Nantucket Harvest Co., Inc.

Trademark Trial and Appeal Board

Sep 20, 2004

No. 76475899 (T.T.A.B. Sep. 20, 2004)

Mailed:
September 20, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nantucket Harvest Co., Inc.
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Serial No. 76475899
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Elliott A. Salter of Salter & Michaelson for Nantucket
Harvest Company, Inc.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office
110 (Chris Pedersen, Managing Attorney).
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Before Seeherman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Nantucket Harvest Company, Inc. [applicant] has
applied to register on the Principal Register the mark
NANTUCKET OFF-SHORE for goods ultimately limited to and
identified as "spices, seasonings, sauces, seasoning rubs,
and seasoning sauces for barbecued foods and for use on
cooked food products," in Class 30.1 The application is
based on asserted use of the mark in commerce and includes
1 Applicant deleted goods and services in other classes.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76475899
2
a disclaimer of rights to the term "Nantucket" apart from
use in conjunction with the applied-for mark.
The examining attorney ultimately issued a final
refusal of registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), in view of the existence of
Registration No. 1470810 for the mark OFF SHORE for
"seafood" in Class 29.2 Applicant requested
reconsideration, but the request was denied. Applicant
then filed its notice of appeal. Applicant and the
examining attorney have filed briefs. Applicant did not
request an oral hearing.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the similarities of the marks and
the related nature of the goods. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
2 The registration issued December 29, 1987 on the Principal
Register. The USPTO has accepted registrant's affidavit of
continued use of the mark, filed under Section 8 of the Trademark
Act, and acknowledged its affidavit of incontestability filed
under Section 15 of the Act. See 15 U.S.C. §§ 1058 and 1065.
Ser No. 76475899
3
In support of his refusal, and in regard to the
involved marks, the examining attorney argues that OFF
SHORE and NANTUCKET OFF-SHORE are highly similar because
applicant has taken the entirety of the registered mark and
merely added the disclaimed and geographically descriptive
term NANTUCKET.3 The examining attorney analogizes the case
at hand to the cases of Henry Siegel Co. v. M & R Int'l
Mfg. Co., 4 USPQ2d 1154 (TTAB 1987), wherein the Board
granted a petition for cancellation of L.A. CHIC, based on
petitioner's prior use of CHIC for complementary clothing
items, because purchasers familiar with petitioner's mark
would conclude that respondent's mark was a variation of
the former used to designate a line of clothing made in Los
Angeles or of a style prevalent there; and In re Collegian
Sportswear Inc., 224 USPQ 174 (TTAB 1984), wherein the
Board affirmed a refusal to register COLLEGIAN OF
CALIFORNIA (stylized), in view of the prior registration of
COLLEGIENNE (stylized) for goods legally identical (in
part), because the marks were found "strikingly similar in
appearance and pronunciation and virtually identical in
meaning," such that customers familiar with registrant's
3 The record reveals that, although applicant is not located on
Nantucket Island, its business was founded there and it has
retained the island's name as part of its business name and mark.
The examining attorney, aware of this, accepted the applicant's
disclaimer of "Nantucket."
Ser No. 76475899
4
goods might conclude applicant's products were a new line
from registrant featuring California or West Coast styles.
While in the Henry Siegel case there was evidence
offered to support respondent's contention that
petitioner's CHIC mark was descriptive or, at best, weak
and entitled to a narrow scope of protection, see 4 USPQ2d
at 1157-58, in this case the examining attorney asserts
that the cited mark OFF SHORE is distinctive and there is
no evidence that it is commonly used or registered.4 Thus,
he concludes it is entitled to a broad scope of protection.
As to the involved goods, the examining attorney
argues they are related because they are complementary,
insofar as spices, seasonings and sauces may be used in
preparing seafood; that applicant's own website shows it
sells seafood, and not just spices, seasonings, etc.; and
that applicant's specimens show that applicant markets not
just any spices and seasonings, but products formulated for
use on or with seafood. In addition, the examining
4 We note, too, that in the Collegian Sportswear case a
dissenting opinion relied on the existence of many third-party
registrations for marks for clothing that featured "collegiate,"
"college," "collegeset," and similar terms, so that the author of
the dissenting opinion found the addition of the term OF
CALIFORNIA to COLLEGIAN sufficient to distinguish that mark from
COLLEGIENNE. Collegian Sportswear, 224 USPQ at 177. In this
case, however, applicant has not, as the examining attorney
notes, put in any evidence of third-party uses or registrations
of OFF SHORE.
Ser No. 76475899
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attorney has placed in the record reprints from five
internet web sites showing that seafood and spices or
seasonings can be obtained from a single source, as well as
six registrations based on use of the registered marks in
commerce, covering both seafood and spices or seasonings.
As the examining attorney correctly notes, third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). See
also, In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff'd as not citable precedent 88-
1444 (Fed. Cir. Nov. 14, 1988).
Applicant admits that the term NANTUCKET is
geographically descriptive but argues that the term cannot
be ignored in comparing the marks, because Nantucket is an
upscale resort destination and lends a certain "cachet" to
applicant's mark and goods, and because such an association
