This post will provide a few examples of how TM TKO’s tools can help address a real-world 2(d) refusal. For this example, we looked at an application for SURFSIDE SHRIMP for food and retail services. The application went abandoned in mid-September 2020, after getting 2(d) refusals citing several prior marks: a registration for SURFSIDE for restaurant services, a now-abandoned application for SURFSIDE 6 for restaurant services, and a registration for JSC SURFSIDE SEAFOOD (disclaiming SEAFOOD) for a variety of seafood products.

Service Differences

Let’s start with the SURFSIDE registration for restaurant services. One argument we’ll definitely want to make is the differences between food products and restaurant services. The case-law is mixed, with the Office holding that there is no per se rule that food and beverages are related to restaurants, but with the Office also accepting evidence of overlap of two sets of products and services focused on famous brands like DUNKIN DONUTS and THE CHEESECAKE FACTORY rather than on the norms for those industries.

A good place to start here is by finding some examples of identical or very similar marks co-existing, one for seafood products and the other for restaurant services. This is a textbook ThorCheck research project.

Go to the G/S Similarity variant of ThorCheck. Put in a few restaurant-related services as the First Party services and fish and seafood-related products in the Second Party goods. There are two sets of arguments you can glean from the ThorCheck report.

First, you can analyze the extent of overlap. There is some overlap here — 57 registrations that cover both sets of goods and services (the “intersection” section) and another 12 or so in multiple registration certificates (the “similarity” section). These are a very small percentage of the overall restaurant marks (34k+) and seafood marks (2.9k+).

Second, you can find counter-examples under the Dissimilarity column: marks with identical literal portions (26 Exact) and with some substantial, non-disclaimed terms in common (348). These examples help counter the Examiner’s assertions about overlap under the second DuPont factor, bringing that factor closer to neutral or even favorable.

