Eagle Marine Services, Ltd.

Trademark Trial and Appeal Board

Mar 28, 2013

No. 85041968 (T.T.A.B. Mar. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Eagle Marine Services, Ltd.
_____

Serial No. 85041968
_____

Anthony Mulatta, of Kilpatrick Townsend and Stockton LLP for applicant Eagle
Marine Services, Ltd.

Kathleen M. Vanston, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
_____

Before Quinn, Mermelstein and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Eagle Marine Services, Ltd., (“applicant”), appeals from the final refusal to
register the following mark in standard character format:

for the following services, as amended:
Operation of port facilities for others; booking and scheduling cargo
transportation for others in Class 35 and,
Serial No. 85041968

2

Stevedoring services; cargo handling; storage of goods for others in Class 39.1
The examining attorney issued a final refusal to register the mark in both
Classes pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the
following registration, owned by Eagle Ocean Transport Inc. as reflected in the
Office records, as a bar to registration:
Registration No. 3072778
Mark: EAGLE OCEAN
For: Ship agent services, namely, monitoring of maritime vessel services;
arranging for insurance; arranging for insurance for vessels; arranging for
legal services and medical services for maritime vessel crew members;
contracting for maintenance and repair of vessels; contracting with others for
the benefit of vessels and their owners; attending to loading and unloading of
vessels in Class 35;

Marine insurance underwriting; financing services in the field of vessels;
administration of payroll for others in Class 36; and

Freight and cargo brokerage; cargo handling; freight transportation by sea
and air; chartering of vessels; brokerage of vessels; ship bunkering
arrangement; delivery of mail, food, grocery products and parcels to vessels in
port in Class 39.2

After the refusal was made final, applicant appealed and filed a request for
reconsideration which was denied.3 Applicant and the examining attorney have
filed briefs. For the reasons set forth below, the refusal to register is affirmed.
Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative

1 Application Serial No. 85041968 filed May 18, 2010, under section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a); “MARINE SERVICES” has been disclaimed.
2 Registration No. 3072778 issued March 28, 2006; §§ 8 and 15 declaration accepted and
acknowledged. The word “OCEAN” has been disclaimed.
3 Applicant’s Response to Petition to Revive Deficiency Letter is deemed to be a request for
reconsideration.
Serial No. 85041968

3

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 Co., 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). However, we also address each of the factors as to
which applicant or the examining attorney has presented evidence or arguments.
A. Similarity of Services and Channels of Trade
We first consider the second and third du Pont factors, namely, the similarity
of the services and their channels of trade. Registrant’s services consist in part of
“attending to loading and unloading of vessels” in Class 35 and “cargo handling” in
Class 39. Applicant’s services consist in part of “stevedoring,” defined as the
loading or unloading of a vessel,4 and “cargo handling” in Class 39. Thus, both
applicant’s and registrant’s services include loading and unloading vessels (i.e.,
stevedoring), and cargo handling. In determining the similarity of applicant’s and
registrant’s services, it is sufficient if likelihood of confusion for each Class of
services is established for any service encompassed by the recitation of services for
that Class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,

4 See definition of “stevedore” retrieved from Dictionary.com at
www.dictionary.reference.com/browse/stevedoring?r=66 submitted as an attachment to
April 5, 2012 Request for Reconsideration Denied.
Serial No. 85041968

4

988 (CCPA 1981). Accordingly, we find that applicant’s services in Class 39 are
identical in part to the services in Classes 35 and 39 of Registration No. 3072778.
Additionally, the evidence shows that applicant’s nonoverlapping services in
Class 35 are closely related to the cargo handling and stevedoring services in the
application and cited Registration. The examining attorney submitted copies of
third-party websites showing five businesses that provide services identical to the
overlapping services of applicant and registrant; as well as at least one of the
nonoverlapping Class 35 services offered by applicant. For example, four of the
websites show that the website owner provides stevedoring and/or cargo handling
services as well as services similar to applicant’s “operation of port facilities for
others” described as “terminal operations,” “operating port facilities” and “terminal
management” services. See www.shipperstevedoring.com, www.icslogistics.com,
www.ceresglobal.com, and www.ssamarine.com.5 The website
www.schaefferstevedoring.com shows that a company providing stevedoring services
also provides cargo transportation arrangement and coordination, which
corresponds to applicant’s “scheduling cargo transportation for others.”6
The foregoing evidence establishes that the same entity commonly provides
cargo handling and stevedoring services, and at least one of applicant’s services in
Class 35, under the same mark. Thus, applicant’s services in Class 35 are related
to the stevedoring and cargo handling services in the cited Registration. The fact

