Tropical Seas, Inc.

Trademark Trial and Appeal Board

Aug 12, 2011

No. 77830997 (T.T.A.B. Aug. 12, 2011)

Mailed:
August 12, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tropical Seas, Inc.
________

Serial No. 77830997
_______

Bridget Heffernan Labutta of Allen, Dyer, Doppelt, Milbrath
& Gilchrist, P.A. for Tropical Seas, Inc.

Aretha Somerville, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bergsman, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Tropical Seas, Inc. (“applicant”) filed a use-based
application to register the mark REEF SAFE, in standard
character form, for “sun care lotions,” in Class 3.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark is likely to cause confusion with the marks set forth
below, owned by the same entity:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77830997
2
1. REEF, in typed drawing form, for “sun block
preparations and sun screen preparations,” in Class 3;1
2. REEF OIL and design, shown below, for “suntan
lotion,” in Class 3.2 Registrant disclaimed the exclusive
right to use the word “oil.”

Our determination of likelihood of confusion 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, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. 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

1 Registration No. 2579774, issued June 11, 2002; Sections 8 and
15 declarations accepted and acknowledged.
2 Registration No. 1166023, issued August 25, 1981; renewed.
Serial No. 77830997
3
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity and nature of the
goods described in the application and registration,
the likely-to-continue channels of trade and classes
of consumers.

Applicant is seeking to register its mark for “sun
care lotions” and the cited registrations are for “sun
block preparations and sun screen preparations” (REEF) and
“suntan lotions” (REEF OIL).
“Sunblock” is defined as follows:
1. a substance that provides a high
degree of protection against sunburn,
often preventing most tanning as well
as burning, as by obstructing the
penetration of ultraviolet rays. 2. a
lotion, cream, etc. containing such a
substance.3

“Sunscreen” is defined as follows:
1. a substance formulated to prevent
sunburn, skin cancers, and other
conditions caused by excessive exposure
to the sun, usually by absorbing and
reflecting ultraviolet radiation. … 2.
a lotion, cream, etc. containing such a
substance.4

3 The Random House Dictionary of the English Language
(Unabridged), p. 1905 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. 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).
4 Id. at 1906.
Serial No. 77830997
4
The term “sun care lotions” in applicant’s description
of goods is broad enough to encompass sun block
preparations (which can be a lotion), sun screen
preparations (which can be a lotion), and suntan lotions
listed in the cited registrations. This is corroborated by
the two use-based, third-party registrations submitted by
the examining attorney that include the goods at issue.
Third-party registrations which individually cover a number
of different services that are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed services are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Moreover, applicant’s label identifies its REEF SAFE
product as a "Sunblock Lotion." Under these circumstances,
we find that the goods at issue are legally identical.
Because the goods described in the application and the
cited registrations are legally identical, we must presume
that the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
Serial No. 77830997
5
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression and the strength of the word
“Reef” in connection with sun care lotions.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks,
we are mindful that where, as here, the goods are legally
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
Serial No. 77830997
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23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
Moreover, in comparing the marks, 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 so that confusion as to the source of the goods
and services offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992). The proper focus is on
the recollection of the average customer, who retains a
general rather than a specific impression of the marks.
Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case,
the average customer is an ordinary consumer who purchases
sun care lotions.
The marks are similar in appearance, sound, meaning
and commercial impression because they share the word
Serial No. 77830997
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“Reef.” In fact, applicant’s mark incorporates
registrant’s entire REEF mark, and under similar
circumstances, likelihood of confusion has been found where
the entirety of one mark is incorporated within another.
Coca-Cola Bottling Company of Memphis v. Joseph E. Seagram
& Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(BENGAL LANCER in association with a representation of a
soldier in garb of a Bengal lancer for nonalcoholic club
soda, quinine water, and ginger ale is likely to cause
confusion with BENGAL for gin); In re Denisi, 225 USPQ 624,
626 (TTAB 1985) (PERRY’S PIZZA for restaurant services is
likely to cause confusion with PERRY’S for restaurant
services); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM
for hairdressing and conditioner is likely to cause
confusion with EBONY for cosmetics); In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)
(LIL’ LADY BUGGY for toy doll carriages is likely to cause
confusion with LITTLE LADY for doll clothing).
The inclusion of the word “Oil” in the registered mark
REEF OIL and design does not distinguish registrant’s REEF
OIL mark from applicant’s mark REEF SAFE because the word
“Oil” is descriptive of the composition of the suntan
lotion and has been disclaimed. In re National Data Corp.,
Serial No. 77830997
8
753 F.2d 1056, 22$ USPQ 749, 751 (Fed. Cir. 1985) (“That a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark”).
Thus, the word “Reef” is the dominant element in the
registrant’s mark REEF OIL and design and, therefore, it is
similar to applicant’s mark REEF SAFE.
The record before us provides no evidence that the
word “Reef” has any meaning in connection with sun care
lotions. However, the word “Reef” engenders a commercial
impression relating to the ocean because a “reef” is a
“chain of rocks or coral in the water.”5 Thus, while the
word “Reef” has no meaning in connection with sun care
lotions, the marks engender similar commercial impressions
by alluding to an ocean-related scene.
Applicant argues to the contrary and submitted copies
of five third-party registrations for marks comprising, in
part, the word “Reef” in connection with snorkeling and
scuba diving equipment to show that “consumers have become
well accustomed to differentiating between marks containing
the term REEF for water- and ocean-related products, and

