Parrish Enterprises, Ltd.

Trademark Trial and Appeal Board

Jul 27, 2006

No. 76572755 (T.T.A.B. Jul. 27, 2006)

Mailed:
27 July 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Parrish Enterprises, Ltd.
________

Serial No. 76572755
_______

Nicholas D. Rouse of Dunlap, Codding & Rogers, P.C. for
Parrish Enterprises, Ltd.

Anne T. Madden, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 29, 2004, applicant Parrish Enterprises,
Ltd. filed an application to register the mark SEEKER in
standard character form on the Principal Register for
“fishing rods and fishing rod blanks" in Class 28. The
application alleges a date of first use anywhere and a date
of first use in commerce of June 1985.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) on the ground that it is likely to
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76572755
2
cause confusion with a prior registration for the mark FISH
SEEKER in typed or standard character form for “fishing
equipment namely, a device attached to fishing rods to
determine depth" in Class 28.1 The registration contains a
disclaimer of the term “Fish.”
The examining attorney argues (Brief at unnumbered p.
5) that:
the goods overlap as both applicant and registrant are
providing sporting goods used for fishing… It is
highly likely that applicant will sell its fishing
rods and blanks in the same sporting goods stores as
registrant in addition to advertising and selling
online. Registrant’s depth devices are attached to
fishing rods. Clearly, they can be used with
applicant’s goods.

In addition, the examining attorney also asserts that as
“both are used with fishing equipment, both marks may
suggest that a user is seeking the best fish in the water.”
Brief at unnumbered p. 4.
On the other hand, applicant argues that “the term
SEEKER alone connotes an image of someone or something that
is seeking ‘something.’ In connection with fishing that
‘something’ may be landing a ‘trophy’ sized fish,
experiencing the sensation of hooking and fighting a fish,
or even finding a few hours of peace and quiet.” Brief at

1 Registration No. 1,538,297, issued May 9, 1989. Affidavits
under Section 8 and 15 have been accepted or acknowledged.
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pp. 3-4. In contrast, applicant submits that registrant’s
mark “connotes the image of an object traveling through
water to the exact depth and location of a fish waiting to
be caught.” Brief at 3. Furthermore, applicant argues
that purchasers of the goods will exercise a great deal of
care, that “the cost of fishing rods offered by Applicant
range from $90.00 to $800” (Brief at 4); that registrant’s
goods “are far less expensive and sold at a price of
approximately $5.00” (Brief at 5); that there has been no
actual confusion; and that applicant has sold hundreds of
thousands of its items (203,233 fishing rods and 161,564 of
its fishing rod blanks) for sales grossing $14,200,192 for
fishing rods and $3,975,630 for fishing rod blanks. See
Declaration of James Parrish.
After the refusal was made final, applicant filed this
appeal.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
Ser No. 76572755
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that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing the similarities and
dissimilarities of the marks. The marks are SEEKER and
FISH SEEKER. Inasmuch as the marks are in typed or
standard character form, the only difference in the marks
is the presence of the word “Fish” in registrant’s mark.
The marks are otherwise identical because they both contain
the same word “Seeker.” Registrant has disclaimed the term
“Fish” and its goods are fishing equipment that is attached
to a fishing rod so it is a term with a highly descriptive
meaning when used on these goods. Such highly descriptive
terms are often given little weight in likelihood of
confusion determinations. “Regarding descriptive terms,
this court has noted that the ‘descriptive component of a
mark may be given little weight in reaching a conclusion on
the likelihood of confusion.’” Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985). See also In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
Ser No. 76572755
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(Fed. Cir. 2004) (“With respect to GOLD, the Board
determined that the term denotes a premium quality, a
descriptive term offering little to alter the commercial
impression of the mark.” Court found that as a result the
board had good reason to discount the term’s significance);
and In re Code Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (Disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
While we have considered the marks as a whole, the
presence of the term “Fish” in the registrant’s mark does
not have much trademark significance. Both applicant’s and
registrant’s goods are fishing equipment and the object of
both fishing rods and fishing devices is to help fisherman
catch fish. In this case, we find that the term “Fish” is
more likely to reinforce the similarities of the marks
rather than to give purchasers a basis to distinguish the
mark. Indeed, applicant itself argues that: “the term
SEEKER alone connotes an image of someone or something that
is seeking ‘something.’ In connection with fishing that
‘something’ may be landing a ‘trophy’ sized fish.” Brief
at 3. Applicant’s argument that “Seeker” alone connotes
seeking something like a trophy-size fish would be very
similar to the connotation of the cited registered mark
Ser No. 76572755
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FISH SEEKER, which can also have the connotation of seeking
a fish, including a trophy-sized fish.
While there is a difference between the marks’ sound
and appearance created by the additional word “Fish” in
registrant’s mark, the identical nature of the dominant
word “Seeker” would minimize this difference. Furthermore,
their meanings and commercial impressions would be very
similar and, to some degree, identical. While applicant
argues that the registered mark is highly suggestive, there
is little evidence other than the mark itself that supports
this argument.2 Therefore, we conclude that the marks in
their entireties are very similar and this factor favors a
conclusion that there is a likelihood of confusion. See
In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (Federal Circuit held that, despite
the addition of the words “The” and “Cafe” and a diamond-
shaped design to registrant’s DELTA mark, there was a
likelihood of confusion).

