Aquamar, Inc.

Trademark Trial and Appeal Board

Jun 25, 2015

No. 85861533 (T.T.A.B. Jun. 25, 2015)

This Opinion is a
Precedent of the TTAB

Mailed: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Aquamar, Inc.
_____

Serial No. 85861533
_____

Robert E. Nail of Locke Lord LLP for Aquamar, Inc.

Jason F. Turner, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Quinn, Kuhlke and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Aquamar, Inc. (“Applicant”) seeks registration of the mark MARAZUL, in
standard characters, for “Fish and seafood products, namely, frozen and fresh
processed fish and seafood, and imitation crab meat” in International Class 29.1 The
Examining Attorney refused registration: (1) under Section 2(d) of the Act,
15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the

1 Application Serial No. 85861533, filed February 27, 2013, based on first use dates of
February 15, 2013. The application indicates that “The wording MARAZUL has no meaning
in a foreign language,” even though, as set forth below, the Examining Attorney required
Applicant to provide a translation statement based on evidence that “mar azul” means “blue
sea” in Spanish.
Serial No. 85861533
2
previously-registered mark BLUE SEA, in standard characters, for “non-live fish
and frozen fish,” also in Class 29,2 that use of Applicant’s mark in connection with
Applicant’s goods is likely to cause confusion or mistake or to deceive; and (2)
because Applicant failed to comply with the requirement that it provide a
translation of the non-English words in the mark. After the refusals became final,
Applicant appealed and Applicant and the Examining Attorney filed briefs.
The Examining Attorney’s Requirement that Applicant
Provide a Translation Statement
With the first Office Action, the Examining Attorney provided evidence that
“mar azul” means “blue sea” in Spanish. Office Action of June 17, 2013 (printout
from Bing Translator). Accordingly, he required that Applicant “submit an English
translation of all foreign wording in the mark.” Trademark Rule 2.32(a)(9),
37 C.F.R. § 2.32(a)(9) (“[i]f the mark includes non-English wording, an English
translation of that wording” must be included in the application). In response, and
without addressing or questioning the Examining Attorney’s evidence, or
submitting any evidence of its own, Applicant denied that its mark means anything:
Applicant further submits that its proprietary
“MARAZUL” mark is a completely arbitrary designation
and coined term with respect to Applicant’s associated
goods, thereby avoiding any likelihood of confusion with
the cited registered “BLUE SEA” mark, whether the
respective marks are compared in translated or
untranslated form … even if the Examining Attorney’s
suggested division of Applicant’s mark into separated
elements “MAR” and “AZUL” and suggested translation of
such separated elements as “SEA” and “BLUE” were to be

2 Registration No. 3216501, issued March 6, 2007; combined Sections 8 and 15 affidavit
accepted and acknowledged.
Serial No. 85861533
3
considered (which Applicant asserts would be improper in
any event since Applicant confirms that its “MARAZUL”
mark is a unitary and inseparable and arbitrary term
coined by Applicant having no direct English translation)
Applicant emphasizes that such translated elements
appear in reverse order as compared to the respective
elements of the cited registered “BLUE SEA” mark,
thereby highlighting very substantial and meaningful
differences between … commercial impression of the
respective marks …. In response to the Examining
Attorney’s requirement for an English translation of all
foreign wording in Applicant’s “MARAZUL” mark,
Applicant submits that “MARAZUL” is an arbitrary
coined term and brand created by Applicant and that such
term has no direct English translation.

Office Action Response of December 17, 2013.
With the next Office Action, the Examining Attorney provided additional
evidence, including three newspaper articles which indicate that “mar azul” is
Spanish for “blue sea”:
“… Abigail Woolridge asked about the ‘wonderful rum-
based drink call (sic) Mar Azul.’ That translates as ‘Blue
Sea’ to us gringos.” “Island Escape,” The Courier-Journal
(Louisville, Kentucky), Aug. 10, 2011.

