Renming Cao

Trademark Trial and Appeal Board

Jul 8, 2013

No. 85466611 (T.T.A.B. Jul. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Renming Cao
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Serial No. 85466611
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John Alumit, Alumit IP for Renming Cao.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
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Before Seeherman, Kuczma, and Adlin, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Renming Cao, (“applicant”) appeals from the final refusal to register the
following stylized mark:
1

1 Application Serial No. 85466611 filed November 7, 2011, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use of the mark and first use in
commerce at least as early as October 5, 2011. The description of the mark states: “The
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for the following goods, as amended:2
Tinned fish; Canned fish; Fish fillets; Fish, not live;
Oysters, not live; Sardines; Salmon, not live; Tuna fish;
Processed seafood, namely, fish in Class 29.
The examining attorney issued a final refusal to register the mark pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the following registration
as a bar:
Registration No. 36126963
Mark: 4
For: Fish, namely, shrimps and prawns, soles, octopuses,
crabs in Class 29
Owner: Star Trade SA

mark consists of the stylized wording ‘SEVEN STAR’ with seven stars above the letter ‘R’
from small to large size, all of which [sic] surrounded by shadows.”
2 On October 12, 2012, applicant filed a Request to Divide out the following goods into a
separate application: “Canned fruits; Tinned fruits; Canned vegetables; Tinned vegetable
[sic]” in Class 29 and “Instant rice; parboiled rice, rice” in Class 30. A Notice of Divisional
Request Completed was issued on October 16, 2012, and the child application was assigned
Serial No. 85977850 which matured into Registration No. 4295839 on February 26, 2013.
3 Registration No. 3612696 issued April 28, 2009.
4 The mark is a stylized mark described in the application as follows: “The mark consists of
the colors white, red and blue, with the color white appearing in the background, the color
red appearing [sic] the outline of the largest star at the top corner of the number ‘7’ and in
the six smaller stars inside the number 7, and the color blue appearing in the outline of the
number 7 and in the words ‘PRIM STARS.’” The colors white, red and blue are claimed as a
feature of the mark.
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After the refusal was made final, applicant timely appealed. Applicant and
the examining attorney have filed briefs. For the reasons set forth below, the
refusal to register is reversed.
Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative 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 goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have considered these and any other
du Pont factors on which applicant and the examining attorney have submitted
evidence and argument.
A. Similarity of Goods, Channels of Trade and Classes of Consumers
We first consider the du Pont factor involving the similarity or dissimilarity
of applicant’s goods in relation to the goods in the cited registration and their
respective channels of trade and classes of consumers. It is well-settled that 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); In re Accelerate
s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012).
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The goods in the cited registration include: shrimps and prawns, soles,
octopuses and crabs. Applicant’s goods include inter alia: fish, oysters and salmon
(not live). To the extent that “soles” are a type of “fish,” applicant’s goods and the
goods in the cited registration overlap. In determining the similarity of applicant’s
and registrants’ goods, it is sufficient if likelihood of confusion is established for any
item encompassed by the identification of goods. See In re Wacker Neuson SE, 97
USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Additionally, there is abundant evidence that the non-overlapping goods in
the subject application are highly related to the goods set forth in the cited
registration. The examining attorney submitted excerpts from several third-party
fish market websites that offer products such as the fish, oysters and salmon
covered in applicant’s application as well as shrimp, octopus and crabs which are
recited in the cited registration.5 Thus, several of the items identified in applicant’s
application are related to the goods in the cited registration as they are the types of
products offered for sale by the same entities.
The relatedness of the products is also demonstrated by the 18 use-based,
third-party registrations submitted by the examining attorney. The registrations
recite both fish, including salmon (applicant’s goods), and shrimp, octopus and/or

