Thursday, July 02, 2015

Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark MARAZUL for "fish and seafood products, namely, frozen and fresh processed fish and seafood, and imitation crab meat," finding the mark likely to cause confusion with the registered mark BLUE SEA for "non-live fish and frozen fish." The Board also affirmed a refusal based on the applicant's failure to comply with Examining Attorney Jason F. Turner's requirement that it provide a translation of the mark. In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015) [precedential].

Translation Requirement: The Examining Attorney provided evidence that the term "mar azul" is a Spanish term meaning "blue sea," and he required Applicant to submit an English translation of all foreign wording in the mark, under Rule 2.32(a)(9). Applicant did not address that evidence, but instead insisted that MARAZUL is a "unitary and inseparable and arbitrary term coined by Applicant having no direct English translation." The Examining Attorney then supplied additional evidence, including a page from Applicant's website, stating that its seafood products are the first "designed to truly target the U.S. Hispanic market with authentic bilingual packaging." Its specimens of use (see above) illustrated its use of bilingual packaging.

The translation requirement was made final, and Applicant never provided the required translation, maintaining it its appeal brief that MARAZUL is an "arbitrary, coined, unitary term and brand created by Applicant and ... has not direct English translation."

The Board rejected Applicant's argument that MARAZUL is a unitary, unseparable term, finding no evidence that combining "mar" and "azul" into a single term results in a mark having a commercial impression different from the separated terms MAR and AZUL. Moreover, in light of Applicant's bilingual packaging, its claim that MARAZUL is an arbitrary, coined term was inconsistent with the record evidence and "not credible."

Therefore the Board affirmed the refusal based on Applicant's non-compliance with the translation requirement.

Likelihood of Confusion: Because the involved goods are in part identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers. Not only did these facts weigh heavily in favor of a finding if likely confusion, but they also reduced the degree of similarity between the marks necessary to support such a finding.

The record evidence established that the meanings of the marks are identical. Under the doctrine of foreign equivalents, foreign words from common languages such as Spanish are translated into English for purposes of determining likelihood of confusion with an English word mark. The doctrine applies when it is likely that "the ordinary American purchaser would 'stop and translate [the term] into its English equivalent." See In re Thomas.

The Board found that ordinary purchasers of fish would stop and translate the term MARAZUL into English. "In fact, that is essentially Applicant's stated intention, as MARAZUL-branded fish is 'designed to truly target the U.S. Hispanic market with authentic bilingual packaging." The appearance of several Spanish words displayed on Applicant's packaging next to their English equivalents, increased the likelihood that consumers will translate MARAZUL, as does the display of MARAZUL in blue with a nautical-themed logo, together with the phrase "productos del mar."

The Board acknowledged that meaning alone is not the only consideration when comparing two marks in the assessing likelihood of confusion, but the exact equivalence in meaning of MARAZUL and BLUE SEA outweighed the differences in appearance and sound.

And so the Board also affirmed the Section 2(d) refusal.

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TTABlog comment: I think branding live fish would be quite difficult, since they are so slippery. By the way, this case illustrate the old adage, when the Examining Attorney requires you to jump, you just ask "how high?"

Text Copyright John L. Welch 2015.


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