5 Axis Dental, Inc.

Trademark Trial and Appeal Board

May 25, 2016

No. 86404325 (T.T.A.B. May. 25, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: May 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 5 Axis Dental, Inc.
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Serial No. 86404325
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Matthew H. Swyers of The Trademark Company PLLC,
for 5 Axis Dental, Inc.
Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Kuhlke, Mermelstein and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
5 Axis Dental, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark CLONE MODEL (in standard characters) for “custom manufacture of dental
prosthetics; custom manufacture of dental models and dental casts” in International
Class 40.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(1) of the Lanham Trademark Act, 15 U.S.C. § 1052(e)(1) on the

1 Application Serial No. 86404325 was filed on September 24, 2014, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as May 10, 2014.
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ground that the mark is merely descriptive of Applicant’s identified services.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Applicable Law
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive “if it immediately conveys knowledge of a quality, feature,
function or characteristic of the goods or services with which it is used.” In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016).
The determination of whether a mark is merely descriptive must be made not in
the abstract, but “in relation to the goods [or services] for which registration is sought,
the context in which it is being used, and the possible significance that the term would
have to the average purchaser of the goods because of the manner of its use or
intended use.” Bayer Aktiengesellschaft, 82 USPQ2d at 1831. See also In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Activevideo Networks,
Inc., 111 USPQ2d 1581, 1587 (TTAB 2014). If the mark is descriptive of any of the
goods or services in an International Class, a descriptiveness refusal is proper with
respect to all of the identified goods or services in that class. See Chamber of
Commerce, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77
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USPQ2d 1087, 1089 (Fed. Cir. 2005)). “A mark need not recite each feature of the
relevant goods or services in detail to be descriptive, it need only describe a single
feature or attribute.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1478 (TTAB 2016) (quoting Chamber of Commerce, 102 USPQ2d at 1219). See also In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)
(“A mark may be merely descriptive even if it does not describe the full scope and
extent of the applicant’s goods or services.”).
A descriptive term is refused registration as a trademark because “the function of
a trademark is to point distinctively, either by its own meaning or by association, to
the origin or ownership of the wares to which it is applied, and words merely
descriptive of qualities, ingredients or characteristics, when used alone, do not do
this.” In re Abcor Dev. Corp., 200 USPQ at 217 (quoting Beckwith v. Com’r, 252 U.S.
538, 543 (1920)). A descriptive term is less likely to be perceived as an indicator of
source, and more likely to be used by the public and competitors to refer to the goods
or services themselves. See In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1085
(TTAB 2010), quoted in Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1767 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).
Trademark Manual of Examining Procedure (TMEP) § 1209 (2015).
It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services. If such a showing is made, the burden
of rebuttal shifts to the applicant. The Board resolves doubts as to the mere
descriptiveness of a mark in favor of the applicant. In re Fat Boys Water Sports LLC,
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118 USPQ2d 1511, 1512 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)); In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632
(Fed. Cir. 2003); In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994)).
II. Evidence and Arguments.
According to the Examining Attorney, the mark merely describes the services as
the custom manufacture of dental models and dental implants known as clones in the
industry.2 The Examining Attorney argues that the Collins English Dictionary,
defines “clone” as “a person or thing bearing a very close resemblance to another
person or thing,” and “model” as “a representation, usually on a smaller scale, of a
device, structure.”3 Moreover, the Examining Attorney contends, the word “clone” is
a term of art in the dental implant industry, denoting a generic copy of an implant
design that was previously protected by a patent.4 In support of this last point, the
Examining Attorney adduces webpages from dentists who decry the use of cheaper
clone implants, e.g.:
• Implant manufacturers seeking a spot in the competitive dental implant
market will copy the design of an implant that has an expired patent, save
for a minor change here and there. These implants are known as clones

2 Examining Attorney’s brief, 6 TTABVUE 4.
3 Examining Attorney’s brief, 6 TTABVUE 5; Office Action of Jan. 14, 2015, pp. 2, 5. The
definitions submitted with the Jan. 14, 2015 Office action were obtained from the Collins
English Dictionary website (www.collinsdictionary.com), but the provided meanings were
from the “British English” (as opposed to “American English”) version of the dictionary, which
has been held to have little probative value because of differences between the versions. See
In re Heatcon, Inc., 116 USPQ2d 1366, 1374 n. 19 (TTAB 2015). Nonetheless, the American
English Dictionary definitions of “clone” as “a person or thing very much like another,” and
of “model” as “a small copy or imitation of an existing object, as a ship, building, etc., made
to scale,” approximate the British English Dictionary definitions, and we take judicial notice
of them. Id.
4 Examining Attorney’s brief, 6 TTABVUE 5.
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and are marketed to dentists at a significantly reduced fee. In most
instances, these implant clones have absolutely NO clinical
documentation to substantiate their manufacturer’s claims. In fact, these
companies use literature provided by the implant manufacturer from
whom they are copying!5

• [W]hile generic or clone implants have been proven to be very successful
in a wide variety of applications, Dr. Kim has made the decision to not
use generic or clone implants because they are essentially copies of well
known implants, but utilizing old technology.6

• Clone dental implants are indeed cheaper than brand implants. Most are
manufactured abroad with unknown quality assurance, materials or
composition. They are FDA approved but they do not have the research
and long term experiences that brand name dental implants have.
Therefore clone implants may have increased risk of the following…..
Clone implants may work in some situations but their long term results
are largely unknown. That is why top oral surgeons and prosthodontists
never use clone dental implants.7

