World WideFood Products, Inc.

Trademark Trial and Appeal Board

May 23, 2006

No. 76457962 (T.T.A.B. May. 23, 2006)

Mailed: May 23, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World Wide Food Products, Inc.
________

Serial No. 76457962
_______

Myron Amer, Esq. for World Wide Food Products, Inc.

Tanya Amos, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On October 7, 2002, World Wide Food Products, Inc.
filed an application to register the design and words
reproduced below as a trademark for “salad shrimp.”1

1 Application Serial No. 76457962, claiming a date of first use
and date of first use in commerce of June 7, 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76457962
2

The design is essentially the front of the package for
the goods. The drawing does not reproduce well. The words
“A Tradition of Quality Since 1907” and “Salad Shrimp Raw”
appear beneath the word GEISHA. About half-way down on the
left appears “Low in Fat”; “Peeled & Cleaned”; and
“Individually Frozen.” At the bottom on the right appears
“Enlarged to Show Quality Serving Suggestion”; “Keep
Frozen”; “Net. Wt. 1 lb (454g)”.
The examining attorney,2 inter alia, refused
registration of applicant’s mark under Section 2(d) of the
Trademark Act in view of several previously registered

2 The present examining attorney was not the original examining
attorney assigned to this application.
Ser No. 76457962
3
GEISHA and “Geisha design” marks, and advised applicant
that the drawing of the mark was unacceptable because the
details in the drawing page are not clear. In addition,
the examining attorney advised applicant that informational
matter in the nature of net weight and volume statements,
lists of contents, addresses and similar matter must be
deleted from the drawing. Further, the examining attorney
advised applicant that it must disclaim “A Tradition of
Quality Since 1907”; “Salad Shrimp Raw”; and the shrimp
design apart from the mark as shown.
Applicant argued against the Section 2(d) refusals,
and submitted a substitute drawing with the mark reproduced
below.

Ser No. 76457962
4
In addition, applicant submitted a disclaimer of “A
Tradition of Quality Since 1907”;3 “Salad Shrimp Raw”; and
the shrimp design apart from the mark as shown.
After many office actions and responses,4 the examining
attorney finally refused registration of applicant’s mark
under Section 2(d) of the Trademark Act in view of the
previously registered marks shown below, all owned by
Kawasho Foods Corporation:
(1) GEISHA (in standard character form) for
“canned fruits and vegetables and canned and
frozen fish and shell fish” (Registration
No. 991,554 issued August 20, 1974; first
renewal);

(2)

for “canned crabs, canned tuna, canned clams and
canned mandarin oranges” (Registration No.
306,862 issued October 3, 1933; third renewal)

3 Applicant submitted a disclaimer of this phrase despite the
fact that its substitute drawing no longer contains the phrase.
4 Suffice it to say that this case has a tortured
examination/prosecution history.
Ser No. 76457962
5

(3)

for “canned fish and shellfish-namely, canned
crabmeat, shrimp, oysters, clams, tuna, sardines,
kippers, mackerel, salmon; canned fruits and
vegetables-namely, canned mandarin oranges,
pineapple, mushrooms, water chestnuts, bamboo
shoots, asparagus, and frozen fish (Registration
No. 1,162,935 issued July 28, 1981 with the
statement that “The drawing is lined for the
colors blue, green, red, orange and yellow”;
first renewal); and

(4)

for “canned fish and shellfish-namely, canned
crabmeat, shrimp, oysters, clams, tuna, sardines,
kippers, mackerel, salmon; canned fruits and
vegetables-namely, canned mandarin oranges,
pineapple, mushrooms, water chestnuts, bamboo
shoots, asparagus, and frozen fish (Registration
No. 1,162,936 issued July 28, 1981; first
renewal).