2 Applicant also argues that “FISH SEEKER when used with fishing
equipment is merely descriptive.” Brief at 3. We cannot
consider this argument because it would be an impressible attack
on the cited registration. In re Peebles Inc., 23 USPQ2d 1795,
1797 (TTAB 1992) (“Applicant's suggestion that registrant's mark
is descriptive may not be considered inasmuch as that allegation
comprises an attack on the validity of registrant's registration
which is not permitted in an ex parte appeal proceeding”).
Ser No. 76572755
7
Next, we address whether the goods of applicant and
registrant are related. Applicant’s goods are fishing rods
and fishing rod blanks and registrant’s goods are devices
attached to fishing rods to determine depth. Both
applicant’s and registrant’s goods are fishing equipment
and the identification of registrant’s goods clearly
indicates that its goods are designed to be used with
fishing rods. Applicant acknowledges (Brief at 4), and we
agree, that the “question of likelihood of confusion must
be determined on the basis of the goods set forth in
Applicant’s application and those in the cited
registration.” Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
class of purchasers to which the sales of goods [or
services] are directed”). See also Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
Ser No. 76572755
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descriptions of goods”). We also do not read limitations
into a registration’s identification of goods or services.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”).3
Therefore, while applicant argues that its goods can
cost up to $800 and registrant’s goods may cost as little
as $5, there are no limitations in either applicant’s and
registrant’s identifications of goods. Therefore, we must
presume that applicant’s and registrant’s fishing items
encompass goods in all price ranges including less
expensive fishing rods and fishing rod blanks and more
expensive fishing devices to determine depths. Also, if as
applicant suggests, registrant’s goods are relatively
inexpensive (approximately $5), this fact would increase

3 Applicant has invited “the Board to visit Applicant’s website”
(Brief at 4). In its Reply Brief at 1, applicant has explained
that it previously invited the examining attorney to visit the
site. “A mere reference to a website does not make the
information of record. In order to review the facts in this
case, there should be evidence in the record” In re Planalytics
Inc., 70 USPQ2d 1453, 1457 (TTAB 2004). Moreover, as discussed
above, applicant’s website would not limit how we consider its
goods that are identified simply as fishing rods and fishing rod
blanks.
Ser No. 76572755
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the likelihood of confusion.4 At that point, fisherman may
be inclined to make impulse purchases of these items and
assume that these goods are related to the source of
applicant’s fishing rods inasmuch as these devices are used
with applicant’s fishing rods.5
Furthermore, there are no limitations on prospective
purchasers and there is no evidence that would support an
argument that purchasers of fishing equipment are
sophisticated purchasers. We must presume that these
purchasers would include all types of fisherman including
those new to the sport and those who have only a limited
interest in fishing. We also add that “even careful
purchasers are not immune from source confusion.” In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
These fishermen would likely be confused about the source