You’d want to tag your favorite examples, export them to Word to integrate the summary chart into your Office Action Response draft, and hit the “TSDR” export button to get status and title copies to attach as an appendix to your response. (Ah, for the day the USPTO would take notice of its own records! Until then… the TSDR Export feature is here for you.) Representative examples follow — there are many, many more high-quality examples in the report.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NISHIKI DINER USA, INC.	043 restaurant services	ULTRA Disclaims: “MENYA” Reg: 5382174 Serial: 87284854 Registered Reg: 01/16/2018 Filed: 12/29/2016	ULTRA Reg: 5073682 Serial: 86287564 Registered Reg: 11/01/2016 Filed: 05/21/2014	029 seafood, namely, frozen seafood, not live	Sea Farms, Inc.
WE JING INTERNATIONAL CO., LTD.	043 restaurant and bar services	MYFISH Reg: 5556825 Serial: 87532123 Registered Reg: 09/04/2018 Filed: 07/18/2017	MYFISH Reg: 5218513 Serial: 87227227 Registered Reg: 06/06/2017 Filed: 11/04/2016	029 seafood, not live	BUMBLE BEE FOODS, LLC
COMPASS GROUP HOLDINGS PLC	043 restaurant services	COMPASS Reg: 2941437 Serial: 76585606 Registered And Renewed Reg: 04/19/2005 Filed: 04/08/2004	COMPASS Reg: 1288058 Serial: 73435352 Registered And Renewed Reg: 07/31/1984 Filed: 07/20/1983	029 seafood products	Ocean Garden Products, Inc.
MAMBO MARKS, LLC	043 restaurant services	MAMBO Reg: 3709148 Serial: 77187552 Registered And Renewed Reg: 11/10/2009 Filed: 05/22/2007	MAMBO Reg: 5813995 Serial: 87386280 Registered Reg: 07/23/2019 Filed: 03/27/2017	029 frozen seafood	Quirch Foods Co.
J. CHANG, INC.	043 restaurant and bar services	MIYAKO Reg: 3614622 Serial: 77397285 Registered Reg: 05/05/2009 Filed: 02/14/2008	MIYAKO Reg: 4611647 Serial: 76715351 Section 8 & 15 – Accepted And Acknowledged Reg: 09/30/2014 Filed: 11/12/2013	029 frozen fish	Mutual Trading Co., Inc.
HEAVENLY VENTURES TRADING LLC	043 restaurant and bar services	CORKSCREW Reg: 3780866 Serial: 77826132 Registered And Renewed Reg: 04/27/2010 Filed: 09/14/2009	CORKSCREW Reg: 5847124 Serial: 88240862 Registered Reg: 08/27/2019 Filed: 12/24/2018	029 seafood, not live	Ore-Cal Corporation
Seminole Tribe of Florida	043 restaurant services	FRESH HARVEST Reg: 4272430 Serial: 85713366 Section 8 & 15 – Accepted And Acknowledged Reg: 01/08/2013 Filed: 08/27/2012	FRESH HARVEST Disclaims: “FRESH” Reg: 2664205 Serial: 76170562 Registered And Renewed Reg: 12/17/2002 Filed: 11/24/2000	029 seafood	Trans Family, Inc.
Long, Bart	043 restaurant services	BLUE CIRCLE Reg: 4395107 Serial: 85757452 Section 8 – Accepted Reg: 09/03/2013 Filed: 10/18/2012	BLUE CIRCLE Reg: 3758778 Serial: 77606046 Registered And Renewed Reg: 03/09/2010 Filed: 11/03/2008	029 fresh fish and seafood, not live	Blue Sea LLC
Lakefront Brewery, Inc.	043 restaurant services	LAKEFRONT Reg: 5112090 Serial: 86777659 Registered Reg: 01/03/2017 Filed: 10/05/2015	LAKEFRONT Reg: 2506327 Serial: 76152074 Registered And Renewed Reg: 11/13/2001 Filed: 10/19/2000	029 processed seafood	Louisiana Premium Seafoods, Inc.
Starfish Laguna Beach LLC	043 restaurant and bar services	STARFISH Reg: 5974695 Serial: 86826352 Registered Reg: 02/04/2020 Filed: 11/19/2015	STARFISH Reg: 2682103 Serial: 75628250 Registered And Renewed Reg: 02/04/2003 Filed: 01/26/1999	029 seafood	DULCICH, INC.
Tavistock Restaurants Upscale Group, LLC	043 restaurant and bar services	TOP CATCH Reg: 5312613 Serial: 87059055 Registered Reg: 10/17/2017 Filed: 06/03/2016	TOP CATCH Reg: 2156853 Serial: 75297283 Registered And Renewed Reg: 05/12/1998 Filed: 05/23/1997	029 processed seafood	Top Catch, Inc.
Hot Mess, LLC	043 cafe and restaurant services	GIANT Reg: 5670352 Serial: 88011196 Registered Reg: 02/05/2019 Filed: 06/22/2018	GIANT Reg: 3986603 Serial: 77920107 Section 8 & 15 – Accepted And Acknowledged Reg: 06/28/2011 Filed: 01/26/2010	029 seafood	AHOLD DELHAIZE LICENSING SARL
Urban Roots Brewery, LP	043 restaurant services	URBAN ROOTS Reg: 5577096 Serial: 87594071 Registered Reg: 10/02/2018 Filed: 09/01/2017	URBAN ROOT Reg: 5698383 Serial: 87596331 Registered Reg: 03/12/2019 Filed: 09/05/2017	029 prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal	BALDOR SPECIALTY FOODS, INC.
Li, Meiling	043 restaurant services	IKKO Reg: 6033669 Serial: 88627256 Registered Reg: 04/14/2020 Filed: 09/23/2019	IKKO Reg: 4001245 Serial: 85088335 Section 8 & 15 – Accepted And Acknowledged Reg: 07/26/2011 Filed: 07/20/2010	029 seafood	True World Holdings LLC
Duke University	043 restaurant services	DUKE Reg: 5568287 Serial: 87530381 Registered Reg: 09/25/2018 Filed: 07/17/2017	DUKE Reg: 2740546 Serial: 78163076 Registered And Renewed Reg: 07/22/2003 Filed: 09/11/2002	029 seafood	Yelin Enterprise Co., Ltd.
CORNER INVESTMENT COMPANY, LLC	043 restaurant services	EATWELL Reg: 5588828 Serial: 87573326 Registered Reg: 10/23/2018 Filed: 08/17/2017	EATWELL Reg: 4638546 Serial: 86191230 Registered Reg: 11/11/2014 Filed: 02/12/2014	029 seafood, not live	Starkist Co.

