Indigo Bay Seafoods, Inc.

Trademark Trial and Appeal Board

Sep 9, 2013

No. 85350455 (T.T.A.B. Sep. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Indigo Bay Seafoods, Inc.
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Serial No. 85350455
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Andrew Roppel of Holland & Hart LLP for Indigo Bay Seafoods, Inc.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
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Before Kuhlke, Lykos and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Indigo Bay Seafoods, Inc. (“applicant”) seeks registration of the standard
character mark CAPE HAKE, with HAKE disclaimed, for “frozen fish and seafood;
frozen appetizers consisting primarily of seafood; frozen pre-packaged entrees
consisting primarily of seafood.”1 The examining attorney refused registration on
the ground that applicant’s entire mark is merely descriptive of the identified goods,
under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 85350455, filed June 20, 2011 based on Section 1(a) of the
Trademark Act, alleging October 2009 as the date of first use anywhere and in commerce.
Serial No. 85350455
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After the refusal was made final following applicant’s two requests for
reconsideration, applicant appealed, and applicant and the examining attorney filed
briefs. We affirm the refusal to register.
Evidence and Argument
The examining attorney takes the position that “cape hake is a type of the
hake (Merluccius capensis) fish that is indigenous to South Africa.” Examining
Attorney’s Appeal Brief at 5. The examining attorney relies on a variety of evidence
including the following:2
• A dictionary definition stating that “hake” means
“Any of various marine food fishes of the genera
Merluccius and Urophycis, related to and resembling the
cod.”3 Office Action of September 29, 2011.

• A printout from the “Seafood Selector” page of the
Environmental Defense Fund website (“edf.org”), which
states that cape hake is also known as “Merluccius
capensis, stockfish, shallowwater hake, South African
hake,” and is “a relative of the cod.” Cape hake is “found
in the eastern South Atlantic, from Angola to South
Africa” and the Valdivia Bank in the South Atlantic, off
Antarctica,” and “the main sources of Cape hake are

2 We have not considered any of the evidence submitted with the examining attorney’s
brief which was not part of the record prior to applicant’s appeal to the Board. Trademark
Rule 2.142(d). In addition, we have given no consideration to a listing of Google search
results included with the October 23, 2012 Office Action, because the search results “did not
provide sufficient context” and are therefore not probative. In re Thomas Nelson, Inc., 97
USPQ2d 1712, 1715 (TTAB 2011). In fact, “because we are determining whether
consumers would perceive [CAPE HAKE] as a trademark or” to describe a type of fish, “the
text provided with the search summary results was too scant to be helpful in making that
determination. Accordingly, the search summary results did not provide sufficient context
to have any probative value and, therefore, we gave those search results no consideration.”
Id.
3 http://education.yahoo.com/reference/dictionary/entry/hake

Serial No. 85350455
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South Africa and Namibia.” Cape Hake is “certified as
sustainable by the Marine Stewardship Council.” Office
Action of March 15, 2012.

• A printout from the “wikipedia.org” website which
indicates that hake “refers to fish” in either the “family
Phycidae (sometimes subfamily Phycinae in family
Gadidae) of the Northern oceans” or the “family
Merlucciidae of northern and southern oceans,” and that
hake “comes from the same order (Gadiformes) as cod and
haddock.” In addition, as a result of “over-exploitation,”
the “commercial catch of Argentinean hake fish has
declined dramatically,” which will make it “ineffective for
commercial use,” exports of Chilean hake “have decreased
dramatically” and “catches” of European hake “are well
below the historical level.” The entry states that “the only
Hake species that is considered not to be over-fished is
Cape hake, which is found in Zone 47-Namibia,
according to the Worldwide Fund. Namibia is the only
country that has increased its quota of hake fish ….”
Office Action of October 23, 2012.

• A printout from the “Fish Species” section of the
“youngsforchefs.co.uk” website, which indicates that the
scientific name for cape hake is “Merluccius Capensis”
and the market name is “Cape Hake” or “Capensis
Hake.” The entry indicates that cape hake is “popular
throughout Europe and America” and is “a sustainable
fishery, as certified by the Marine Stewardship Council.”
Id.

• A printout of a recipe for red pepper fish tacos from
the “dyno-mom.com” website which includes this preface:
“If you are using inexpensive tilapia fish for your family,
you might want to consider using cape hake fish which is
a mild, inexpensive but wild caught fish that is not over-
fished … I bought the fish I used in this particular meal
at Costco under the Oceanfresh brand ….” Id.