With respect to applicant’s substitute drawing, the
examining attorney found that it was unacceptable. She
Ser No. 76457962
6
made final a requirement for a new substitute drawing that
includes the phrase “A Tradition of Quality Since 1907” and
deletes the picture of the shrimp on a platter. The
examining attorney maintains that the current substitute
drawing is a material alteration of the mark because it
deletes the phrase “A Tradition of Quality Since 1907.”
Also, the examining attorney maintains that the picture of
the shrimp on a platter in the substitute drawing is
informational in nature, that is, it simply provides a
suggestion for serving. As to the original drawing, the
examining attorney continues to maintain that it is
unacceptable because it is an illegible photocopy and
contains extraneous information.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. An oral hearing was
not requested.
Substitute Drawing Requirement
We turn first to the requirement for a new substitute
drawing that (a) includes the phrase “A Tradition of
Quality Since 1907” and (b) deletes the design of the
shrimp on a platter. The examining attorney maintains that
applicant’s failure to include the phrase “A Tradition of
Quality Since 1907” on the substitute drawing is a material
alteration. According to the examining attorney:
Ser No. 76457962
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In the instant case, the applicant’s amended
drawing page is not acceptable because [on the
specimen] the phrase “A Tradition of Quality
Since 1907” appears directly below the term
GEISHA, and the phrase would be read with the
term GEISHA. Moreover, the applicant’s specimen
shows the term GEISHA and the phrase “A Tradition
of Quality Since 1907” in the same color
lettering and thus the two phrases appear
unitary. (Examining Attorney’s Brief at 14).

Applicant has made no argument, in either its brief or
reply brief, with respect to the examining attorney’s
requirement in this regard.
Trademark Rule 2.72 prohibits any amendment of the
mark that materially alters the mark on the drawing filed
with the original application. The test for determining
whether an amendment is a material alteration is as
follows:
The modified mark must contain what is the
essence of the original mark, and the new form
must create the impression of being essentially
the same mark. The general test of whether an
alteration is material is whether the mark would
have to be republished after the alteration in
order to fairly present the mark for purposes of
opposition. If one mark is sufficiently
different from another mark as to require
republication, it would be tantamount to a new
mark appropriate for a new application. TMEP
Section 807.14.

In this case, we find that the deletion of the phrase
“A Tradition of Quality Since 1907” is not a material
alteration of the mark. This phrase is in the nature of
“puffery” and has no source-indicating function. Also, we
Ser No. 76457962
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note that the phrase differs from the word GEISHA in terms
of size and type of lettering such that it is not unitary
with the word GEISHA.
Insofar as the design of the shrimp on a platter is
concerned, the examining attorney maintains that:
The background photograph of the suggested manner
of displaying the shrimp on a platter must be
deleted because it will not be perceived as a
trademark. The shrimp on a platter design simply
provides information about how to serve the
goods. The most damning piece of evidence
supporting the finding that the design of the
plate of shrimp is informational is the
applicant’s own specimen of record. The specimen
of record states that the photograph of the
shrimp on a platter has been “enlarged to show
quality serving suggestion.” (Examining
Attorney’s Brief at 11).

Applicant, on the other hand, argues that “the
graphics of the plastic bag [in which applicant’s goods are
sold] are the source-identifying content” of the mark, and
that the picture of the shrimp on a platter is an essential
part of the mark. (Brief at 2).
TMEP Section 807.14(a) provides, in pertinent part,
that “[i]f a specimen shows that matter included on a
drawing is not part of the mark, the examining attorney may
require that such matter be deleted from the mark on the
drawing, if the deletion would not materially alter the
mark.” (citation omitted). In this case, the deletion of
the design of the shrimp on a platter would be a material
Ser No. 76457962
9
alteration of the mark. Notwithstanding that the design of
the shrimp on a platter is a mere representation of the
goods (and has been disclaimed), and it is not integrated
with the word GEISHA or the design of a geisha, it
nonetheless forms part of the mark as shown on the drawing
as originally filed.
In view of the foregoing, we find that the examining
attorney’s requirement for a new substitute drawing is not
proper. Thus, applicant’s current substitute drawing is
acceptable.
Section 2(d) Refusals
We turn next to the refusals to register under Section
2(d) of the Trademark Act. In any likelihood of confusion
analysis, we look to the factors set forth in In re E. I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), giving particular attention to the factors most
relevant to the case at hand, including the similarity of
the marks and the relatedness of the goods. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
Insofar as the goods are concerned, the examining
attorney argues that they are identical in part and
otherwise closely related. Applicant, however, argues that
its salad shrimp is “a frozen seafood product” which is
Ser No. 76457962
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different from the goods in the cited registration which
are all “canned.” (Applicant’s Brief at 3). Apart from
the fact that not all the goods in the cited registrations
are “canned,” it is well settled that the question of
likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods recited in the registration, rather
than what the evidence shows the goods actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Where the goods in the application at issue and in the
cited registrations are broadly described as to their
nature and type, such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
scope the identification of goods encompasses not only all
the goods of the nature and type described therein, but
that the identified goods are offered in all channels of
trade which would be normal therefor, and that they would
be purchased by all potential buyers thereof. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Further, it is a
general rule that goods need not be identical or even
competitive in order to support a finding of likelihood of
Ser No. 76457962
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confusion. Rather, it is enough that goods are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used or intended to be used therewith,
to a mistaken belief that they originate from or are in
some way associated with the same producer or that there is
an association between the producers of each parties’
goods. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
Applicant’s goods are identified as salad shrimp,
without any limitation as to being sold in frozen form.
The goods listed in cited Registration Nos. 1,162,935 and
1,162,936 include canned shrimp; and the goods listed in
cited Registration No. 991,554 include canned and frozen
shell fish. Because the identifications “canned shrimp”
and “canned and frozen shell fish” are broad enough to
encompass salad shrimp, applicant’s salad shrimp and the
registrant’s canned shrimp and canned and frozen shell fish
are legally identical goods.5

