World Wide Food Products, Inc.

Trademark Trial and Appeal Board

Mar 15, 2007

No. 76457957 (T.T.A.B. Mar. 15, 2007)

Mailed: March 15, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World Wide Food Products, Inc.
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Serial Nos. 76457957; 76457958; 76457959; 76457960;
76457961; and 76458326
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Myer Amer, Esq. for World Wide Food Products, Inc.

Tanya Amos, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On October 7 and 8, 2002 Worldwide Food Products, Inc.
filed six applications to register the following composite
marks (each in special form):
1. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
FLOUNDER, informational matter, and the designs of a Geisha
and flounder, as shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

2

for “flounder.”

2. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
WHITING, informational matter, and the designs of a Geisha
and whiting, as shown below,

for “whiting.”

3. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
RAW SQUID, informational matter, and the designs of a
Geisha and squid, as shown below,

for “raw squid.”

Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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4. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
SNOW CRAB, informational matter, and the designs of a
Geisha and snow crab, as shown below,

for “snow crab.”

5. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
SEAFOOD MIX, informational matter, and the designs of a
Geisha and various seafood, as shown below,

for “seafood mix, namely, frozen entrees consisting
primarily of seafood.”

6. The words GEISHA, A TRADITION OF QUALITY SINCE 1907 and
RAW WHITE SHRIMP, informational matter, and the designs of
a Geisha and white shrimp, as shown below,

Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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for “raw white shrimp.” 1
Each composite mark is essentially the front of the
packaging for the goods. The drawings do not reproduce
well.
The trademark examining attorney, inter alia, refused
registration in each application under Section 2(d) of the
Trademark Act in view of several previously registered
GEISHA (in standard character form) and “Geisha design”
marks. Further, the examining attorney maintained that
each drawing was unacceptable because the details of the
drawing page were not clear, and therefore, required that
applicant submit a substitute drawing. The examining
attorney also required that applicant delete the
informational matter and the design of the particular
seafood item (hereinafter “seafood design”) in each
drawing, and disclaim certain wording.
Applicant complied with the disclaimer request in each
application. With respect to the requirements for a
substitute drawing and the deletion of the informational
matter and the “seafood design” in each drawing, applicant
responded by stating that “the informalities of the drawing

1 Application Serial Nos. 76457957; 76457958; 76457959; 76457960;
76457961; and 76458326, respectively. All six applications
allege first use dates of June 7, 1997.

Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

5
will be corrected upon receipt of a NOTICE OF PUBLICATION.”
Thus, the drawing for each application is as we have
reproduced them in this opinion, and each mark still
contains the informational matter.
After a number of Office actions and responses, the
examining attorney finally refused registration of each of
applicant’s marks under Section 2(d) of the Trademark Act
in view of the following previously registered marks, all
owned by Kawasho Foods Corporation: (1) GEISHA (in
standard character form) for, inter alia, “canned and
frozen fish and shell fish” (Registration No. 991,554
issued August 20, 1974; first renewal); (2) GEISHA in
stylized letters for, inter alia, “canned crabs, canned
tuna, and canned clams” (Registration No. 306,862 issued
October 3, 1933; third renewal); (3) the design of a Geisha
for, inter alia, “canned fish and shellfish-namely, canned
crabmeat, shrimp, oysters, clams, tuna, sardines, kippers,
mackerel, salmon; and frozen fish” (Registration No.
1,162,935 issued July 28, 1981 with the statement that “The
drawing is lined for the colors blue, green, red, orange
and yellow”; first renewal); and (4) GEISHA in stylized
letters for, inter alia, “canned fish and shellfish-namely,
canned crabmeat, shrimp, oysters, clams, tuna, sardines,
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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kippers, mackerel, salmon; and frozen fish” (Registration
No. 1,162,936 issued July 28, 1981; first renewal).
In addition, the examining attorney made final the
requirements for (1) a substitute drawing and (2) the
deletion of the informational matter and “seafood design”
in the drawing in each application.
In each instance, applicant has appealed. Both
applicant and the examining attorney have filed briefs.
In view of the common questions of law and fact that are
involved in these six applications, and in the interest of
judicial economy, we have consolidated the appeals.
Further, we note that the registrations which form the
basis of the Section 2(d) refusals in each of the involved
applications are the same registrations cited by the
examining attorney in refusing registration under Section
2(d) of applicant’s companion application Serial No.
76457962. In the companion application, the examining
attorney also required that applicant delete the “seafood
design” from the drawing. The Board, in an opinion issued
on May 23, 2006 in the companion application, inter alia,
affirmed the Section 2(d) refusals and reversed the
requirement for the deletion of the “seafood design” from
the drawing.
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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In view of the Board’s opinion in the companion case,
the examining attorney has withdrawn the specific
requirement, in each application, that applicant delete the
“seafood design” in the drawing. However, the examining
attorney maintained the requirements for a substitute
drawing and the deletion of the informational matter in the
drawing in each application.
We first turn to the Section 2(d) refusals in each of
the involved applications. With respect to the
similarity/dissimilarity of the marks, in particular, based
upon the rationale of our opinion in the companion
application, we find that each of the marks in the involved
applications is similar to each of the four cited marks.
With respect to the relatedness of the goods, again, for
the reasons stated in our opinion in the companion
application, we find that the seafood items in each of the
involved applications and the seafood items in each of the
cited registrations are legally identical in part (e.g.,
“flounder” and “frozen fish”; “snow crab” and “canned
crabs”) or otherwise closely related (e.g., “raw squid” and
“frozen fish”). Moreover, with respect to those seafood
items which are not legally identical, the examining
attorney has submitted, in each application, a large number
of use-based third-party registrations that include such
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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types of seafood. Although these registrations are not
evidence that the marks shown therein are in use, they
serve to suggest that these seafood items are the type of
goods which may emanate from a single source. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). Also, it is obvious that all of the goods at issue
are seafood items which would be sold in the same channels
of trade to the same class of purchasers. In short,
purchasers familiar with any of registrant’s GEISHA word or
“geisha design” marks for seafood items, upon encountering
any one of applicant’s applied-for-marks for identical and
closely related seafood items, would be likely to believe
that the goods originated with or were somehow sponsored by
the same source.
As was the case in the companion application,
applicant submitted in each of the involved applications a
copy of a document entitled “Trademarks Sublicense
Agreement” and argues that this agreement reflects a
“consent agreement” between it and the registrant. Based
upon the rationale in our prior opinion, we find that this
agreement is not a consent to register by the owner of the
cited registration, but rather a license which authorizes
applicant to use product packaging. Such a license does
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
76458326

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not constitute a consent by the registrant to applicant’s
registration of the involved marks, and therefore has no
probative value in our likelihood of confusion
determination.
In view of the foregoing, we affirm the Section 2(d)
refusals in each application.
We next turn to the requirements, in each application,
for a substitute drawing and the removal of the
informational matter from the drawing. Applicant has not
argued against these requirements but, instead, states in
its brief, at 1-2, that it will comply with these
requirements “upon withdrawal of the Section 2(d)
refusal[s].” Trademark Rule 2.142(c) states that “[a]ll
requirements made by the Examiner and not the subject of
appeal shall be complied with prior to the filing of an
appeal.” In view of applicant’s failure to comply or to
argue against the requirements, we affirm the refusals of
registration on the basis of these requirements. See In re
Big Daddy’s Lounges, Inc., 200 USPQ 371 (TTAB 1978). We
should add that the requirements are, in any event, well
taken. Each drawing is in the nature of a photocopy of
product packaging; the lines therein are extremely blurry,
rather than clean and sharp. Moreover, as is apparent in
this decision, the drawings do not reproduce well. In
Ser Nos. 76457957; 76457958; 76457959; 76457960; 76457961; and
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short, the drawings do not comply with Trademark Rule
2.54(e).
Further, such matter as “NATURALLY FAT FREE”, “KEEP
FROZEN”, and “ENLARGED TO SHOW QUALITY SERVING SUGGESTION”
is clearly informational in nature and should not appear in
the drawing. Such matter is not part of applicant’s
composite mark and its removal will not alter the
commercial impression. Also, the “TM” symbol, the
registration notice “®”, and “NET. WT.” should not appear
in the drawing. See TMEP §807.14(a) (4th ed. 2005).
Decision: The refusals to register under Section
2(d), and the requirements for a substitute drawing and the
removal of the informational matter from the drawing are
affirmed with respect to each application.