A Crowded Field + Identical Services Requires a Distinctive Term

Twenty two third-party trademark registrations was too much for the Trademark Trial and Appeal Board to ignore even though it tried to downplay some of the registrations offered by 8415927 Canada, Inc. Despite the conceptual weakness, the Board affirmed the refusal to register the DIVE PRIME SEAFOOD (in standard characters) and with a Design marks because no distinctive term was used.

8415927 Canada, Inc. applied to register the mark DIVE PRIME SEAFOOD in connection with “bar services; restaurant services; take-out restaurant services.” The Trademark Office refused registration on the ground that the marks were likely to cause confusion with the prior registered mark DIVE COASTAL CUISINE & Design for “restaurant services.

8415927 Canada argued that DIVE was a diluted term and afforded a very narrow scope of protection. 8415927 Canada offered 22 third-party registrations for marks containing the term DIVE for restaurant and related services. The Board tried to undermine the third-party registrations noting that no evidence of use was offered, and that none were for DIVE by itself. According to the Board, the fact that some of the third-party registrations had other terms changed the meaning of the term DIVE.

Nevertheless, 22 was too much for the Board to ignore and well above the 10 we speculate is required to prove trademark weakness. Therefore, the Board concluded that the DIVE COASTAL CUISINE & Design mark was conceptually weak. While it is normally a good sign for the trademark applicant, it was not enough to overcome the other likelihood of confusion factors.

In particular, the Board was handcuffed by the unrestricted identification of services descriptions. The marks at issue identified “restaurant services,” consequently the Board was required to find that the class of consumers and trade channels overlapped. Less similarity between the marks was also required in order to find a likelihood of confusion.

The lesson learned in this case is that when there is a crowded field concerning a certain term and the goods or services at issue are identical, then the addition of descriptive terms is not enough to distinguish the marks. A distinctive term needs to be incorporated in the proposed mark.

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