Southern Belle Frozen Foods, Inc.

Trademark Trial and Appeal Board

Oct 20, 1998

No. 74670815 (T.T.A.B. Oct. 20, 1998)

Paper No. 12
SIMMS/MD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Southern Belle Frozen Foods, Inc.
________
Serial No. 74/670,815
_______
Arthur G. Yeager for Southern Belle Frozen Foods, Inc.
Jennifer D. Richard, Trademark Examining Attorney, Law
Office 101 (R. Ellsworth Williams, Managing Attorney)
_______
Before Simms, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Southern Belle Frozen Foods, Inc. (applicant), a
Florida corporation, has appealed from the final refusal of
the Trademark Examining Attorney to register the mark
SEAFOOD ROYALE for “frozen seafood, namely uncooked crab
based seafood blend in a natural crab shell to be served
after cooking by the purchaser as an appetizer or several
[sic, should be “served”] as an entree, excluding any
packaged cooked meals.”1 The Examining Attorney has refused

1 Application Serial No. 74/670,815, filed May 8, 1995, claiming
use in commerce since June 1988. In the original application,
Ser No. 74/670,815
2
registration under Section 2(d) of the Act, 15 USC
†1052(d), on the basis of Registration No. 672,988, issued
January 20, 1959, on the Supplemental Register, for the mark
SHRIMP ROYALE for “packaged cooked meal consisting of fried
shrimp, potatoes, sauce and a muffin or roll.” The
registration, issued to Chicken Delight, Inc., has been
renewed.
Briefly, the Examining Attorney argues that applicant’s
mark SEAFOOD ROYALE and the registered mark SHRIMP ROYALE
have similar commercial impressions because both contain
either the broad generic term “SEAFOOD” or a specific type
of seafood (“SHRIMP”) as well as the term ROYALE. The
Examining Attorney argues that, not only is it proper to
give more or less weight to a feature of a mark as long as
the ultimate conclusion is based on a consideration of the
marks in their entireties, but also applicant here has
admitted that the dominant element of its mark is the term
ROYALE. Brief, 5. Words, such as “seafood” and “shrimp,”
which are generic, may be accorded less weight, the
Examining Attorney argues, in the likelihood-of-confusion
analysis because consumers will not attribute any source-
indicating significance to those words. The Examining
Attorney also argues that the respective goods are closely

applicant disclaimed the word “SEAFOOD” apart from the mark, and
alleged that its mark has become distinctive of its goods as a
Ser No. 74/670,815
3
related food items. In this regard, the Examining Attorney
argues that the description of goods in the cited
registration is broad enough to include goods such as
packaged convenience meals sold in supermarkets and grocery
stores. The Examining Attorney has made of record copies of
third-party registrations which, according to the Examining
Attorney, demonstrate that the same manufacturer may offer
both complete seafood meals with side dishes as well as
items such as individual seafood entrees.
Applicant, on the other hand, argues that its mark is
readily distinguishable from the registered mark and that,
in addition, registrant’s goods are sold only in
registrant’s restaurants.
Upon careful consideration of this record and the
arguments of the attorneys, we believe that confusion is
likely. As the Examining Attorney has pointed out, the
goods being compared need not be identical or directly
competitive in order for likelihood of confusion to be
found—-they need only be related in some manner, or the
conditions surrounding their marketing be such, that they
could be encountered by the same purchasers under
circumstances that, because of the similarities of the
marks, could give rise to the mistaken belief that they come
from the same source. See In re Albert Trostel & Sons Co.,

result of substantially exclusive and continuous use in commerce
Ser No. 74/670,815
4
29 USPQ2d 1783 (TTAB 1993). Here, applicant’s frozen
uncooked seafood and registrant’s packaged cooked meal
featuring fried shrimp are, we believe, commercially related
products that could well be sold in the same supermarkets
and grocery stores to the same class of purchasers. In this
regard, as the Examining Attorney argues, the identification
in the registration is not limited with respect to channels
of trade. Accordingly, we must presume that registrant’s
packaged cooked meals includes goods of all such types sold
in all normal channels of trade for those goods, including
packaged pre-cooked dinners sold in the frozen food sections
of grocery stores and supermarkets. See In re Elbaum, 211
USPQ 639 (TTAB 1981). Similarly, applicant’s frozen
uncooked seafood may be sold in frozen food sections of
grocery stores and supermarkets. Although not specifically
introduced for this purpose, some of the third-party
registrations also tend to show that both cooked and
uncooked food may come from the same source (for example,
“fresh, frozen, canned, and smoked seafood”). See In re
Donnay International, S.A., 31 USPQ2d 1953 (TTAB 1994); In
re Albert Trostel & Sons Co., supra; and In re Mucky Duck
Co., 6 USPQ2d 1467 (TTAB 1988). As the Examining Attorney
notes, these third-party registrations suggest that the
goods involved here may emanate from the same source. We

