Starkist Co.

Trademark Trial and Appeal Board

Jun 11, 2009

No. 77290085 (T.T.A.B. Jun. 11, 2009)

Mailed: June 11, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Starkist Co.1
________

Serial No. 77290085
_______

David V. Radak of Eckert Seamans Cherin & Mellot, LLC for
Del Monte Corp. and Starkist Co.

Alex Seong Keam, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Drost, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Starkist Co. is the owner of an application to
register on the Principal Register the mark GOURMET CHOICE
in standard characters for “seafood” in International Class
29.2

1 Assignment of the involved application from original applicant
Del Monte Corp. to Starkist Co. was recorded with the Assignment
Branch of this Office on October 16, 2008 at Reel 3871/Frame
0607.
2 Application Serial No. 77290085 was filed on September 27,
2007, based upon applicant’s assertion of December 31, 1998 as
the date of first use of the mark anywhere and in commerce for
the goods. GOURMET is disclaimed apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77290085
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark shown below, previously
registered on the Principal Register for “fresh and frozen
salmon” in International Class 29,3 as to be likely to cause
confusion.

When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Evidentiary Objection and Request for Remand
As a preliminary matter, we note that applicant
submitted for the first time with its brief copies of
several third-party registrations assertedly to show that

3 Registration No. 1457628 issued on September 15, 1987 with a
disclaimer of LTDA and SALMONES, and the following translation:
The English translation of the word “SALMONES ANTARTICA LTDA.” in
the mark is “ANTARTICA SALMONS LTD.” Section 8 affidavit
accepted; Section 15 affidavit acknowledged. Renewed.

Ser No. 77290085
3
“gourmet” and “choice” are weak as applied to seafood and
other foods. Applicant stated the following: “Applicant
notes that this evidence was not submitted prior to appeal.
Applicant has a new attorney who did not prosecute this
application before the appeal. In the event that the Board
does not consider this evidence, Applicant requests the
Board to suspend this appeal and remand the application for
further examination.” (Brief, p. 2, fn. 1).
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of the
appeal. In that regard, the file of the involved
application indicates that applicant filed its revocation
of previous power of attorney and appointment of the above-
noted attorney of record on October 17, 2008. The
examining attorney issued his final Office action on June
25, 2008, affording applicant six months to respond
thereto. Applicant filed its notice of appeal on December
23, 2008. The Board issued an order acknowledging the
notice of appeal the same day, allowing applicant until
February 21, 2009 to file its brief. Applicant filed its
brief on February 19, 2009. Applicant’s present counsel
thus had from October 17, 2008 until December 26, 2008 in
which to file a request for reconsideration of the
examining attorney’s June 25, 2008 final refusal to
Ser No. 77290085
4
register that is the subject of the instant appeal. See
Trademark Rule 2.64(b). In addition, applicant’s present
counsel had an additional sixty days from its December 23,
2008 filing of its notice of appeal in which to request
remand of the involved application for consideration of the
evidence it attached to its brief on appeal. See Trademark
Rule 2.142(d). See also TBMP §1207.02 and the authorities
cited therein.
Thus, applicant’s current counsel of record had a two-
month opportunity to file a request for reconsideration,
accompanied by the new evidence, prior to the appeal, as
well as an additional two months to request remand of the
application to submit additional evidence after appeal.
What is not acceptable is for applicant simply to submit
evidence with its appeal brief, without making any prior
attempt to introduce such evidence despite having ample
time and the two above-noted mechanisms in which to do so.
Applicant’s submission of the evidence with its appeal
brief is untimely. Accordingly, the exhibits accompanying
applicant’s appeal brief have not been considered in
reaching our decision.4

4 We hasten to add, however, that even if we had considered this
evidence, we would not reach a different result in this appeal
because applicant’s evidence pertains solely to the strength of
the mark in the cited registration, which is only one factor in
Ser No. 77290085
5
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods as
set forth in its application with the goods as set forth in
the cited registration. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). In this case, applicant’s broadly
identified “seafood” encompasses registrant’s more
specifically identified “fresh and frozen salmon.” With

our determination of the du Pont factor concerning the similarity
of the marks.
Ser No. 77290085
6
his June 25, 2008 Office action, the examining attorney
made of record definitions of “salmon” and “seafood.”
According to these definitions, “salmon” may be defined as
“a large food fish with soft fins that spends most of its
life in the ocean but migrates up freshwater rivers to
spawn; Native to northern Atlantic, northern Pacific”5 and
“seafood” may be defined as “edible fish or shellfish from
the sea.”6 Thus, as identified, applicant’s “seafood” is
presumed to include registrant’s “fresh and frozen salmon.”
Finally, we note that applicant does not argue in its
brief that the goods are dissimilar. Accordingly, this du
Pont factor also favors a finding of likelihood of
confusion.
Channels of Trade
Neither applicant’s goods nor those of registrant
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. Because there are no recited trade
channel restrictions and further because applicant’s goods
encompass those of registrant, the goods are legally
identical, registrant’s goods are presumed to move in all
normal channels of trade and be available to all classes of