“Last week, three boys and a girl delivered a presentation
on a company called Mar Azul, or ‘Blue Sea.’ The students
had to come up with a business plan, slogan and
advertising copy in Spanish.” V. Dion Hayes, “In Mrs.
Savoy’s Class, Spanish Comes Alive,” The Washington
Post, April 28, 2005.

“Nicole Williamson, Laura Dingman, and Leah Welch, all
13, of North Tonawanda Middle School built a city called
‘El Mar Azul,’ meaning the blue sea.” Rachel Gruber,
“Designing a City of the Future,” The Buffalo News, Feb.
2, 2005.

Serial No. 85861533
4
Office Action of January 7, 2014. The Examining Attorney also provided a printout
from Applicant’s website which states “Marazul™ brand by Aquamar® is the first
Surimi Seafood product designed to truly target the US Hispanic market with
authentic bilingual packaging.” Id. (“aquamar.net/consumer-products-3/#Marazul
ConsumerBrand”). We note also that Applicant’s website depicts its AQUAMAR
house mark with a design of wavy blue lines presumably meant to represent a blue
sea:

Serial No. 85861533
5
And Applicant’s specimens of use of its involved MARAZUL mark illustrate its
targeting of “the US Hispanic market with authentic bilingual packaging”:

Based on the original and supplemental evidence that “mar azul” means “blue
sea,” the Examining Attorney made final the requirement for a translation
statement. Applicant never provided the required translation statement during
prosecution. In its Appeal Brief, Applicant again asserts that “‘MARAZUL’ is an
arbitrary, coined, unitary term and brand created by Applicant and that such term
has no direct English translation.” Applicant’s Appeal Brief at 6.
Trademark Rule 2.32(a)(9) requires applications for marks including non-
English wording to include an English translation of that wording. See also,
Trademark Manual of Examining Procedure (“TMEP”) § 809 (Jan. 2015).
Furthermore, “[t]he Office may require the applicant to furnish such information …
Serial No. 85861533
6
as may be reasonably necessary to the proper examination of the application.”
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b).
Applicant’s argument that it need not comply with the translation requirement
because its mark is “unitary and inseparable” is not well taken. There is no
evidence that combining “mar” and “azul” into a single term without a space
between the constituent words results in the mark creating a commercial
impression any different from MAR AZUL with a space between the constituent
words, especially where “mar azul” has been shown to have a specific meaning
consistent with Applicant’s goods.3 See, e.g., In re Carlson, 91 USPQ2d 1198, 1200
(TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real
estate consultation and real estate listing services); In re A La Vieille Russie Inc., 60
USPQ2d 1895, 1897 n. 2 (TTAB 2001) (“the compound term RUSSIANART is as
merely descriptive as its constituent words, ‘Russian Art’”); In re Gagliardi Bros.,
Inc., 218 USPQ 181 (TTAB 1983) (BEEFLAKES merely descriptive of thinly sliced
beef); In re Orleans Wines, Ltd. 196 USPQ 516 (TTAB 1977) (BREADSPRED merely
descriptive of jellies and jams). See also, TMEP § 809 (the translation requirement
“also applies to compound word marks comprised of two or more distinct words (or
words and syllables) that are represented as one word, in which one or more of the
words in the mark appears to be non-English wording that would clearly be
perceived as a distinct word(s) within the compound.”). Moreover, because
Applicant’s MARAZUL brand is “designed to truly target the US Hispanic market

3 The English meaning of “mar azul” is also consistent with the design accompanying
Applicant’s house mark.
Serial No. 85861533
7
with authentic bilingual packaging” for Applicant’s fish, Applicant’s claim that the
mark “is a completely arbitrary designation and coined term with respect to
Applicant’s associated goods” is inconsistent with the evidence of record and not
credible.4
Therefore, the refusal to register based on Applicant’s failure to comply with the
requirement to include an English translation of the non-English wording
comprising its mark is affirmed.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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 goods. 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.”).
Turning first to the goods and channels of trade, they are in part identical, as
Applicant and Registrant both offer “frozen fish,” and Registrant’s “non-live fish”

4 In any event, even if Applicant did coin its mark without intending it to have the meaning
of “mar azul,” the question is not what Applicant intended, but how the mark will be
perceived.
Serial No. 85861533
8
encompasses Applicant’s fresh processed fish.5 Neither identification includes any
limitations with respect to channels of trade.
Where, as here, Applicant’s and Registrant’s 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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).