for five years preceding the filing date of the application.
Ser No. 74/670,815
5
also note that both applicant’s frozen seafood product and
registrant’s packaged shrimp meal are relatively inexpensive
items that are purchased by ordinary consumers without a
great deal of care.
Turning then to the marks, each mark begins with a
generic word and is followed by the word ROYALE. While the
marks obviously differ in the generic element of each mark,
we are in agreement with the Examining Attorney that
consumers familiar with registrant’s SHRIMP ROYALE packaged
shrimp meal may well conclude that applicant’s SEAFOOD
ROYALE frozen crab product is a new line of seafood from the
maker of the SHRIMP ROYALE product. If we had any doubt on
this matter, that doubt must be resolved in favor of the
registrant and prior user.2

2 With respect to the comments made by the dissent, we offer the
following: Preliminarily, the Act itself, the Board and the
courts have consistently referred to the subject matter of a
Supplemental Register registration as a “mark.” See, for
example, Section 23 of the Act (“All marks capable of
distinguishing applicant’s goods or services…may be registered on
the supplemental register…”) and In re The Clorox Co., 578 F.2d
305, 198 USPQ 337, 340 (CCPA 1978)(“We conclude, therefore, that
a mark registered on the Supplemental Register can be used as a
basis for refusing registration to another mark under §2(d) of
the Act.”). See also Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039, 1042 n. 2 (Fed. Cir. 1990). As noted above,
the registration issued almost 40 years ago and has been renewed.
Second, the Examining Attorney never refused registration of
applicant’s mark under §2(e)(1), but, in the original
application, applicant stated that its mark had acquired
distinctiveness as the result of substantially exclusive and
continuous use for five years preceding the filing of the
application. That statement has been entered and apparently
would appear on any registration which might issue.
Next, the information provided by the dissent concerning the
derivation of the term “royale” is given in the etymology of the
Ser No. 74/670,815
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word “royale,” not its definition. This word is defined in
Webster’s Third New International Dictionary Unabridged (1976) as
1: an egg custard cooked and set in a mold,
cut into various shapes when cold, and added
as a garnish to clear soups 2: a changement
de pied with a beating together of the legs
while in the air
On this record, therefore, we cannot agree that “royale” is a
“descriptive laudatory word.”
The full sentence, quoted in part by the dissent, from In re
Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975), and quoted by us
in In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB 1984),
is:
That is, terms falling within the former
category [merely descriptive or highly
suggestive terms] have been generally
categorized as “weak” marks, and the
scope of protection extended to these
marks has been limited to the substantially
identical notation and/or to the subsequent
use and registration thereof for substan-
tially similar goods. (Emphasis added)
In Hunke & Jochheim, the Board was not laying down a different
rule for finding likelihood of confusion in cases involving
descriptive or suggestive marks, or marks on the Supplemental
Register. Rather, the Board was merely observing that, for such
marks, the scope of protection is, in the absence of other
considerations, more limited than with arbitrary or coined marks.
See also Clorox, 198 USPQ at 341 (“Appellant next posits a
requirement that citation of marks on the Supplemental Register
under §2(d) be limited to marks identical to that sought to be
registered. No reason exists, however, for the application of
different standards to registrations cited under §2(d). The
level of descriptiveness of a cited mark may influence the
conclusion that confusion is likely or unlikely…”) and In re
Smith and Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994)(“Because in
most cases marks are registered on the Supplemental Register
because they are descriptive, the scope of protection accorded to
them has been consequently narrow, so that likelihood of
confusion has normally been found only where the marks and goods
are substantially similar.”).
In re Texas Instruments Inc., 193 USPQ 678, 679 (TTAB 1976),
involving the mark “COPPERCLAD,” the case seemed to turn on the
differences in the goods and the sophistication of the
purchasers, not the marks, which were very similar (“It would
appear…that we are concerned with distinctly different goods
which will normally be purchased as a result of different
motivations and under different conditions and circumstances by
individuals who would fall within the category of discriminating
Ser No. 74/670,815
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Decision: The refusal of registration is affirmed.
R. L. Simms
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Hanak, Administrative Trademark Judge, dissenting:
It is the position of the Examining Attorney that the
“term”3 SHRIMP ROYALE and the mark SEAFOOD ROYALE “both