5 For www.shipperstevedoring.com, www.icslogistics.com, www.ceresglobal.com, see
attachments to April 5 Request for Reconsideration Denied; for www.ssamarine.com see
attachment to March 23, 2011 Office Action.
6 See attachment to April 5, 2012 Request for Reconsideration Denied.
Serial No. 85041968

5

that applicant’s and registrant’s services may differ in some respects is not
controlling in our determination of likelihood of confusion. The issue is not
likelihood of confusion between particular services, but likelihood of confusion as to
the source or sponsorship of those services. See Majestic Distilling, 65 USPQ2d at
1205 (“[T]he...mistaken belief that [a good] is manufactured or sponsored by the
same entity [as another good] ... is precisely the mistake that §2(d) of the Lanham
Act seeks to prevent.”); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687,
1689 (Fed. Cir. 1993).
Attempting to distinguish its services from the services in the cited
Registration, applicant points to the services offered on its website and registrant’s
website, arguing its services are fundamentally different from those disclosed on
registrant’s website.7 The difficulty with applicant’s argument is twofold. First,
what applicant represents to be indicated on registrant’s website and its own
website is not in the record. Second, in determining the similarity of services and
trade channels, it is well established that we are limited to the recitation of services
in the cited Registration. Thus, the issue of likelihood of confusion between applied-
for and registered marks must be determined on the basis of the goods and services
as they are identified in the involved application and registration. Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).

7 Applicant’s Appeal Brief pp. 5-6.
Serial No. 85041968

6

Based on registrant’s website, applicant also argues that applicant’s and
registrant’s channels of trade are distinct because registrant and applicant do not
operate in the same geographic locations.8 Inasmuch as the cited Registration is
not geographically limited, registrant enjoys a legal presumption of an exclusive
nationwide right to use its registered mark under § 7(b) of the Trademark Act, 15
U.S.C. §1057(b), regardless of its actual extent of use of the mark. Accordingly,
applicant’s argument is not pertinent, nor is it based on evidence in the record.
Given that the services are legally identical and otherwise closely related and
there is no limitation as to trade channels or classes of purchasers in the description
of services in either the application or the cited Registration, we may presume that
the services travel in the same channels of trade, and are available to the same
classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
and In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
In view of the foregoing, the du Pont factors regarding the similarity of the
services, trade channels and customers, favor a finding of likelihood of confusion.
B. Similarity of the Marks
We next consider the du Pont factor focusing on the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, meaning and

8 In making this argument, applicant relies on extrinsic evidence including applicant’s and
registrant’s websites which are not in the record. See Applicant’s Appeal Brief pp. 5-6.
Serial No. 85041968

7

commercial impression. du Pont, 177 USPQ at 567; TMEP §1207.01(b) (October
2012).
When considering the similarity of 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 overall commercial
impression so that confusion as to the source of the goods or 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).
To the extent that applicant’s EAGLE MARINE SERVICES mark and the
cited EAGLE OCEAN mark both contain the word EAGLE, when comparing the
marks in their entireties, they are similar in sound and appearance. This is
particularly so in view of the fact that consumers are generally more inclined to
focus on the first word in any trademark or service mark. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of mark
which is most likely to be impressed upon the mind of a purchaser and
remembered” when making purchasing decisions).
Turning to the meaning and commercial impression of the marks, the word
EAGLE as used in both applicant’s mark and the cited mark has the same arbitrary
Serial No. 85041968

8

meaning; it does not describe or connote anything about the services provided by
either applicant or the cited registrant.
The addition of the words MARINE SERVICES in applicant’s mark imparts a
similar overall commercial impression to that of the word OCEAN in the cited
EAGLE OCEAN mark. The word “marine is defined as:
1. BIOLOGY living in or happening in the ocean
a. relating to the ocean and creatures that live in it.
2. involving ships or the business of moving people and
goods in ships
(American definition of marine from the online English
dictionary from Macmillan Publishers Limited.)
www.macmillandictionary.com/dictionary/american/marine 9
The cited mark contains the word OCEAN while the meaning of the word MARINE
in applicant’s mark also relates “to the ocean and creatures that live in it.”
Accordingly, both marks include wording that connotes the ocean.
Given the nature of the services provided by applicant and the cited
registrant, the terms MARINE SERVICES and OCEAN possess a descriptive
connotation as evidenced by the respective disclaimers of these terms. Because
disclaimed matter is typically less significant or less dominant when comparing
marks, the word EAGLE is the dominant feature of both marks. See In re Dixie
Restaurants, Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997);
In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985).
While we are mindful that marks are to be compared in their entireties, one feature