5 In view thereof, we need not discuss whether the other goods
set forth in these cited registrations are related to those
listed in the application. See, e.g., Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137
USPQ 881, 883 (CCPA 1963).
Ser No. 76457962
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The goods listed in cited Registration No. 306,862
include canned crabs, canned tuna and canned clams. To
establish a relationship between applicant’s salad shrimp
and registrant’s canned crabs, canned tuna and canned
clams, the examining attorney has submitted copies of
nineteen use-based third-party registrations for marks that
cover, inter alia, shrimp, on the one hand, and crabs,
tuna, and/or clams, on the other hand.6 Although third-
party registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n. 6 (TTAB 1988). See also In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Under the
facts of this case, we find that applicant’s salad shrimp,
on the one hand, and registrant’s canned crabs, canned tuna

6 As representative examples, we note: Reg. No. 2,618,409 for
the mark VAN DE KAMP’S for “frozen entrees consisting primarily
of fish, shrimp, or crab”; Reg. No. 2,482,531 for the mark CAJUN
ROYALE for “seafood, namely fish, shrimp, and shellfish”; Reg.
No. 2,658,226 for the mark CELEBESEA for “seafood and fresh fish
for food purposes, namely, fish, clams, oysters, snails, prawns,
lobster and shrimp”; and Reg. No. 2,588,134 for the mark
GLOUCESTER PIER for “fish, shellfish, seafood, seafood salads,
crab cakes, seafood dips, seafood spreads, cream herring, shrimp
cocktails and fried fish fillets.”

