IP Law Daily, TRADEMARK—TTAB: Registration of MARAZUL for seafood precluded by registered mark BLUE SEA, (Jul 2, 2015)

By Cheryl Beise, J.D.

A trademark examining attorney’s refusal to register the mark MARAZUL for “Fish and seafood products” for failure to comply with a translation requirement and on the ground of likelihood of confusion with the previously-registered mark BLUE SEA for “non-live fish and frozen fish,” has been affirmed by the Trademark Trial and Appeal Board, in an opinion designated as precedential (In re Aquamar, Inc., June 25, 2015, Aldin, M.).

In 2013, Aquamar, Inc. (“applicant”) sought registration of the mark MARAZUL, in standard characters, for “Fish and seafood products, namely, frozen and fresh processed fish and seafood, and imitation crab meat” in International Class 29.

With the first Office Action, the examining attorney provided evidence that “mar azul” means “blue sea” in Spanish and accordingly required the applicant to “submit an English translation of all foreign wording in the mark.” The applicant refused to submit a translation, contending that its unitary “MARAZUL” mark was a completely arbitrary designation and coined term with no direct English translation.

With the next Office Action, the examining attorney provided additional evidence, including three news articles, indicating that “mar azul” is Spanish for “blue sea,” in addition to a printout from the applicant’s website, stating “Marazul™ brand by Aquamar® is the first Surimi Seafood product designed to truly target the US Hispanic market with authentic bilingual packaging.”

The examining attorney refused registration: (1) under Section 2(d) of the Trademark Act on the ground of likelihood of confusion with the previously-registered mark BLUE SEA, in standard characters, for “non-live fish and frozen fish,” also in Class 29; and (2) for failure to comply with the translation requirement.

Translation requirement. Trademark Rule 2.32(a)(9) requires applications for marks including non-English wording to include an English translation of that wording.

The Board rejected the applicant’s argument that it did not need to comply with the translation requirement because its mark is “unitary and inseparable.” There was no evidence that combining “mar” and “azul” into a single term resulted in a commercial impression any different from MAR AZUL, the Board observed, “especially where “mar azul” has been shown to have a specific meaning consistent with Applicant’s goods.” The applicant’s argument was further undercut by evidence that the applicant’s specimens of use of its involved MARAZUL mark illustrated that the applicant was targeting of “the US Hispanic market with authentic bilingual packaging.” The applicant’s website also depicted its AQUAMAR house mark with a design of wavy blue lines, presumably meant to represent a blue sea.

The Board accordingly affirmed the refusal register based on the applicant’s failure to comply with the translation requirement pursuant to Trademark Rule 2.23(a)(9).

Likelihood of confusion. The Board first noted that the goods and channels of trade for the marks at issue were in part identical, as the applicant and the registrant both offered “frozen fish,” and the applicant’s fresh processed fish was encompassed within the registrant’s “non-live fish.” Given that the goods were in part legally identical, the Board was required to presume that the channels of trade and classes of purchasers for those goods were the same.

Although the MARAZUL and BLUE SEA marks were distinct in appearance and sound, their meanings were identical. The record evidence clearly established that “mar azul” means “blue sea.” Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. The doctrine of foreign equivalents is routinely applied to Spanish language marks because Spanish is the second most “common language” in the United States. According to the U.S. Census Bureau, over 12% of the U.S. population speaks Spanish. In the context of identical goods that come from the sea, the exact equivalency in meaning of the marks outweighed their differences, according to the Board.

The Board concluded that the relevant du Pont factors—the similarity of the goods, the overlapping channels of trade and classes of consumers, and the similarity of the marks— compelled a finding of likelihood of confusion. The refusal to register under Trademark Act Section 2(d) was also affirmed.

The case is Serial No. 85861533.

Attorneys: Robert E. Nail (Locke Lord LLP) for Aquamar, Inc. Jason F. Turner, Trademark Examining Attorney, USPTO

Companies: Aquamar, Inc.

Cases: Trademark USPTO