It would be better if the Office considered normal trends instead of just cherry-picking examples, but the case law is what it is, and ThorCheck empowers you to find examples that help you make the case that confusion is unlikely.

We can also do research in Office Actions to find examples of fish/seafood marks overcoming refusals for restaurant services, using a search like this:

This finds some great examples of co-existing registrations, like YOUR FISH! (stylized) for seafood overcoming a prior reg for OUR FISHERMAN, YOUR FISH for restaurant services, ROUNDABOUT for seafood meals overcoming a prior registration for ROUNDABOUT BREWERY for brewpub services, DEEP LOUISIANA FLAVOR for seafood overcoming FLAVORS OF LOUISIANA for restaurant services, BLUE ISLE for seafood overcoming BLUE ISLAND and BLUE ISLAND OYSTER BAR, SKIPPER’S BEST for seafood overcoming prior registrations for SKIPPER’S for restaurants, and many more. These are great for two reasons. First, you can use them like litigators use briefs — to build your best argument on the shoulders of the successes that came before you. Second, you can provide these examples of withdrawn 2(d) refusals to your Examining Attorney to help provide them comfort that they can do as you ask without incurring the wrath of the internal publication review process.

Need more examples? Click on the drop-down by New Search and select Invert Criteria, and see restaurant marks that overcame prior registrations in the seafood space — these are conceptually very similar, and also provide you strong examples.

Mark Differences

There are several types of research we can do on the mark front.

First, we can use TM TKO’s Office Action analysis tool to do automated research for similar marks that overcame 2(d) refusals. It finds that the SURFSIDE registrant in the restaurant space made extensive arguments about co-existence of other SURFSIDE marks in the restaurant space, in trying to argue around prior registrations for SURFSIDE 5 and SURFSIDE 6. The prior registrations were eventually cancelled. While there is no formal prosecution history estoppel doctrine, it certainly doesn’t hurt to point out that the cited registrant thinks that SURFSIDE won’t be confused with other SURFSIDE marks in the restaurant space, much less for packaged seafood!

The Office Action Analysis tool also finds a set of arguments for a still-pending application for Asian-themed seafood meals that has argued against the JSC SURFSIDE SEAFOOD mark, here. These can be a helpful starting point in planning and drafting a response.

Second, we can use ThorCheck to focus on mark-related differences. For JSC SURFSIDE SEAFOOD, the goods are more similar, and the similarity of the marks is the main issue. (This is also a tougher refusal overall.) We’ll want to start with a Term Difference search, and search for “shrimp” with the “Dissimilarity (different owners)” option selected. This will find marks that are otherwise identical or at least share key terms; one has SHRIMP and one doesn’t. This finds example of co-existence like the marks below, where the presence of the generic word “shrimp” nevertheless helps differentiate two marks.