purchasers that normally buy with care after an assessment of
all sources of supply.”)
Finally, because the general public is, obviously, unaware
of the register on which a mark they encounter is registered, it
is worth noting what the Court said in Clorox, 198 USPQ at 340:
That the decision respecting likelihood of
confusion is made in the PTO by comparing
an applicant’s mark and the description of
his goods with the registered marks on file
in the PTO, and the goods described in the
registrations of those marks, should not lead
to the notion that the locus of potential con-
fusion is in the files of the PTO. The confu-
sion sought to be prevented by the statute is
not that of examiners, lawyers, board members,
or judges. Confusion is likely, if at all, only
in the marketplace, where marks are used. The
public is both unaware of, and distinctly dis-
interested in, whether a mark is registered on
either register.
3 “A word, symbol or device on the Supplemental Register is not,
strictly speaking, a ‘mark.’ … [Rather, it] is only ‘capable’ of
someday becoming a ‘mark’ upon the acquisition of secondary
meaning.” 2 J. McCarthy, McCarthy on Trademarks and Unfair
Competition Section 19:37 at pages 19-70 to 19-71 (4th ed. 1998).
Ser No. 74/670,815
8
consist of a descriptive term relating to seafood along with
the arbitrary term ROYALE.” (Office Action No. 3, page 2).
As applied to applicant’s goods and registrant’s goods, the
word “royale” is not arbitrary, but rather it is a
descriptive laudatory word. The word “royale” is listed in
English dictionaries as the feminine form of the French (and
English) word “royal.” The listing for “royale” makes
explicit reference to the definition of “royal” by stating
“more at ‘royal.”’ The word “royal” is in turn defined as
meaning “worthy of royalty: magnificent.” See Webster’s
Third New International Dictionary (1976) at page 1982.
Indeed, contradicting her earlier contention that the word
“royale” is arbitrary, the Examining Attorney at page 3 of
her brief notes that this word “evokes thoughts of royalty.”
In light of the above, I believe that most United States
consumers would view “royale” as a fancy form of “royal,”
and not as a word meaning only “egg custard” or “changement
de pied,” as contended by the majority in footnote 2.
Moreover, the term “royale” is also defined as a “name given
to different [food] preparations.” The Encyclopedia of
Food, Wine & Cookery (1961) (emphasis added).
Based upon the foregoing, I am of the view that the
cited term SHRIMP ROYALE is clearly descriptive of a meal