9 See attachment to September 2, 2010 Office Action.
Serial No. 85041968

9

of a mark may be more significant or dominant in creating a commercial impression
such as is the case with the word EAGLE in the EAGLE MARINE SERVICES and
EAGLE OCEAN marks. See Viterra, 101 USPQ2d at 1908; Nat’l Data Corp., 224
USPQ at 751. Thus, both marks begin with the dominant word EAGLE and are
used with descriptive wording that connotes the ocean. In view of the foregoing, the
sound, appearance and the commercial impressions of the marks are very similar.
C. Sophistication of Purchasers
In support of the lack of confusion between its mark and the cited mark,
applicant argues that the purchasers of its services are sophisticated.10 According
to applicant, its services are highly specialized, requiring careful and sophisticated
buying decisions. Assuming that the purchasers of applicant’s and registrant’s
services are sophisticated, this does not necessarily mean that they are immune to
source confusion. Even sophisticated purchasers can be confused by very similar
marks. See Shell Oil, 26 USPQ2d at 1690; In re Cynosure Inc., 90 USPQ2d 1644,
1647 (TTAB 2009), citing Wm. K. Stamets Co. v. The Metal Products Co., 176 USPQ
92, 93 (TTAB 1972) (even technically trained purchasers who are extremely familiar
with expensive machinery may be confused when similar marks are used with
respect to the same goods); TMEP 1207.01(d)(vii). While we acknowledge that the
services recited in applicant’s application and the cited registration are more
specialized in nature, are not the type of services offered to consumers, and would
likely be purchased with some degree of care, this alone is not sufficient to preclude

10 Applicant’s Appeal Brief pp. 3-4.
Serial No. 85041968

10

a finding of likelihood of confusion in view of the totality of the other factors of
confusion we have considered.
D. Lack of Actual Confusion
In addition to the foregoing factors, applicant raised the du Pont factor
relating to a lack of actual confusion noting that applicant is unaware of any
instances of confusion with the cited mark.11 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, inasmuch as the
Board in such cases generally 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, e.g., In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re
Jeep Corp., 222 USPQ 333, 337 (TTAB 1984); In re Barbizon International, Inc., 217
USPQ 735, 737 (TTAB 1983).
In any event, applicant’s uncorroborated statements of no known instances of
actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476
F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (self-serving testimony of
applicant’s corporate president that he was unaware of instances of actual confusion
was not conclusive that actual confusion did not exist or that there was no
likelihood of confusion).12

11 Applicant’s Appeal Brief p. 13.
12 Moreover, the cases upon which applicant relies on page 13 of its Appeal Brief in urging
the Board to consider the lack of actual confusion are easily distinguishable. In those cases,
Serial No. 85041968

11

E. Any Other Probative Fact
Lastly, applicant argues that it had no intent to trade upon registrant’s
reputation or mark, noting that it had been using its EAGLE MARINE SERVICES
mark for 10 years prior to the date that registrant alleged first use of its mark.13
That applicant allegedly used its mark prior to the date of first use asserted by
registrant is without significance in this ex parte appeal. Under § 2(d) of the
Trademark Act, the Board is charged with the duty of refusing registration of a
mark, the use of which is likely to cause confusion because of its resemblance to a
mark registered in the USPTO. In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 339
(CCPA 1978). Our analysis indicates that applicant’s mark is likely to cause
confusion with the mark in the cited Registration. That applicant had no intention
to trade upon registrant’s reputation or mark does not avoid a likelihood of
confusion.
Conclusion
Where the services of the applicant and cited registrant are identical and/or
closely related as they are in this case, the degree of similarity between the marks
required to support a finding of likelihood of confusion is not as great as would be
required with diverse services. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004) also see In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987). Here, the word EAGLE is the first word and dominant

there was evidence from the owners of the conflicting registrations addressing the lack of
confusion. Here there is no such evidence.
13 Applicant’s Appeal Brief p. 14.
Serial No. 85041968

12

feature of both applicant’s mark and the cited mark, and is used in connection with
other words that have similar meanings. The marks therefore are similar in sound,
appearance, and overall commercial impression. The high degree of similarity
between applicant’s mark and the cited mark taken together with the identical and
related nature of the services creates a substantial likelihood that consumers may
be confused as to the source of the respective services.

Decision: The refusal to register the mark in application Serial No. 85041968
under § 2(d) of the Trademark Act is affirmed.