Crystal Cruises, LLC

Trademark Trial and Appeal Board

Dec 6, 2018

No. 86950841 (T.T.A.B. Dec. 6, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 6, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Crystal Cruises, LLC
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Serial Nos. 86950812 & 869508411
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Bradley L. Cohn and Kristine A. Bergman of Pattishall McAuliffe Newbury Hilliard
& Geraldson LLP
for Crystal Cruises, LLC

Kyle D. Simcox, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Kuhlke, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, the appeals are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua
sponte consolidated two appeals). Citations to the TSDR record are to Serial No. 86950812.
Serial Nos. 86950812 & 86950841
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I. Background
In separate applications, Crystal Cruises, LLC (“Applicant”) seeks registration on
the Principal Register of the following marks, both for “Restaurant services” in
International Class 43:
2 3
Each application contains a description stating “[t]he mark consists of six Chinese
characters,” and a transliteration statement that “[t]he non-Latin characters in the
mark transliterate to ‘Haima rìben liàoli’ and this means ‘seahorse Japanese cuisine’
in English.” Applicant has disclaimed “the non-Latin characters that transliterate to
‘rìben liàoli.’”
The 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 registered mark
SEAHORSE in standard characters for “bar, lounge services” in International Class
43.4 After the Examining Attorney made the refusals final, Applicant appealed. For
the reasons set forth below, we affirm the refusals to register.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours

2 Application Serial No. 86950812 was filed March 23, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
3 Application Serial No. 86950841 was filed March 23, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
4 Registration No. 2961555 issued June 7, 2005, and has been renewed.
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& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the services. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 [services] and differences in the marks.”).
A. Similarity of the Marks
We compare the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. 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). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the services
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
The marks differ in appearance and sound because Applicant’s marks are in
Chinese while the registered mark is an English language word, but we find the
connotation and commercial impression of the marks quite similar. The record,
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including Applicant’s own translation of its marks, shows that Applicant’s marks
translate from Chinese to English as SEAHORSE JAPANESE CUISINE. The
Examining Attorney contends that the dominant portion of Applicant’s marks
translates to SEAHORSE, and that this element should be considered the equivalent
of the registered mark under the doctrine of foreign equivalents.
“Under the doctrine of foreign equivalents, foreign words from common [modern]
languages are translated into English to determine … similarity of connotation in
order to ascertain confusing similarity with English word marks.” Palm Bay Imps.,
73 USPQ2d at 1696. We find that Chinese qualifies as a common, modern language,
based on the U.S. Census data introduced by Applicant, showing that among foreign
languages primarily spoken at U.S. homes, Chinese is the second most common after
Spanish.5 In addition, while the Census figures are substantial, they nevertheless
almost certainly undercount the percentages of Americans who know Chinese
because they document the primary language spoken at home. Many U.S. residents
who know or have studied Chinese may speak English at home. For example, those
who have emigrated to the United States, or have lived in China, or whose parents
or relatives are Chinese, may be familiar with or even fluent in Chinese but may still
speak English as the primary language in their homes. None of these U.S. consumers
familiar with Chinese would be represented in Applicant’s cited statistics.
Accordingly, we have no hesitation in considering Chinese a common, modern
language.