Applicant, unlike registrant, established to the satisfaction of
the PTO that its term (SEAFOOD ROYALE) had acquired secondary
meaning and thus functioned as a trademark.
Ser No. 74/670,815
9
containing fried shrimp in that said term means “magnificent
shrimp.” If the word “royale” were truly arbitrary as
contended by the Examining Attorney and apparently the
majority, then the cited term SHRIMP ROYALE would not have
been relegated to the Supplemental Register, but rather
would have been permitted to be registered on the Principal
Register, with a disclaimer of SHRIMP.
It has been stated that the word “royal” is “frequently
used to indicate high quality,” and that “it has been
consistently held that trademarks will not ordinarily be
held confusingly similar solely because each of them
includes [the word ‘royal’].” Sears, Roebuck v. Hofman, 119
USPQ 137, 138 (CCPA 1958). This Board also stated that the
word “royal” is indeed laudatory and is, at most, a weak
source identifier. In re Blanger, Inc., 218 USPQ 742, 743
(TTAB 1983). Professor McCarthy explains that laudatory
terms are “regarded as being descriptive.” 1 J. McCarthy,
McCarthy on Trademarks and Unfair Competition Section 11:17
at page 11-21 (4th ed. 1998). Of course, such descriptive
terms are weak source identifiers and accordingly are
entitled to a very limited scope of protection. 3 J.
McCarthy, McCarthy on Trademarks and Unfair Competition
Section 23:48 at pages 23-103 to 23-105 (4th ed. 1998).
Given the descriptive laudatory nature of the words
“royal” and “royale,” it is not surprising that they have
Ser No. 74/670,815
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been frequently used by others for a wide array of products
including seafood items. In this regard, it is noted that
in the first Office Action, the Examining Attorney cited not
only the term SHRIMP ROYALE as a bar, but also the mark
ROYAL BRAND registered for “frozen seafood; namely, shrimp”
as a bar to registration. Registration No. 1,804,637. The
registrations of ROYAL BRAND and SHRIMP ROYALE are owned by
different companies. In the second Office Action, the
Examining Attorney, without any explanation whatsoever,
withdrew the cite to the registration for ROYAL BRAND.
In view of the fact that the cited term SHRIMP ROYALE
consists of a generic term (SHRIMP) combined with a clearly
descriptive laudatory term (ROYALE), said term is entitled
to an extremely narrow of scope of protection. As a
practical matter, this narrow scope of protection means that
a clearly descriptive term registered on the Supplemental
Register will prevent the registration only of a subsequent
mark which is “substantially identical and [is] used on
substantially identical goods or services.” 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, Section 19:37
at page 19-71 (4th ed. 1998).
To be clear, the Court in Clorox stated that “no reason
exists” for applying different likelihood of confusion
standards based on whether the cited mark is on the
Principal Register or the Supplemental Register other than
Ser No. 74/670,815
11
the cited mark’s “level of descriptiveness.” In re The
Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978).
However, in affirming a refusal to register the mark ERASE
on the Principal Register based upon an existing
registration of the term STAIN ERASER on the Supplemental
Register, the Clorox Court went on to note that the goods
were absolutely identical (stain removers) and that “the
terms ERASE and ERASER are virtually indistinguishable and
the addition of the descriptive word STAIN to ERASER is
insufficient to distinguish between the marks as a whole and
to avoid confusion.” In re The Clorox Co., 198 USPQ at 341.
In similar fashion, the Court affirmed a refusal to register
ROPELOK on the Principal Register based upon a pre-existing
registration of ROPELOCK on the Supplemental Register noting
that the mark and term were virtually identical and that
both were used on “closely related safety equipment.” In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986).
This Board has also accorded a very limited scope of
protection to descriptive marks registered on the
Supplemental Register. Indeed, Judge Simms has acknowledged
the fact that “the Board, too, has given limited protection
to descriptive marks registered on the Supplemental
Register.” In re Central Soya Co., Inc., 220 USPQ 914, 917
(TTAB 1984). Quoting from an earlier Board decision, Judge
Ser No. 74/670,815
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Simms went on to note that “the scope of protection extended
to these [descriptive] marks [registered on the Supplemental
Register] has been limited to the substantially identical
notation … for substantially similar goods.” Central Soya,
220 USPQ at 917 (Registration of LA POSADA on the
Supplemental Register for lodging and restaurant services
did not bar registration of POSADA on the Principal Register
for Mexican style prepared frozen enchiladas). See also In
re Texas Instruments Inc., 193 USPQ 678 (TTAB 1976)
(Registration of COPPERCLAD on the Supplemental Register for
copper coated electrodes did not bar registration of COPPER
CLAD on the Principal Register for copper wire); In re Hunke
& Jochheim, 185 USPQ 188 (TTAB 1975) (Registration of
DURABUL on the Supplemental Register for stationery articles
did not bar registration of HIG-DURABLE on the Principal
Register for stationery articles).
In my view, the mark SEAFOOD ROYALE and the term SHRIMP
ROYALE are by no means substantially identical. At a
minimum, their differences are far greater than the
differences between COPPERCLAD and COPPER CLAD, and POSADA
and LA POSADA.
In addition, applicant’s goods and registrant’s goods
are by no means substantially identical. Indeed, they are
only minimally related in that they both merely contain a
seafood item, albeit a different seafood item. Applicant’s
Ser No. 74/670,815
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goods are “frozen seafood, namely uncooked crab based
seafood blend in a natural crab shell to be served after
cooking by the purchaser as an appetizer or served as an
entrée, excluding any packaged cooked meals.” (emphasis
added). Registrant’s goods are “packaged cooked meal
consisting of fried shrimp, potatoes, sauce and a muffin or
a roll.” (emphasis added). Thus, applicant’s goods and
registrant’s goods differ in a number of respects. First,
registrant’s goods are a complete meal consisting of fried
shrimp, potatoes, sauce and a muffin or roll. Applicant’s
goods are a single item, namely, a crab based seafood blend
in a crab shell. Second, registrant’s goods are cooked.
Applicant’s goods are uncooked and must be cooked by the
purchaser in order to be safely consumed.
Given the fact that registrant’s term SHRIMP ROYALE
consists of a generic term (SHRIMP) and a clearly
descriptive laudatory term (ROYALE), I would hold that
SHRIMP ROYALE is entitled to an extremely narrow scope of
protection such that its registration on the Supplemental
Register should serve to prevent the registration of only
substantially identical marks for substantially identical
goods. In this case, registrant’s term and goods are by no
means substantially identical to applicant’s mark and goods.
Accordingly, I would reverse the refusal to register.
Ser No. 74/670,815
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E. W. Hanak
Administrative Trademark
Judge, Trademark Trial
and Appeal Board