINERS in typed or standard character form2 and
MARINERS and design shown below,3 both for “frozen seafood”
in Class 29. Both marks are owned by the same entity.

The examining attorney argues that the marks have the
same commercial impression “because MARINERS and MARINER
represent the salient feature in each mark, and the former
is the pluralization of the latter rendering them legal
equivalents. The differences consist of disclaimed

2 Registration No. 1,853,725, issued September 13, 1994, renewed.
3 Registration No. 1,781,594, issued July 13, 1993, renewed.
Ser. No. 76590006
3
language and a design feature in one of registrant’s marks;
however, these elements do not detract from the prominent
portion of the marks, MARINER and MARINERS.” Brief at
unnumbered p. 3. Furthermore, the examining attorney found
that the “focus of registrant’s and applicant’s goods are
seafood products.” Brief at 3. Applicant argues that
there are differences in the similarities of the mark, the
relatedness of the goods, the similarities of trade
channels, the conditions under which and the buyers to whom
sales are made, and the number of similar marks in use on
similar goods.
After the examining attorney made the refusal final,
this appeal followed.
The Federal Circuit and the Court of Customs and
Patent Appeals have set out the factors that we should
consider when there is a question of likelihood of
confusion. In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In 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
Ser. No. 76590006
4
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by looking at the relatedness of
applicant’s and registrant’s goods. The registrant’s goods
are identified simply as “frozen seafood.” “Seafood” is
defined as “any fish or shellfish from the sea used for
food.”4 Regardless of how applicant’s identification of
goods is punctuated, it is clear that it seeks registration
of its mark for frozen fish, frozen flounder, cod, tilapia,
grouper and snapper and these items would be included in
registrant’s goods identified as “frozen seafood.”
Therefore, applicant’s and registrant’s goods are identical
or, at a minimum, overlapping. “When marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).

4 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).
Ser. No. 76590006
5
Regarding the goods, the channels of trade, and the
prospective purchasers, applicant makes several attempts to
distinguish the goods.
The applicant uses the mark in wholesale frozen fish
and specifically on the fish known as flounder; cod,
catfish, tilapia, grouper and snapper [sold] to
restaurants, hotels, and the like for use in
preparation of meals to be prepared and sold by the
restaurant or hotel. The registrant, to applicant’s
knowledge[,] is using its mark in connection with
prepared frozen seafood as is sold in the supermarket
for consumption by household shoppers. The marks are
not in use on related goods.
Brief at unnumbered p. 3.

The applicant is in the food service channel and the
registrant is in the supermarket and grocery channels.
Brief at unnumbered p. 4.

The consumers of registrant’s products are
homeowner[s], mom[s], your everyday grocery store
consumer purchasing prepared frozen foods at the
supermarket. The purchasers of applicant’s good[s]
are sophisticated chefs and food industry personnel
who are selecting high quality frozen specialty
seafood that will be used in his/her industry and
prepare[d] by him/her for preparation in menus and
recipes.
Brief at unnumbered pp. 4-5.

There are several problems with applicant’s arguments.
The most obvious problem is that neither applicant’s nor
registrant’s identification of goods is limited in any way.
Therefore, we must consider the goods as they are set out
in the identification of goods, i.e., frozen seafood.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
Ser. No. 76590006
6
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods” or services).
Furthermore, inasmuch as applicant’s specifically
identified frozen fish would overlap with registrant’s
frozen seafood, we must assume that the purchasers and
channels of trade are the same. “Moreover, neither the
application nor the registration limits the channels of
trade through which the goods move. In the absence of such
a limitation we must assume that the goods move through the
normal channels for such goods, and that with respect to
these particular goods, these channels are the same.” In
re Sawyer of Napa Inc., 222 USPQ 923, 924 (TTAB 1983). See
also Morton-Norwich Products, Inc. v. N. Siperstein, Inc.,
222 USPQ 735, 736 (TTAB 1984) (“Since there is no
Ser. No. 76590006
7
limitation in applicant's identification of goods, we must
presume that applicant's paints move in all channels of
trade that would be normal for such goods, and that the
goods would be purchased by all potential customers”); In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981)(“[W]here the goods
in a cited registration are broadly described and there are
no limitations in the identification of goods as to their
nature, type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
encompasses all goods of the nature and type described,
that the identified goods move in all channels of trade
that would be normal for such goods, and that the goods
would be purchased by all potential customers”).
Therefore, the goods, channels of trade, and purchasers
must be deemed identical.5
Next, we compare the marks in their entireties as to
their similarities and dissimilarities in their sound,
appearance, meaning, and commercial impression.
Applicant’s mark is MARINER SELECT and registrant’s marks
are the typed word MARINERS and MARINERS and the design of
an individual who could be described as a mariner or a