5 November 30, 2016 Response to Office Action at 8-14.
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Nonetheless, “the doctrine of foreign equivalents is not an absolute rule and
should be viewed merely as a guideline,” applying “only when it is likely that the
ordinary American purchaser would ‘stop and translate [the word] into its English
equivalent.’” Id. (citations omitted). For example, In re Spirits Int’l N.V., 563 F.3d
1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009) describes exceptions when a consumer
familiar with the foreign language would not stop and translate. Despite Applicant’s
unsubstantiated arguments, we consider the exceptions inapplicable in this case,
however. On this record, we do not find that “the literal translation is irrelevant,”
that the Chinese wording has a “well established alternative meaning,” or that the
context in which the marks appear renders translation unlikely. See id. In fact,
because the evidence shows that the English translation is unambiguously literal and
direct,6 with no other relevant connotations or variations in meaning, we deem it
appropriate to apply the doctrine. See, e.g., In re Ithaca Ind., Inc., 230 USPQ 702
(TTAB 1986) (holding LUPO and WOLF and design likely to cause confusion in part
because LUPO is the foreign equivalent of the English word “wolf”). Given the
undisputed literal and direct translation of Applicant’s marks as SEAHORSE
JAPANESE CUISINE, and no evidence that the relevant consumer would not stop
and translate the mark, we reject Applicant’s unsupported contention that the
Examining Attorney must make an additional showing that the Chinese characters
are “common or commonly known among readers of Chinese.”7 See In re Oriental

6 January 5, 2017 Office Action at 6-7; Application at 2 (Applicant’s own
transliteration/translation statement).
7 10 TTABVUE 7 (Applicant’s Brief).
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Daily News, Inc., 230 USPQ 637, 638 (TTAB 1986) (Chinese characters that mean
ORIENTAL DAILY NEWS held merely descriptive of newspapers, with the Board
stating, “we see no reason why descriptive words represented by Chinese characters
should be treated any differently from descriptive words in other contemporary
languages.”).8
Applying the doctrine of foreign equivalents, we find that the SEAHORSE element
of Applicant’s marks dominates, including because as the first word it “is most likely
to be impressed upon the mind of a purchaser and remembered,” Presto Prods., Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay Imps., 73
USPQ2d at 1692, especially given that the remaining wording JAPANESE CUISINE
is disclaimed as generic for or descriptive of the type of food served by the identified
restaurants.9 Here, consumers would not view JAPANESE CUISINE as source-
indicating. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997) (in comparing THE DELTA CAFÉ to DELTA, the term CAFÉ
lacks sufficient distinctiveness to create a different commercial impression). This
dominant SEAHORSE element of Applicant’s marks is identical in connotation and
commercial impression to the cited mark SEAHORSE.

8 We do not find persuasive Applicant’s attempt to distinguish the Oriental Daily News case
because in that case the specimens showed the Chinese characters forming the mark
appearing with an English language translation. In Oriental Daily News, the Board relied on
the accompanying English translation only to confirm the meaning of the Chinese characters.
Here, Applicant has supplied the meaning itself.
9 Other evidence in the record also supports the genericness or descriptiveness of JAPANESE
CUISINE. See January 5, 2017 Office Action at 8-17.
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Applicant argues that even if consumers would stop and translate its marks, the
visual and phonetic differences arising from the appearance of its marks in Chinese
characters and the transliterated pronunciation change the commercial impression
and outweigh the similarity in meaning. However, this argument could be made in
any foreign equivalents case, almost all of which by definition involve comparing
marks in different languages that typically look and sound different. Cf. In re Oriental
Daily News, 230 USPQ at 638 (the relevant purchasing public would perceive the
Chinese characters sought to be registered in accordance with their English language
meaning). Thus, while we have considered the appearance and sound of the marks in
their entireties, we find that their differences in appearance and sound are
outweighed by the significant similarity in connotation and commercial impression
under the doctrine of foreign equivalents. See In re Sarkli, Ltd., 721 F.2d 353, 220
USPQ 111, 113 (Fed. Cir. 1983) (“the PTO may reject an application ex parte solely
because of similarity in meaning of the mark sought to be registered with a previously
registered mark”); see also In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006)
(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 large part because “marche noir” means “black market”
in French); In re Perez, 21 USPQ2d 1075 (TTAB 1991) (EL GALLO for fresh
vegetables likely to be confused with ROOSTER for fresh fruit, because “[w]hile the
marks are concededly distinguishable in their appearance and sound, it is our view
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that the equivalency in meaning or connotation is sufficient, in this case, to find
likelihood of confusion”).
This du Pont factor weighs in favor of likely confusion.
B. The Services
Applicant’s restaurant services need not be “competitive or intrinsically related”
to Registrant’s bar and lounge services to find a likelihood of confusion. Joseph Phelps
Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1737
(Fed. Cir. 2017). “Instead, likelihood of confusion can be found ‘if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations
omitted). In analyzing the second du Pont factor, we look to the identifications in the
application and cited registration. See Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Indeed, “[t]he authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of [services] set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s [services], the particular channels of trade or the class of purchasers to
which sales of the [services] are directed.” Octocom Syst., 16 USPQ2d at 1787. Thus,
we must presume that Applicant’s restaurant services encompass all types, not just
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Japanese food restaurants, as argued by Applicant.10 See, e.g., In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992) (“Registrant’s goods are broadly identified as computer programs
recorded on magnetic disks, without any limitation as to the kind of programs or the
field of use. Therefore, we must assume that registrant’s goods encompass all such
computer programs including those which are for data integration and transfer.”).
Here, the cited registration covers bar and lounge services, and a bar is defined as
“[a] counter at which drinks, especially alcoholic drinks, and sometimes food, are
served [or a]n establishment or room having such a counter.”11 This definition
suggests some inherent overlap, or at least close relationship, between bar and
restaurant services, as both serve food.
In addition, the Examining Attorney submitted persuasive evidence that
consumers are accustomed to encountering restaurant services such as Applicant’s
and bar and lounge services such as Registrant’s under the same marks. For example:
• The Brewer’s Alley website shows that mark for bar and restaurant
services;12