• A printout from the “MSC certified ‘Fish to eat’”
section of the Marine Stewardship Council website
(“msc.org”) regarding hake, which indicates that “[h]ake
are deep-sea members of the Cod family,” and that hake is
“one of the most easily available MSC-labelled seafood
Serial No. 85350455
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products on supermarket shelves around the world, with
many consumers choosing MSC-labelled ‘cape hake’ for
its moist, flaky and well flavoured white flesh.” Id.

• A printout of the “Cape Hake” entry from the
“seafoodconnection.nl” website, which indicates that
Cape Hake is also known as Merluccius Capensis, “is
very similar to the cod, but is officially not a member of
his family” and “comes from a fishery which has been
certified to the Marine Stewardship Council’s
environmental standard for a well-managed and
sustainable fishery.” Id.

• A printout of the listing for The Tuna Hake Fishing
Corporation Ltd. from the “alibaba.com” website, which
indicates that the company is South African, that its main
products include “fresh deep water cape hake (grey
hake)” and “fresh shallow water cape hake (white hake)”
and that its main markets include “North America.”
Office Action of November 29, 2012 denying Request for
Reconsideration.

• A printout from the “21food.com” website indicating
that Alpha Bay SA, a French company, offers frozen
“Cape hake fillets” of the species “merluccius capensis”
which originate in “South Africa/Namibia.” Id.

• A printout from the “seaharvest.co.za” website
which indicates that “Sea Harvest is a South African deep
sea trawling company … the company markets and
distributes its wide range of products to diverse markets
around the world. Sea Harvest’s key species are
Merluccius Capensis and Merluccius Paradosux,
commonly known as Cape Capensis or Cape Hake, the
white-fleshed fish that has become sought after in local
and international markets ….” Id.

• An article entitled “Science Watch: Reaching the
Limit,” from the December 26, 1995 edition of the Orange
County Register, which includes a graphic captioned with
“Cape Hake” and the names of other types of fish. Office
Action of January 5, 2013 denying subsequent Request for
Reconsideration.

Serial No. 85350455
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• An article entitled “Seafood is the best catch for
this week,” from the January 26, 2005 edition of The
Advertiser, which states that “New Wave Seafood has the
budget end of the market covered with … cape hake
fillets also for $4.99/kg.” Id.

