Pacific Sea Foods Co.v.Emerald Seafoods, Inc.

Trademark Trial and Appeal Board

Jun 6, 1997

OPP (T.T.A.B. Jun. 6, 1997)

THIS DISPOSITION IS NOT CITABLE June 6, 1997
AS PRECEDENT OF THE TTAB
Paper No. 39
EWH/BAG
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Pacific Sea Foods Company
v.
Emerald Seafoods, Inc.
_____
Opposition No. 84,899
to application Serial No. 73/818,728
filed on August 11, 1989
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Matthew F. Jodziewicz of Arant, Kleinberg, Lerner & Ram for
Pacific Sea Foods Company
James A. Walker of Williams, Kastner & Gibbs for Emerald
Seafoods, Inc.
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Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Emerald Seafoods, Inc. (applicant) seeks registration
of EMERALD SEAFOODS INCORPORATED and design in the form
shown below for "seafood." At the request of the Examining
Attorney, applicant disclaimed the exclusive right to use
SEAFOODS INCORPORATED apart from the mark as shown below.
Opposition No. 84899
2
The application was filed on August 11, 1989 with a claimed
first use date of September 13, 1988.

Pacific Sea Foods Company (opposer) filed a notice of
opposition alleging that since at least January 1945 opposer
had made continuous use of its mark EMERALD BRAND for
seafood, and further alleging that "registration of
applicant's mark would cause members of the purchasing
public to assume, contrary to the facts, that opposer's
goods are associated with, sponsored or endorsed by, or in
some way connected with applicant." (Notice of opposition
paragraphs three and four.)
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition, and in particular,
denied the allegations contained in paragraphs three and
four of the notice of opposition.
Opposer has made of record the depositions of Robert
Kronick (a supervisor employed by opposer from 1984 to
Opposition No. 84899
3
December 1986); Frank S. Lauro, Jr. (owner and manager of
opposer since December 1986); and Frank Mateljan (a
competitor of opposer who has known of opposer since the mid
1950's). As explained in this Board's order of June 14,
1996, applicant has made of record no evidence.
Both parties filed briefs. Neither party requested a
hearing. Applicant attached to its brief two exhibits: (1)
an unsigned, incomplete draft "consent agreement"
purportedly between opposer and applicant; and (2) the
declaration of Eric Maisonpierre (sales manager of
applicant). Both exhibits are untimely in that they were
not (even if they could have been) made of record during
applicant's testimony period. Moreover, the unsigned,
incomplete draft "consent agreement" purportedly between the
parties is, as more fully explained in this Board's order of
June 14, 1996, inadmissible as evidence pursuant to Federal
Rule of Evidence 408. As for the declaration of Mr.
Maisonpierre, in inter partes proceedings before the Board,
declarations or affidavits do not constitute evidence unless
the parties so stipulate, which they have not. Trademark
Rule 2.123(b).
There are two issues in this proceeding: (1) priority
of use and (2) likelihood of confusion.
Opposer has established that it has used the marks
EMERALD and EMERALD BRAND on boxes and bags containing
frozen halibut since the mid 1950's. This use has continued
to the present. Opposer sells EMERALD BRAND frozen halibut
Opposition No. 84899
4
to seafood brokers and restaurants. Since December 1986,
opposer has sold other types of fish under its EMERALD BRAND
mark including swordfish, salmon and tuna.
Because applicant has made of record no evidence, its
earliest "proven" first use date is the filing date of its
application, namely, August 11, 1989. In any event,
opposer's first use of its EMERALD BRAND trademark for
seafood long predates even applicant's claimed first use of
its mark EMERALD SEAFOODS INCORPORATED and design, namely,
September 13, 1988.
Because priority of use favors opposer, we turn to the
issue of likelihood of confusion. In any likelihood of
confusion analysis, two key considerations are the
similarities of the goods and the similarities of the marks.
Federated Foods, Inc. v. Fort. Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry
mandated by section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.").
In this case, the goods are legally identical.
Applicant's own chosen description of goods is simply
"seafood." Obviously, the term "seafood" encompasses all
types of seafood including halibut.
Turning to a consideration of the marks, we note that
"when marks would appear on virtually identical goods or
services, the degree of similarity [of the marks] necessary
to support a conclusion of likely confusion declines."
Opposition No. 84899
5
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In this case, the word portions of both marks begin
with the word EMERALD. Moreover, the word EMERALD is the
only true source identifying word in the word portions of
both marks. The word BRAND in opposer's mark does not
indicate source. The words SEAFOODS INCORPORATED in
applicant's mark have been quite properly disclaimed. The
word SEAFOODS is simply a generic term for applicant's
goods. Moreover, the word INCORPORATED merely describes
applicant's legal status. Thus, the only source identifying
feature of opposer's word mark and the word portion of
applicant's mark is the identical, arbitrary term EMERALD.
While it is true that applicant's mark contains a design, we
note that this design depicts an emerald and two fish. The
depiction of an emerald serves to emphasize the word EMERALD
in the word portion of applicant's mark. Moreover, the
depiction of two fish merely reiterates the nature of
applicant's goods, "seafood."
In short we find that the use of opposer's mark and
applicant's mark on identical goods is likely to result in
confusion.
Opposition No. 84899
6
Decision: The opposition is sustained.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board