Ser No. 76457962
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and canned clams, on the other hand, are closely related
goods. Obviously, applicant’s salad shrimp and
registrant’s canned crabs, canned tuna and canned clams are
all seafood items. Moreover, all of these seafood items as
well as registrant’s canned shrimp and canned and frozen
shell fish are sold in the same channels of trade (such as
grocery stores, and the grocery sections of mass
merchandisers) to the same class of purchasers (the general
public). Applicant’s and registrant’s goods are, in part,
legally identical, and otherwise so closely related that,
if sold under the same or similar marks, confusion as the
source or sponsorship thereof would be likely to occur.
Turning, therefore, to a consideration of the
respective marks, the examining attorney argues that the
dominant portion of applicant’s mark is the word GEISHA,
and that this term is very similar to each of the marks in
the cited registrations. Applicant, however, argues that
the word GEISHA is not the dominant or source-identifying
portion of its mark. In particular, applicant argues that
the word GEISHA “is descriptive of the ‘oriental figure
with fan’” and has offered to disclaim the word. Applicant
maintains that the “special form front panel of the plastic
bag” is the dominant portion of its mark and that
applicant’s mark and the marks in the cited registrations
Ser No. 76457962
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are sufficiently distinguishable to avoid a likelihood of
confusion. (Applicant’s Brief at 2).
With respect to the marks, we must determine whether
applicant’s mark and registrant’s marks, when compared in
their entireties, are similar or dissimilar, viewing them
in terms of sound, appearance, connotation and commercial
impression. Although the marks must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
With the above principles in mind, we agree with the
examining attorney that, when considered in their
Ser No. 76457962
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entireties, applicant’s mark and each of the registered
marks are substantially similar in sound, appearance,
connotation and commercial impression. First, although
applicant has characterized the word GEISHA as being
descriptive and has offered to disclaim it, the word GEISHA
is not descriptive of the goods in applicant’s application.
While, as discussed infra, the word GEISHA is the legal
equivalent of the design of a geisha, GEISHA is not
descriptive of salad shrimp. Rather, the word GEISHA is
arbitrary as applied to such goods. In view thereof, and
due to its prominent display, it is the word GEISHA that is
the dominant portion of applicant’s mark. It is this
portion of applicant’s mark which is most likely to be
impressed upon a customer’s memory, and the portion of the
mark that a customer will use to refer to and call for the
goods. The geisha design in applicant’s mark reinforces
the impression of the word GEISHA. As for the disclaimed
phrase “Salad Shrimp Raw,” it is descriptive, and thus
entitled to less weight in our likelihood of confusion
analysis. The picture of the shrimp on a platter and the
other background designs add little, if any, impact to the
overall commercial impression created by the mark.
In short, the phrase “Salad Shrimp Raw” and the
background designs do not change the overall commercial
Ser No. 76457962
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impression projected by applicant’s mark, which is
dominated by the presence therein of the arbitrary term
GEISHA and reinforced by the geisha design.
The dominant portion of applicant’s mark is virtually
identical to registrant’s GEISHA word marks in standard
character and stylized forms, and the addition of the
geisha design in applicant’s mark does not distinguish its
mark from these cited marks, but actually reinforces the
similarity of the marks. We note that insofar as
registrant’s mark GEISHA in standard character form is
concerned, because it is not limited to any particular
depiction, it may be displayed in the same stylized form as
the word GEISHA in applicant’s mark. Further, the word
GEISHA in applicant’s mark is depicted in the same stylized
lettering as registrant’s mark GEISHA in Registration No.
306,862 and in similar stylized lettering to registrant’s
mark GEISHA in Registration No. 1,162,936. Thus, when we
consider applicant’s mark and registrant’s GEISHA word
marks in their entireties, we find that they are very
similar in sound, appearance, connotation and commercial
impression.
Insofar as registrant’s geisha design mark is
concerned, as the examining attorney correctly notes, the
doctrine of legal equivalents holds that a pictorial
Ser No. 76457962
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representation and its literal equivalent impress the same
mental image on purchasers. See Izod, Ltd. v. Zip Hosiery
Co., Inc., 405 F.2d 575, 160 USPQ 202, 204 (CCPA 1969)
[mark TIGER HEAD for men’s work socks is likely to be
confused with registered tiger-head design for men’s and
ladies’ shirts] and Clover Farm Stores Corp. v. James G.
Gill Co., Inc., 142 USPQ 233, 234 (TTAB 1964) [mark “RED
BAG” for coffee is likely to cause confusion with a red bag
used as a container for coffee]. Thus, applicant’s mark,
which includes the dominant word GEISHA as well as a geisha
design, conveys the same connotation and commercial
impression as registrant’s geisha design mark, and the
marks are very similar in appearance notwithstanding that
the geisha designs themselves are slightly different.
In this case, purchasers familiar with any of
registrant’s GEISHA word or “geisha design” marks for, in
particular, canned shrimp, canned and frozen shell fish,
canned crabs, canned tuna, or canned clams, upon
encountering applicant’s GEISHA and design mark for salad
shrimp, would be likely to believe that the goods
originated with or were somehow sponsored by the same
source.
In support of its position that there is no likelihood
of confusion, applicant has submitted a document entitled
Ser No. 76457962
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“Trademarks Sublicense Agreement.” This agreement was
executed February 25, 2005 between applicant (as
“Sublicensee”) and JFE Shoji Trade America Inc. (as
“Sublicensor”). In the agreement, JFE Shoji Trade America
Inc. is identified as the “Master Licensee” of the mark
GEISHA in standard character form (Registration No.
991,554) and the mark shown below,