with that island makes it that much more important to give
due weight to the NANTUCKET portion of the mark. Applicant
also argues that NANTUCKET OFF-SHORE is applicant's house
mark, not merely a product mark and it is, therefore,
considered stronger by the USPTO and less likely to cause
Ser No. 76475899
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confusion. In support of this proposition, applicant cites
to a decision, by a federal district court, denying a
preliminary injunction in a case involving allegations of,
among other claims, infringement and unfair competition.
See Pristine Industries Inc. v. Hallmark Cards Inc., 753
F.Supp. 140, 18 USPQ2d 1214 (S.D.N.Y. 1990).
The Pristine decision provides little support for
applicant's argument. First, it is a federal district
court case, applying the law of the Court of Appeals for
the Second Circuit, to the question whether to grant a
preliminary injunction in an infringement proceeding,
rather than the case law involved in determining whether a
mark is entitled to registration. Second, it is entirely
distinguishable on its facts. In Pristine, the plaintiff
owned a federal registration for the word mark HOTDOGGER,
and used it in conjunction with an anthropomorphic hot dog
character, for its skiing apparel and other outdoor
clothing, while the defendant was making an anthropomorphic
hot dog Christmas ornament named the "hotdogger" but using
as its marks for this product both its house mark HALLMARK
and its mark for a line of collectible Christmas ornaments,
KEEPSAKE COLLECTION. Further, plaintiff's clothing items
and defendant's Christmas ornament were not complementary
Ser No. 76475899
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items or otherwise related. In short, these facts are not
analogous to the situation presented in this appeal.
Applicant also has argued that NANTUCKET OFFSHORE is
its house mark. Generally, the addition of a house mark or
trade name to one of two otherwise confusingly similar
marks will not avoid the likelihood of confusion. Siegel,
4 USPQ2d at 1160, and First International Services Corp. v.
Chuckles Inc., 5 USPQ2d 1628, 1632 (TTAB 1988) ("It has
frequently been held that the addition of a trade name or
house mark or other such matter to one of two otherwise
similar marks will not serve to avoid a likelihood of
confusion."). The exceptions to this rule occur when there
are recognizable differences between the conflicting
product marks so that the addition of the house mark is
sufficient to render the marks as a whole distinguishable,
or the product mark is merely descriptive, or commonly used
or registered, and would not be regarded as an indication
of source. Siegel, 4 USPQ2d at 1160. Although technically
applicant does not seek to simply add its house mark to the
registrant's mark, in that its house mark includes the
"product mark," we think the applicant's situation should
be governed by the same general rule and exceptions
discussed above. Because neither of the exceptions apply,
in that OFFSHORE is virtually identical in both marks, and
Ser No. 76475899
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registrant's mark OFF SHORE is not descriptive, applicant's
use of the additional element NANTUCKET cannot serve to
differentiate the composite from the cited mark OFF SHORE.
In short, while we do not disregard the NANTUCKET term in
applicant's mark, notwithstanding that applicant has
conceded it is geographically descriptive and has
disclaimed it5, we do not find it to be a distinctive house
mark in its own right or sufficient, when coupled with OFF-
SHORE, to create a significantly different commercial
impression than that of the cited mark.
As in Henry Siegel and Collegian, this appeal presents
a case whereby prospective consumers will view one mark as
denominating a particular line of products related to the
goods identified by a similar mark, i.e., prospective
consumers of registrant's seafood, encountering applicant's
spices and seasonings, will conclude that applicant's
products are a line of spices or seasonings sponsored by or
authorized by registrant and in the Nantucket style, for
use with registrant's seafood.6 Under these circumstances,
5 In its request for reconsideration, applicant suggested that it
might withdraw the disclaimer and assert Section 2(f) acquired
distinctiveness as to Nantucket, but it did not do so.
6 The record includes web pages of applicant's (or of vendors who
sell applicant's products) that reveal applicant has a "Nantucket
rub" for seasoning seafood, and a "Nantucket inspired BBQ sauce."
And there are some other web sites where the usage could be
Ser No. 76475899
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it does not matter whether NANTUCKET carries with it a
certain cachet, for that would not prevent consumers from
drawing the association between applicant's and
registrant's products.
We are not persuaded that we should reach a different
conclusion by applicant's argument that spices and
seasonings are niche products in the "food industry" and
seafood is a more broad-based product category. Applicant
has admitted that its goods are "food-related and could be
used with seafood." Nor are we persuaded by applicant's
argument that the products have apparently been in
contemporaneous use for 14 years without any instances of
actual confusion being brought to applicant's attention.
We have no evidence on the ways in which the involved
products have been marketed and whether there have been any
meaningful opportunities for confusion. Nor have we had
the opportunity to hear from registrant about its
experience.
Even if we were to conclude that likelihood of
confusion is not certain, any doubt about the question must
be resolved in favor of registrant. See Kimberly-Clark
viewed as an attempt at trademark use or to indicate Nantucket
style dining (or both).
Ser No. 76475899
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Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227
USPQ 541 (Fed. Cir. 1985).
Decision: The refusal of registration under Section
2(d) is affirmed.