4 With its Reply Brief, applicant submitted a printout from the
USPTO’s assignment records that shows the current owner of the
cited registration. We will consider this evidence that simply
updates the status of the cited registration. See TBMP
§ 704.03(b)(1)(A) (2d ed. rev. 2004). We will also consider
applicant’s submission of what is apparently a webpage from
registrant’s website. It is very similar to a webpage that
applicant submitted earlier and that the examining attorney in
her brief now attacks because it does not clearly refer to the
registrant.
5 The examining attorney also submitted several registrations to
show that the same entities have registered an identical mark for
fishing rods and various fishing devices. See, e.g.,
Registration No. 1,455,477 (fishing equipment including, fish
attracting devices, bait, and rods), No. 2,346,450 (fishing rods,
lures, reels, rod holders, fly lines and gaff holders), and No.
2,436,312 (fishing rods and fishing hand tools).
Ser No. 76572755
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of fishing rods and fishing devices attached to fishing
rods that are marketed under marks as similar as
applicant’s and registrant’s.
Applicant’s final argument is that there has been no
actual confusion between the marks in this case. Applicant
argues that the marks “have been simultaneously used in the
fishing equipment market for nearly twenty-one (21) years…
However, despite ample time and opportunity for confusion
to have arisen, Applicant is unaware of any evidence of any
actual confusion.” Brief at 6. Applicant points to more
than $18 million in sales of its fishing rods and fishing
rod blanks over that period and more than $800,000 in
advertising. Applicant also cites the case of In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) as support
for its argument that even in ex parte cases, a lack of
actual confusion can be an important factor in determining
that there is no likelihood of confusion.
We begin by noting that the test is likelihood of
confusion and that the lack of actual confusion does not
normally indicate that there is no likelihood of confusion.
With regard to the seventh DuPont factor, we agree
with the Board that Majestic'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) (stating that self-serving testimony of
appellant's corporate president's unawareness of
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instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 CCPA 981, 340 F.2d
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205. See also Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892
(Fed. Cir. 1991).
The General Motors case is clearly distinguishable
from the facts of this case.
Applicant has submitted evidence sufficient to
demonstrate that for automobiles, its "GRAND PRIX"
mark has achieved a degree of renown. Besides sample
advertisements and representative stories which
mention or discuss applicant's "GRAND PRIX"
automobiles, the record reveals that during a 28-year
period, 2,695,434 of such cars were produced by
applicant. Beginning with 30,195 automobiles in the
1962 model year, production has ranged from a low of
16,542 vehicles in 1987 to a high of 288,430 vehicles
in 1977, with sales of 107,500 automobiles in 1989.
In this nearly 30-year era, production of between
50,000 and 100,000 "GRAND PRIX" cars was accomplished
12 times; production of between 100,000 and 200,000
was reached six times; and production in excess of
200,000 vehicles was achieved four times. Only on
six occasions has production been fewer than 50,000
cars annually, including the all-time low set in 1987.
The total production figures are significant since
they reflect the long-term availability of "GRAND
PRIX" automobiles in the marketplace and resulting
familiarity of the purchasing public with them. Sales
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and advertising thereof, it additionally appears, have
been continuous and national in scope. Given such
prominence, and the consequential renown achieved by
applicant's "GRAND PRIX" automobiles over a period
of approximately 30 years, it seems highly probable
that at least one instance of confusion with
registrant's "GRAND PRIX" replacement automotive parts
would have occurred. Yet, according to the affidavits
submitted by applicant, not one incident of actual
confusion has been reported…

Edward S. Lechtzin avers in his affidavit … (i) "in
the 27 years that PONTIAC GRAND PRIX vehicles have
been sold in the marketplace, no consumer has
contacted Pontiac Division, General Motors
Corporation, requesting information about TBC
Corporation's GRAND PRIX products"; (ii) "in over 27
years, no one at Pontiac Division, General Motors
Corporation, has been asked whether a buyer should use
these TBC GRAND PRIX products with their [sic] GRAND
PRIX automobile"; and (iii) "Pontiac Division, General
Motors Corporation, has received no inquiry in those
years concerning TBC Corporation's GRAND PRIX
products."

We recognize, of course, that the above is one-sided
inasmuch it provides only applicant's experience in
the marketplace and not that of registrant. Normally,
in the absence of a detailed consent agreement,
the registrant has no opportunity to be heard in an ex
parte proceeding of this type and the Board,
therefore, is not in a position to meaningfully assess
whether the claimed period of contemporaneous use
has provided ample opportunity for confusion to have
arisen.

General Motors, 23 USPQ2d at 1470 (footnote omitted).

The General Motors case involved an applicant that had
sold more than 2,000,000 vehicles. The evidence showed
that these vehicles were advertised on a national scale.
Under these circumstances, it was reasonable to conclude
that there was ample opportunity for confusion to occur
Ser No. 76572755
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and, therefore, the applicant’s assertion that there had
been no actual confusion was significant.
In the present case, the evidence is nowhere near as
persuasive. We have no specifics on the nature of
applicant’s advertising nor can we assume that there would
have been significant opportunities for the same consumers
to encounter both marks. Therefore, while we have
considered applicant’s evidence and its assertion in its
president’s declaration that there has been no actual
confusion, we cannot conclude that there is no likelihood
of confusion here. The marks FISH SEEKER and SEEKER are
very similar and the goods are very closely related. Under
these circumstances, confusion is likely.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered mark used in
connection with the identified goods under Section 2(d) of
the Trademark Act is affirmed.