(Registration No. 1,162,935)(two of the registrations cited
herein). Applicant claims that this agreement reflects a
“consent agreement” between it and the registrant.
Applicant points to paragraph 12 of the agreement
(reproduced below) as evidence of registrant’s consent:
Advertising, Promotion, Approvals: Sublicensee
agrees that it will cause to appear on or within
each Product sold by it under this sublicense and
on or within all advertising, promotional or
display material relating to the Trademarks,
Sublicensor’s logos (including the name “GEISHA”
and the drawing of the GEISHA character)(which
are the subject of United States Registration
Nos. [991,554 and 1,162,935] along with the
registered trademark symbol and, on the
Ser No. 76457962
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packaging, a legend stating that “GEISHA” and
Sublicensor’s logo comprise a registered
trademark of Master Licensor. In the event that
any Product is marketed in a carton, container
and/or packaging or wrapping material, each and
every tag, label, imprint or other device shall
contain Sublicensor’s logo, and copyright and
advertising, promotional or display material
bearing the Trademarks shall be submitted by
Sublicensee to Sublicensor for express written
approval prior to use by Sublicensee.
Sublicensee shall cooperate fully and in good
faith with Sublicensor for the purpose of
securing and preserving Sublicensor’s rights in
and to the Trademarks. In the event there has
been no previous registration of the Trademarks
and/or Products and/or any material relating
thereto, Sublicensor shall be entitled to
register such as a copyright, trademark and/or
service mark in the appropriate class in such
name as Sublicensor or Master Licensor may
designate, at Sublicensor’s sole cost and
expense. It is agreed that nothing contained in
this Agreement shall be construed as an
assignment or grant to Sublicensee of any right,
title or interest in or to the Trademarks, it
being understood that all rights relating thereto
are reserved by Sublicensor and Master Licensor
except for the sublicense hereunder to
Sublicensee of parties hereto. No waiver by
either party of a breach or a default hereunder
shall be deemed a waiver by such party of a
subsequent breach or default of like or similar
nature.

Obviously, in appropriate circumstances, consent
agreements are entitled to substantial weight in
determining likelihood of confusion. See Bongrain
International (America) Corp. v. Delice De France, Inc.,
811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987). Here,
however, we do not have a consent agreement between
Ser No. 76457962
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applicant and registrant. What we have is a license by JFE
Shoji Trade America Inc., as the Master Licensor of
registrant’s marks, authorizing applicant to use the marks
which are the subject of Registration Nos. 991,554 and
1,162,935. While the license provides that applicant shall
submit any packaging it intends to use to JFE Shoji Trade
America Inc. for approval, and thus presumably JFE has
“approved” applicant’s packaging, this is not a consent by
the owner of the cited registrations, namely, Kawasho Foods
Corporation, to registration of applicant’s involved mark.
Even if we were to consider JFE Shoji Trade America Inc. as
the registrant’s agent, the license provides applicant only
the right to use the packaging, not to register it. As
case law recognizes, there is a difference between granting
a party the right to use a mark, and the right to register
it. See In re Wilson Jones Company, 337 F.2d 747, 143 USPQ
238 (CCPA 1964). [A license to use a mark is not the
equivalent of a consent by the owner of the cited mark to
permit registration of the mark by the licensee]. To be
clear, neither paragraph 12 nor any of the other paragraphs
in the agreement evidence registrant’s consent to
applicant’s registration of the involved mark.
In view of the foregoing, we conclude that applicant’s
use of the mark GEISHA and design in connection with salad
Ser No. 76457962
21
shrimp is likely to cause confusion with registrant’s
GEISHA word and “geisha design” marks for canned shrimp,
canned and frozen shell fish, canned crabs, canned tuna,
and canned clams.
Decision: The refusals to register under Section 2(d)
of the Trademark Act in view of each of the cited
registrations are affirmed. The requirement for a new
substitute drawing is reversed. In view of our finding
that the current substitute drawing is acceptable, if
applicant were to appeal from our decision and were to
ultimately prevail, it must submit a new disclaimer which
deletes reference to “A Tradition of Quality Since 1907.”