5 Microsoft Encarta (2007).
6 Bartleby.com
Ser No. 77290085
7
potential consumers, including consumers of applicant’s
goods. See In re Elbaum, supra. Accordingly, this du Pont
factor further favors a finding of likelihood of confusion.
The Marks
In its briefing of the issue under appeal, applicant
focuses its arguments exclusively on various aspects of the
similarity or dissimilarity between its mark and the mark
in the cited registration. We turn then to the first du
Pont factor, i.e., whether applicant’s mark and
registrant’s mark are similar or dissimilar when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note
initially that the test under the first du Pont factor is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). We
Ser No. 77290085
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further note that under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. See Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In this case, applicant’s mark, GOURMET CHOICE in
standard characters, is comprised in its entirety of
wording that is nearly identical to the wording THE
GOURMET’S CHOICE in the registered mark shown below.

Registrant’s mark contains the additional wording
SALMONES ANTARTICA LTDA as well as the design of two fish
and an oval carrier. However, we find that THE GOURMET’S
CHOICE is the dominant element of the cited mark, and
accordingly it is entitled to more weight in our analysis.
It is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
Ser No. 77290085
9
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In registrant’s mark, the wording THE GOURMET’S CHOICE
appears in prominently sized letters at the top of
registrant’s mark. Moreover, the significance of THE
GOURMET’S CHOICE in registrant’s mark is reinforced by its
location as the first words in the mark. See Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“it is often the first part of a mark
which is most likely to be impressed in the mind of a
purchaser and remembered”). See also Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)(upon encountering the
marks, consumers must first notice the identical lead
word). Further, we agree with applicant that the wording
SALMONES ANTARTICA LTDA, translated into English as
“Antarctic salmons ltd,” appears to “function as a brand
name/company name placed on Registrant’s product” (brief,
p. 2). While such a house mark or brand name possesses
source-identifying significance, the addition of a house
mark to registrant’s mark is normally insufficient to
distinguish the marks as a whole and avoid confusion. See
Ser No. 77290085
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In re Hill-Behan Lumber Co., 201 USPQ 246 (TTAB 1978).
Further, the oval carrier design has very little source-
identifying significance and the fish design, while
visually prominent, is not highly stylized and would likely
be perceived as identifying the goods. If a mark comprises
both a word and a design, then the word is normally
accorded greater weight because it would be used by
purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For
these reasons, we consider THE GOURMET’S CHOICE to be the
dominant feature of the registered mark.
Applicant’s mark GOURMET CHOICE is nearly identical to
the wording THE GOURMET’S CHOICE in registrant’s mark in
sound and in appearance. As a result we find that, viewing
the marks as a whole, the similarities between the marks in
appearance and sound outweigh the dissimilarities.
Further, both marks suggest that the goods identified
thereby are the choice of discriminating purchasers, or
gourmets. Thus, we find that the marks are highly similar
in terms of overall connotation and convey highly similar
commercial impressions. With regard to the strength of
these terms, we note that while applicant has disclaimed
GOURMET, registrant has not disclaimed the nearly identical
term GOURMET’S. Neither has disclaimed CHOICE. As a
Ser No. 77290085
11
result, we do not find that the terms comprising the nearly
identical portion of registrant’s mark with that of
applicant are weak or otherwise entitled only to a narrow
scope of protection.
In this case, we find that consumers who are familiar
with registrant’s mark, used in connection with its goods,
and then see the mark GOURMET CHOICE in standard character
form used in connection with applicant’s goods, are likely
to view the marks as variations of each other, but
indicating a single source. Thus, despite the fact that
registrant’s mark includes additional wording and design
elements, the marks, taken as a whole, are highly similar
in appearance, sound, connotation and commercial
impression. Accordingly, this du Pont factor also favors a
finding of likelihood of confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
Ser No. 77290085
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doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.