According to the examining attorney, “applicant is providing a fish (cape hake) that
is indigenous to South Africa, directly from South Africa.” Examining Attorney’s
Appeal Brief at 6. Furthermore, the examining attorney argues that “[m]any chefs,
culinary experts and regular everyday ‘foodies’ based in the United Sates, who are
interested in exploring diverse cuisine, could potentially look up this fish, with
plans to import directly from South Africa,” pointing out that “[f]ood is constantly
imported into the United States from many places.” Id. at 9-10.
Applicant takes issue with much of the examining attorney’s evidence,
arguing that it “should not be accepted because it consists of newswire reports and
internet and electronic database articles that are from publications from a foreign
country or are about entities/consumers in foreign countries.” Applicant’s Appeal
Brief at 2. Applicant also points out in its November 1, 2012 request for
reconsideration that it “is known as Oceanfresh Seafoods outside the US,” and that
some of the evidence upon which the examining attorney relies, which is not listed
above, concerns applicant’s involved goods, sold by Oceanfresh Seafoods. The
evidence further indicates that Oceanfresh is a division of “Pan-African
conglomerate Lonrho,” which, after acquiring Oceanfresh, had “a comprehensive
roll-out of one of its sustainable fish product brands, ‘Cape Hake Fillets,’ into the
US retail giant Costco;” the “product will soon be on sale at Costco Wholesale stores
Serial No. 85350455
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in the whole country,” referring to the United States. Office Action of November 29,
2012 (printout from “fis.com” website). The article about Oceanfresh/applicant’s
offering of “cape hake” branded fish to Costco stores indicates that “Hake is one of
South Africa’s strongest commercial fish species and, although it has been
extremely popular in Europe for many years, it has historically been ignored by the
North American market due to insufficient logistical capabilities.” In any event,
applicant argues that neither the limited evidence from U.S. sources, nor the
evidence relating to how “cape hake” is used in the United States, is sufficient, as
this evidence “does not show that United States consumers would immediately
ascribe significance to the designation ‘CAPE HAKE’ in the context of fish.”
Applicant’s Appeal Brief at 8.
Analysis
A mark is deemed to be merely descriptive of goods, within the meaning of
Section 2(e)(1), if it “immediately conveys knowledge of a quality, feature, function,
or characteristic” of the goods with which it is used. In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)); In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of the applicant’s
goods in order to be considered merely descriptive; rather, it is sufficient that the
mark describes one significant attribute, function or property of the goods. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338
Serial No. 85350455
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(TTAB 1973). Whether a mark is merely descriptive is determined not in the
abstract, but in relation to the goods for which registration is sought, the context in
which it is being used on or in connection with the goods, and the possible
significance that the mark would have to the average purchaser of the goods
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). It is settled that “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
Here, the evidence from United States sources, as well as the evidence
concerning the use of the term “cape hake” in the United States, is enough, by itself,
to support the finding of mere descriptiveness. Indeed, the Environmental Defense
Fund and Marine Stewardship Council’s websites, which applicant acknowledges as
“U.S. websites/publications,” Applicant’s Appeal Brief at 7, both indicate that “cape
hake” is a type of “hake” fish. Furthermore, the Wikipedia evidence, which
applicant had the opportunity to rebut, indicates not only that “Cape hake” is a type
of fish, but also that it is “the only Hake species that is considered not to be over-
fished,” which at least suggests that the demand for and recognition of cape hake in
the United States may increase. In fact, the article about Oceanfresh/applicant
corroborates the Wikipedia entry, essentially stating just that, i.e. that cape hake
“has historically been ignored by the North American market due to insufficient
Serial No. 85350455
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logistical capabilities” but is now being offered in the United States, by
Oceanfresh/applicant. To the extent that the evidence of descriptive use of “cape
hake” in the United States is not voluminous, it is settled that “a word need not be
in common use in an industry to be descriptive, and the mere fact that an applicant
is the first to use a descriptive term in connection with its goods, does not imbue the
term with source-identifying significance.” In re Hunter Fan Co., 78 USPQ2d 1474,
1476 (TTAB 2006). While applicant is correct that the precise context in which
“cape hake” is used in the Orange County Register article is unclear, it is
nevertheless apparent that the article uses “Cape Hake” to refer to a type of fish.
While this evidence, to which applicant does not object, is sufficient to
establish that cape hake is merely descriptive of applicant’s goods, we disagree that
the evidence obtained from foreign sources is irrelevant in this case. “Information
originating on foreign websites or in foreign news publications that are accessible to
the United States public may be relevant to discern United States consumer
impression of a proposed mark.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1835 (Fed. Cir. 2007). The determination of whether to consider
foreign evidence must be made “on a case-by-case basis.” Id.
In this case, we believe that the evidence obtained from foreign sources has
some probative value to the extent that it corroborates our determination based on
U.S. sources. First, we recognize “the growing availability and use of the internet
as a resource for news ….” Id. Second, we have previously recognized that
“professionals in medicine, engineering, computers, telecommunications and many
Serial No. 85350455
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other fields are likely to utilize all available resources, regardless of country of
origin or medium.” In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002); see
also, In re International Business Machines Corp., 81 USPQ2d 1677, 1681 n.7
(TTAB 2006) (“In this case involving computer technology, it is reasonable to
consider a relevant article regarding computer hardware from an Internet web site,
in English in another country.”). This case is analogous to Remacle and
International Business Machines, in that the evidence reveals on the one hand that
there are various species or subspecies of hake, some of which have been
“overfished,” and on the other that applicant’s fish sold under the involved mark is
by contrast “sustainable,” has not previously been popular in the United States and
is now being offered by a large United States retailer. United States consumers and
retailers of hake (to which applicant apparently sells its involved product), faced
with declining stocks of certain subspecies, may search the Internet and other
sources, from various countries, to identify a substitute or replacement subspecies.
This is the type of scientific or technical inquiry which we have previously found
may justify consideration of foreign evidence. Here, the foreign materials from
“youngsforchefs.co.uk,” “seafoodconnection.nl” “21food.com” and “seaharvest.co.za”
all corroborate the Environmental Defense Fund website’s statement that the
scientific name for “cape hake” is “Merluccius Capensis.” Furthermore, the
materials from “youngsforchefs.co.uk” and “seafoodconnection.nl” corroborate the
Environmental Defense Fund’s description of this subspecies as “sustainable.”
Third, because the evidence reveals that cape hake was not commonly offered in the
Serial No. 85350455
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United States, if it was offered at all, but is now becoming more popular in this
country and elsewhere, some American consumers could reasonably be expected to
search the Internet and other sources for information about a type of fish with
which they are unfamiliar. In fact, the “seaharvest.co.za” website indicates that
cape hake “has become sought after” in “international markets,” and the “fis.com”
website reveals that while cape hake “has historically been ignored by the North
American market,” applicant is now offering it in the United States. This evidence
also supports a finding of mere descriptiveness.
Conclusion
After careful consideration of all of the evidence and argument presented,
including evidence and argument not specifically discussed herein, we find that
there is no doubt that “cape hake” is a type of hake fish (Merluccius Capensis), and
is therefore merely descriptive of applicant’s goods.
Decision: The refusal to register is affirmed.