Owner	Goods/Services	Mark	Mark	Goods/Services	Owner
NaturalShrimp Incorporated	029 raw shrimp featuring no pesticides, no antibiotics and no chemical additives, grown in self-contained recirculating bio-secure saltwater environment	NATURALSHRIMP Reg: 6122073 Serial: 88498493 Registered w/ 2(f) claim Reg: 08/11/2020 Filed: 07/02/2019	MYNATURAL Reg: 6143014 Serial: 88480582 Registered Reg: 09/01/2020 Filed: 06/19/2019	029 fruit-based snack food; prepared nuts; vegetables; dried; jams; fruit chips; frosted fruits; powdered soya milk; vegetable-based snack foods	LIOUX, INC.
CERTI-FRESH FOODS, INC.	029 frozen shrimp	“SHRIMPLY THE BEST” Reg: 3526116 Serial: 76494802 Registered And Renewed Reg: 11/04/2008 Filed: 02/27/2003	BEST Reg: 4315088 Serial: 85670748 Supplemental Reg. Section 8 – Accepted Reg: 04/02/2013 Filed: 07/06/2012	029 seafood	Best International Trading, Inc.
Bubba Gump Shrimp Co.	029 prepared entrees consisting primarily of shrimp for consumption on and off the premises	SHRIMPER’S HEAVEN Reg: 3394390 Serial: 77197998 Registered And Renewed Reg: 03/11/2008 Filed: 06/05/2007	HEAVEN SENT Reg: 5236932 Serial: 87259070 Registered Reg: 07/04/2017 Filed: 12/06/2016	029 coconut oil; coconut oil and fat; (…)	Exel-Pak, Inc.
Tampa Bay Fisheries, Inc.	029 shrimp, not live	SHRIMPLY DELICIOUS Reg: 4649927 Serial: 85957740   Registered Reg: 12/02/2014 Filed: 06/12/2013	SO DELICIOUS Reg: 3867331 Serial: 77965368   Section 8 & 15 – Accepted And Acknowledged Reg: 10/26/2010 Filed: 03/22/2010	029 non-dairy creamer; processed coconut	Turtle Mountain, LLC
LANDRY’S TRADEMARK, INC.	029 prepared meals consisting primarily of shrimp and chicken	SHRIMPKENS Reg: 3082477 Serial: 78617964   Registered And Renewed Reg: 04/18/2006 Filed: 04/27/2005	KEN’S Reg: 1134235 Serial: 73084452   Registered And Renewed Reg: 04/29/1980 Filed: 04/19/1976	029 salad dressing, cole slaw dressing, mayonnaise and other dairy, vegetable, fruit, and/or oil based food dressings	KEN’S FOODS, INC.
Schlesser, Robert	043 restaurant services	SHRIMP XPRESS Reg: 5075372 Serial: 86826974 Supplemental Reg. Registered Reg: 11/01/2016 Filed: 11/20/2015	ROE XPRESS Disclaims: “EXPRESS” Reg: 5319995 Serial: 86882107 Registered Reg: 10/31/2017 Filed: 01/21/2016	043 restaurant services	So Cal Restaurant Group LLC
RICH PRODUCTS CORPORATION	043 providing information about seafood for others, namely, recipes, seafood restaurant reviews	SHRIMPTACULAR Reg: 4653276 Serial: 85671917 Registered Reg: 12/09/2014 Filed: 07/09/2012	SPEGGTACULAR Reg: 5657635 Serial: 87772562 Registered Reg: 01/15/2019 Filed: 01/26/2018	043 restaurant services	Goufas, Emmanuel
PINNACLE ENTERTAINMENT, INC.	043 restaurant services	SHRIMP-A-PALOOZA Reg: 5834152 Serial: 88283949 Registered Reg: 08/13/2019 Filed: 01/31/2019	WING-A-PALOOZA Reg: 4860445 Serial: 86244730 Registered Reg: 11/24/2015 Filed: 04/07/2014	043 restaurant services	Pizza Hut, Inc.

Is this going to be enough to turn the tide? It’s not clear — the marks share their most distinctive term, which is always tough even if it’s also suggestive of something about the products.

As always, please don’t hesitate to reach out to us at support@tmtko.com or set up a time to talk via a web meeting if you need a hand with any research projects! We love to help.