10 10 TTABVUE 9 (Applicant’s Brief).
11 July 14, 2016 Office Action at 30-31 (American Heritage Dictionary).
12 July 14, 2016 Office Action at 8-11, 20-23 (brewers-alley.com) (brewpub beer menu,
restaurant food menu, and promotion of lunch food specials).
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• The BJ’s website calls its establishments “BJ’s Restaurant and
Brewhouse”;13
• The Capitol City Brewing Company website features a food menu as well
as “Signature Brews,” and describes the establishment as “Our Nation’s
Monument to Handcrafted Beer and Great Food!”;14
• The Dogfish Head website refers to its establishments as brewpubs offering
“Beer-centric Food;”15 and
• Website evidence shows Jackson’s as a mark for “Mighty Fine Food & Lucky
Lounge.”16
The record also includes six use-based third-party registrations that identify both bar
and restaurant services under the same marks, suggesting that these services may
emanate from the same source. In re Aquamar, Inc., 115 USPQ26 1122, 1126 n.5
(TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
foregoing evidence demonstrates the relatedness of Applicant’s and Registrant’s
services.
Applicant in its Reply Brief for the first time criticizes the Examining Attorney’s
marketplace relatedness evidence for showing brewpubs and combination bar-
restaurant establishments rather than standalone restaurants and standalone bars

13 Id. at 12-19 (bjsrestaurants.com).
14 Id. at 24, 27 (capcitybrew.com).
15 Id. at 28 (dogfish.com).
16 Id. at 33 (greateramericanrestaurants.com).
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or lounges under the same marks. We do not find the argument persuasive, as
Applicant’s and Registrant’s recitations refer to types of services without restriction
to standalone establishments or otherwise. Thus, the Examining Attorney’s evidence
is relevant and convincing to show consumer exposure to these types of services being
offered under the same mark. In any event, common experience tells us that many
restaurants include bars, and many bars serve food.
This factor weighs in favor of likely confusion.
C. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, the relatedness evidence discussed
above demonstrates that services such as those identified in the subject application
and cited registration are featured together in the same establishments, and on the
same websites, and would be encountered by the same consumers. This factor also
favors likely confusion.
III. Conclusion
The similarity of these marks in their entireties for related services that move in
the same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusals to register Applicant’s marks are affirmed.