5 The Examining Attorney also introduced a number of registrations owned by Applicant
and third-parties establishing that Registrant’s “non-live fish and frozen fish” on the one
hand and crab meat and Applicant’s “imitation crab meat” on the other may emanate from
the same source. Office Action of January 7, 2014. “Third-party registrations which cover a
number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale or
that the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type which may
emanate from a single source.” See, In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
However, in view of our findings with respect to Applicant’s fresh processed fish and frozen
fish and Registrant’s non-live fish and frozen fish, we need not make a determination as to
Applicant’s remaining goods, as it is sufficient for a finding of likelihood of confusion if
relatedness is established for any item encompassed by the identification of goods within a
particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100
USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, slip op.
91118482 (TTAB Jan. 22, 2014); Baseball America Inc. v. Powerplay Sports Ltd., 71
USPQ2d 1844, 1847 n.9 (TTAB 2004).
Serial No. 85861533
9
The legal identity of Applicant’s and Registrant’s goods and their overlapping
channels of trade and classes of purchasers not only weigh heavily in favor of a
finding of likelihood of confusion, but also reduce the degree of similarity between
the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at
1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010);
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
With respect to the marks, we must compare them “in their entireties as to
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, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Here comparing the marks, although they are distinct in appearance and sound,
their meanings are identical. The record evidence establishes that “mar azul” means
“blue sea.” Office Action of June 17, 2013 (printout from Bing Translator); Office
Action of January 7, 2014 (articles from The Courier-Journal, The Washington Post
and The Buffalo News).
Under the doctrine of foreign equivalents, foreign words
from common languages are translated into English to
determine similarity of connotation with English word
marks. See Palm Bay Import, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied
when it is likely that “the ordinary American purchaser
would ‘stop and translate [the term] into its English
Serial No. 85861533
10
equivalent.” Palm Bay, supra at 1696, quoting In re Pan
Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976.).

In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).
Spanish is a “common language” in the United States, and we have routinely
applied the doctrine of foreign equivalents to Spanish language marks. In re La
Peregrina Ltd., 86 USPQ2d 1645, 1648 (TTAB 2008) (“there is no question that
Spanish is a common, modern language”); In re Perez, 21 USPQ2d 1075 (TTAB
1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983); Rosenblum v. George Willsher &
Co., 161 USPQ 492 (TTAB 1969). We also take judicial notice of the August 2013
United States Census Bureau’s “Language Use in the United States: 2011” report,
which indicates that after English, Spanish is the most commonly spoken language
in the United States, and that over 12% of the United States population speaks
Spanish.6
We further find that ordinary purchasers of fish would stop and translate
Applicant’s mark into English. In fact, that is essentially Applicant’s stated
intention, as MARAZUL-branded fish is “designed to truly target the US Hispanic
market with authentic bilingual packaging.” Office Action of January 7, 2014
(printout from Applicant’s website). See In re American Safety Razor, 2 USPQ2d at
1460 (“ … applicant markets and sells its soap … to Spanish-speaking purchasers.
We believe that those bilingual purchasers familiar with registrant’s ‘GOOD

6 http://www.census.gov/prod/2013pubs/acs-22.pdf. The Board may take judicial notice of
census data. In re Tokutake Indus. Co., 87 USPQ2d 1697, 1700 n.1 (TTAB 2008).
Serial No. 85861533
11
MORNING’ and design shaving cream would, upon encountering applicant’s
‘BUENOS DIAS’ soap sold with Spanish-language phrases appearing on the
container and with the name of the goods appearing in Spanish, be likely to
translate ‘BUENOS DIAS’ into its ‘GOOD MORNING’ English equivalent and
mistakenly believe that the ‘BUENOS DIAS’ product was a product emanating from
registrant and marketed to the Spanish speaking public.”). When consumers view
Applicant’s MARAZUL packaging they will see several Spanish words displayed
next to their English equivalents, increasing the likelihood that they will translate
MARAZUL. Moreover, Applicant’s specimens display the MARAZUL mark in blue,
with a blue nautical-themed logo, together with the phrase “productos del mar,”
further increasing the likelihood that consumers will perceive the separate words
“mar” and “azul” in the compound term “marazul” and translate both “mar” and
“azul” when used in connection with Applicant’s seafood products:

We recognize that the marks’ “equivalency in connotation does not, in and of
itself, determine the question of likelihood of confusion in this case … the similarity
in connotation must be viewed as but a single factor in the overall evaluation of
likelihood of confusion.” In re Ithaca Industries, Inc., 230 USPQ 702,704 (TTAB
Serial No. 85861533
12
1986) (finding LUPO, for men’s and boy’s underwear likely to be confused with
WOLF for sportswear, in large part because LUPO means “wolf” in Italian).
“[W]here the only similarity between the marks is in connotation, a much closer
approximation is necessary ….” In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113
(Fed. Cir. 1983). However, even when there are differences in the sound and
appearance of two marks, likelihood of confusion can be found when the equivalency
in meaning or connotation outweighs the differences in the marks.
In the context of these identical goods, which come from the sea, there is nothing
to separate the meaning of the terms MARAZUL and BLUE SEA, nor is there a
different nuance or meaning for either term in their respective languages; they are
exact equivalents. Cf. Sarkli, 220 USPQ at 113 (SECOND CHANCE and
REPECHAGE not exact equivalents); In re Buckner Enterprises Corp., 6 USPQ2d
316 (TTAB 1987) (DOVE not confusingly similar to PALOMA which may be
translated into either dove or pigeon). Rather, here, as in a number of prior cases
with similar facts, the equivalency in meaning of the marks outweighs the
differences in how the marks look and sound. See Ithaca Industries, Inc., 230 USPQ
at 704; see also, In re La Peregrina, 86 USPQ2d at 1649-50 (“LA PEREGRINA and
PILGRIM [both for jewelry] are foreign equivalents and, thus, the marks are
identical in meaning. This factor outweighs the differences in appearance and
pronunciation.”); In re Thomas, 79 USPQ2d at 1021 (MARCHE NOIR for jewelry
likely to be confused with BLACK MARKET MINERALS for retail jewelry store
services, despite marks being “decidedly different in sound and appearance,” in
Serial No. 85861533
13
large part because “marche noir” means “black market” in French); In re Perez, 21
USPQ2d at 1075 (finding EL GALLO for fresh vegetables, namely tomatoes and
peppers likely to be confused with ROOSTER for fresh fruit, in large part because
“gallo” means “rooster” in Spanish); In re American Safety Razor, 2 USPQ2d at 1460
(“While the marks are concededly distinguishable in their appearance and
pronunciation, it is our view that the equivalency in meaning or connotation is
sufficient, in this case, to find likelihood of confusion.”); In re Hub Distributing, 218
USPQ at 284; Rosenblum v. George Wilsher & Co., 161 USPQ at 492 (RED BULL
for Scotch whiskey likely to be confused with TORO ROJO for rum, in large part
because “toro rojo” means “red bull” in Spanish).
On balance, the du Pont factors relevant to this case – the similarity of the
goods, channels of trade and classes of consumers and similarity of the marks –
weigh in favor of a finding of likelihood of confusion.
Conclusion
In the face of uncontradicted evidence that “mar azul” means “blue sea,”
Applicant’s mere argument that the mark is an “arbitrary, coined” term is
unpersuasive. Accordingly, the translation requirement was appropriate and not
met, and confusion is likely given the identical goods, channels of trade and classes
of purchasers and connotation of the marks.
Decision: The refusal based on Applicant’s failure to comply with the translation
requirement and the Section 2(d) refusal to register Applicant’s mark both are
affirmed.