5 The Random House Dictionary of the English Language
(Unabridged), p. 1619.
Serial No. 77830997
9
thus, are unlikely to be confused by marks containing” the
word “Reef.”6

However, applicant overstates the probative value of
the third-party registrations. Third-party registrations
do not prove that “Reef” is a weak term. Absent evidence
of actual use, third-party registrations have little
probative value because they are not evidence that the
marks are in use on a commercial scale or that the public
has become familiar with them. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
(the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office). See
also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB
1983).
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party
(sic) registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
dilution of the mark in question or
conditioning of the purchasers as to
their weakness in distinguishing
source.

In re Hub Distributing, Inc., 218 USPQ at 286.

6 Applicant’s Brief, p.4.
Serial No. 77830997
10
While third-party registrations may be used in the
manner of a dictionary to show that a mark or a portion of
a mark is descriptive or suggestive of goods and services,
five third-party registrations comprising in part the word
“Reef” for snorkeling and scuba diving equipment do not
prove that the word “Reef” in connection with sun care
preparations is so weak and diluted that applicant’s
application for the mark REEF SAFE is sufficient to
distinguish the marks if they are used in connection with
legally identical products. Furthermore, the third-party
registrations submitted by applicant are of limited
probative value because they do not cover sun care
preparations. In re Thor Tech Inc., 90 USPQ2d 1634, 1639
(TTAB 2009) (the third-party registrations are of limited
probative value because the goods identified in the
registrations appear to be in fields which are far removed
from the goods at issue). See also Key Chemicals, Inc. v.
Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101
(CCPA 1972) (“Nor is our conclusion altered by the presence
in the record of about 40 third-party registrations which
embody the word “KEY”. The great majority of those
registered marks are for goods unrelated to those in issue,
and there is no evidence that they are in continued use.
We, therefore, can give them but little weight in the
Serial No. 77830997
11
circumstances present here”). Finally, the word “reef,”
meaning “a chain of rocks or coral in the water,” has no
inherent meaning in connection with sun care lotions.
In view of the foregoing, we find that applicant’s
mark REEF SAFE is similar to registrant’s marks REEF and
REEF OIL and design in terms of appearance, sound, meaning
and commercial impression.
C. No reported instances of actual confusion.
Applicant argues that “Applicant is hardly a
‘newcomer,’ since it has been using the mark REEF SAFE
since at least as early as 1996. In that time, there have
been no known instances of actual confusion with the cited
marks.”7 The fact that an applicant in an ex parte case is
unaware of any instances of actual confusion is generally
entitled to little probative weight in the likelihood of
confusion analysis because the Board in such cases has no
way to know whether the registrant likewise is unaware of
any instances of actual confusion, nor is it usually
possible to determine that there has been any significant
opportunity for actual confusion to have occurred. See, In
re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re
Jeep Corporation, 222 USPQ 333, 337 (TTAB 1984); In re

7 Applicant’s Brief, p. 5.
Serial No. 77830997
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Barbizon International, Inc., 217 USPQ 735, 737 (TTAB
1983).
Serial No. 77830997
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D. Balancing the factors.
In view of the facts that the marks are similar, the
goods are legally identical, and the presumption that the
goods move in the same channels of trade and are available
to the same classes of consumers, we find that applicant’s
mark REEF SAFE for “sun care lotions” is likely to cause
confusion with the mark REEF for “sun block preparations
and sun screen preparations” and REEF OIL and design for
“suntan lotion.”
Decision: The refusal to register is affirmed.