5 See attachments to February 23, 2012 Office Action consisting of printouts from the
following websites: www.aircrabsusa.com, www.moreysmarkets.com,
www.pikeplacefish.com, www.brownetrading.com, www.fishex.com, and www.joepattis.com.
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crab (goods in cited registration).6 Although these registrations are not evidence
that the marks shown therein are in use or that the public is familiar with them,
they nonetheless have probative value to the extent they are based on use in
commerce and serve to suggest that the goods identified therein are of a kind which
may emanate from a single source under a single mark. See In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993).
Because the goods are in part identical and otherwise closely related, and
because neither applicant’s identification of goods nor the identification of goods
contained in the cited registration contain a limitation of any kind with respect to
consumers or channels of trade, we must presume that the goods move in the same
channels of trade and are sold to the same classes of consumers. See American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). In any event, the website
evidence submitted by the examining attorney confirms that the goods identified in
applicant’s application and the goods identified in the cited registration do in fact
move in the same channels of trade to the same classes of customers.

6 Copies of these third-party registrations were attached to the April 16, 2012 Office Action.
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Based on the legally identical and highly related nature of the goods set forth
in the application and cited registration, and the similar trade channels and classes
of customers, the du Pont factors of the similarity of the goods, trade channels and
customers favor a finding of likelihood of confusion.
B. Similarity of the Marks
We now turn to the du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
Both applicant’s mark and the cited mark are composite marks:

Looking at the marks, they differ in overall appearance. Both marks contain the
images of seven stars and the word “star/stars;” however, the stars and their
arrangement are different. The word “seven” in applicant’s mark also imparts a
different appearance from the large numeral “7” in the cited mark. Further, it is
not clear whether the “7” in the cited mark would be verbalized, or would simply be
viewed as a design element.
In evaluating similarities of composite marks containing both words and
design elements, the word portion is normally accorded greater weight in
determining whether the marks are similar because it would be more likely to be
impressed upon a purchaser’s memory and used by purchasers when requesting the
goods. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In
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re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011); In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); and In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Given the presentation of applicant’s mark, the dominant word portion of
applicant’s mark will be viewed as SEVEN STAR. The cited mark, on the other
hand, will be perceived as PRIM STARS or possibly PRIM STARS 7 due to the fact
that the words PRIM and STARS are shown in the same color, size and font.
Further, in considering the overall commercial impression of the marks, we
recognize 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).
The first word in the cited mark is PRIM, a recognizable word that is
arbitrary when used in connection with registrant’s seafood items. The
presentation of the word PRIM in the color blue followed by an oversized and
stylized numeral 7 and then the word STARS in the same size, font and color as the
word PRIM, creates the impression that PRIM and STARS should be read in
combination, resulting in the mark being understood and pronounced as PRIM
STARS.
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Applicant’s SEVEN STAR mark creates a different impression from the cited
mark. It does not begin with the word “prim” or any similar word. Additionally,
because the word “star” in applicant’s SEVEN STAR mark is singular, it more likely
connotes a type of rating system rather than connoting seven celestial bodies. Stars
have long been utilized in rating the quality of various products and services, with a
greater number of stars indicating a higher quality. For example, a “5 star” rating
is commonly used to identify something of top quality. Thus, the use of the word
“star” in the singular sense in applicant’s mark is significant as it indicates that
applicant’s products have a “seven star” rating. While it is generally true that the
addition of a letter “s” at the end of a word is not sufficient to avoid a likelihood of
confusion, in this instance the absence of the letter “s” yields a different commercial
impression. This difference in commercial impression together with the distinct
appearances of the marks renders the marks dissimilar.
Conclusion
While applicant’s identified goods and those in the cited registration are
identical in part and otherwise related, the differences between the marks in overall
appearance, sound, meaning and commercial impression are sufficient to avoid the
likelihood of confusion. As recognized in Kellogg Co. v. Pack’em Enterprises Inc.,
951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991), there is no reason why a
single du Pont factor, such as in this case the dissimilarity of the marks in their
entireties, cannot be dispositive of the issue of likelihood of confusion.

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Decision: The refusal to register applicant’s mark under § 2(d) of the
Trademark Act based on a likelihood of confusion with the mark shown in
Registration No. 3612696 is reversed.