5 Even if applicant had limited its channels of trade,
registrant’s identification of goods is unrestricted and it would
include sales at wholesale and retail.
Ser. No. 76590006
8
fisherman. When we compare the marks MARINERS and MARINER
SELECT, the only differences are the pluralization of the
term “Mariner” and the addition of the word “Select” in
applicant’s mark. Regarding the plural form of the word
“Mariner,” we do not find that this slight difference in
the words is a significant difference. Wilson v. Delauney,
245, 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident
that there is no material difference, in a trademark sense,
between the singular and plural forms of the word "Zombie"
and they will therefore be regarded here as the same
mark”). The only other difference between the word marks
is the addition of the disclaimed term “Select” in
applicant’s mark.6 Disclaimed matter is often “less
significant in creating the mark’s commercial impression.”
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001). Furthermore, the descriptive word, “Select” would
not have much trademark significance in this case. The
examining attorney has included a definition of the term
“select” as “of special quality or value; choice.” See
First Office Action, p. 2. In the context of frozen
seafood, this would simply indicate that the seafood is of

6 Because registrant’s mark is shown as a typed drawing, it
may be displayed in a style that is identical to applicant’s.
Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971).
Ser. No. 76590006
9
special quality or value. The Federal Circuit has held
that such descriptive terms “may be given little weight in
reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
When we compare the marks, MARINERS and MARINER
SELECT, we find them to be similar in appearance, sound,
connotation, and meaning. The marks MARINERS and MARINER
SELECT contain the virtually identical term “Mariner” and
they sound and look similar. Also, the addition of the
term “Select” does not significantly change the commercial
impression or meaning of the mark. The term “Select” would
simply indicate that MARINER SELECT frozen seafood was a
special selection of MARINERS frozen seafood. Furthermore,
the design element in Registration No. 1,781,594 would not
make the mark dissimilar to applicant’s. The design
consists of a nautical theme that includes a fisherman or
mariner holding a stylized fish. The design reinforces the
“mariner” word portion of the mark. Therefore, we conclude
that the cited registrations are similar to applicant’s
MARINER SELECT mark.
We have reached this conclusion taking into
consideration the fact that the word “Mariners” is hardly
Ser. No. 76590006
10
an arbitrary term when applied to frozen seafood. We agree
with applicant that “it is suggestive of the goods.” Brief
at unnumbered p. 3. However, we cannot agree with
applicant’s argument that the third-party registrations
show that the term “Mariner” “is commonly used in the
industry.” Registrations are not evidence of use in an
industry. AMF Inc. v. American Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) ("The existence
of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar
with them"). Furthermore, as “to strength of a mark,
however, registration evidence may not be given any
weight.” Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (emphasis in
original). Specifically, applicant points to two third-
party registrations, No. 1,818,065 (MARINER JACK and ship
wheel design for frozen seafood) and No. 1,174,418
(MARINERS COVE for clam chowder). Even if this were
evidence of use, the existence of two registrations hardly
demonstrates that the cited marks are weak.7 Furthermore,

7 Applicant also submitted another registration for frozen and
processed potatoes with its appeal brief. While this
registration is hardly probative, it is also untimely.
Furthermore, we will consider applicant’s quotation from a
website in its brief as additional argument of counsel and not
new evidence.
Ser. No. 76590006
11
third-party registrations cannot be used to justify the
registration of another confusingly similar mark. In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
In this case, when the marks MARINER SELECT and
MARINERS and MARINERS and design would be used on frozen
seafood products, we are convinced that confusion is
likely.
Decision: The examining attorney’s refusal to
register under Section 2(d) of the Trademark Act is
affirmed.