From these and other dentists’ websites expressing like sentiments, the
Examining Attorney concludes that “the term CLONE is commonly used within the
dental industry to refer to a type of dental implant.”8
Applicant concedes that “as a threshold matter, there is no argument that the
term MODEL is merely descriptive of the Applicant’s services. Applicant has
provided the requisite disclaimer for the same.”9 Applicant further agrees that “the

5 Online article by Michael Gulizio, DMD, MS, www.RealSelf.com/article/dental-implant-
industry, from Office Action of Jan. 14, 2015, p. 10, Office Action of Oct. 16, 2015, p. 11.
6 Fred J. Kim, DDS, FAGD, Cosmetic, Implant and General Dentistry,
www.pacificSmiles.com/dental-implant-cost from Office Action of Jan. 14, 2015, p. 29-30;
Office Action of Oct. 16, 2015, p. 35.
7 Excerpt from www.facialart.com blog by H. Ryan Kazemi, DMD, oral and maxillofacial
surgery Bethesda, Maryland and Washington, D.C., from Examining Attorney’s brief, 6
TTABVUE 6, Office Action of Jan. 14, 2015, pp. 12-13, Office Action of Oct. 16, 2015, p. 4.
8 Examining Attorney’s brief, 6 TTABVUE 7.
9 Applicant’s brief, p. 10, 4 TTABVUE 11.
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common definition of the term CLONE, [is] namely, “to produce a copy of or imitation
of,” and respectfully request[s] that the Trademark Trial and Appeal Board take
judicial notice of that definition Dictionary.com.10
Applicant argues that its applied-for mark is suggestive, not descriptive, because
a consumer viewing the mark would have to exercise “mature thought or follow a
multi-stage reasoning process” to determine the characteristics of Applicant’s
services.11 Citing No Nonsense Fashions, Inc. v. Consolidated Food Corp., 226 USPQ
502 (TTAB 1985) (descriptive versus suggestive).
To the extent that the term is used by other dental professionals, Applicant argues
“There is little evidence of such use. Moreover, the use, if any, that has been provided,
should not be deemed persuasive as those competitors are, in the Applicant’s view,
making unauthorized use and potentially infringing upon Applicant’s trademark and
may soon have to answer to Applicant for these transgressions.”12
III. Analysis.
This case is marked by a heartening degree of agreement between the Examining
Attorney and Applicant as to the two words composing CLONE MODEL. As noted,

10 Applicant’s brief, p. 12&n.1, 4 TTABVUE 13. Applicant also notes, irrelevantly, that “based
upon AcronymFinder.com, the applied-for Trademark is not a well-known or popular
acronym for the specific wording here.” Applicant’s brief, p. 13, 4 TTABVUE 14. There has
been no suggestion that the term is an acronym.
11 Applicant’s brief, p. 7, 4 TTABVUE 8, citing, e.g., In re Tennis in the Round, 199 USPQ
496, 498 (TTAB 1978).
12 Applicant’s brief, p. 13, 4 TTABVUE 14.
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Applicant has disclaimed the term MODEL13 because its identification of services
includes “the custom manufacture of dental models” exemplified in its specimen:
14
The Examining Attorney has noted the disclaimer.15
As for the term CLONE, the Examining Attorney has relied upon the British
definition in the Collins English Dictionary: “a person or thing bearing a very close
resemblance to another person or thing.” We have taken judicial notice of the
American English definition, “a person or thing very much like another,” and of
Applicant’s Dictionary.com definition: “to produce a copy of or imitation of.”16
Although one definition is a noun and the other is a verb, they are essentially
synonymous: a clone is a duplicate or replica of another thing; an exact copy.
That describes Applicant’s models. Its webpages, which it submitted as its
specimen of use, claim that “The 5 AXIS CLONE model is an exact replica” of the

13 Applicant’s brief, p. 10, 4 TTABVUE 11.
14 Applicant’s specimen, Sept. 24, 2014, p.1.
15 Examining Attorney’s brief, 6 TTABVUE 5.
16 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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dental components used in dental implants. Applicant repeatedly touts the “exact
replica” it can produce of dental crowns, abutments (i.e., supports), coping (i.e., caps),
and bridges ordered by dentists for their patients.17
“Evidence of the context in which a mark is used on labels, packages, or in
advertising material directed to the goods is probative of the reaction of prospective
purchasers to the mark.” In re Abcor Development, 200 USPQ at 218; In re Promo Ink,
78 USPQ2d 1301, 1303 (TTAB 2006). And Applicant’s webpages are clearly directed
toward dental professionals as the prospective purchasers of its services. See In re
Stereotaxis, Inc., 77 USPQ2d at 1089-90 (relevant public is the medical profession).
Moreover, the excerpts from third-party websites show dentists using CLONE to
describe a type of dental implant, which is encompassed by Applicant’s services.
Applicant’s reliance on No Nonsense Fashions, 226 USPQ 502 (TTAB 1985) in
support of its argument that its mark is suggestive, is misplaced:
The three-part test described in No Nonsense Fashions has been
superseded in the Federal Circuit by the rule that we apply here,
enunciated in In re Gyulay, 3 USPQ2d 1009, In re Chamber of Commerce
of the U.S., 102 USPQ2d 1217, and DuoProSS, 103 USPQ2d 1753; see In
re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (rejecting the tests set
out in No Nonsense Fashions). Under the current standard, there is no
requirement that the Examining Attorney prove that others have used
the mark at issue or that they need to use it, although such proof would
be highly relevant to an analysis under Section 2(e)(1). The correct test is
whether the phrase forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the
goods. As the Federal Circuit has said:

A mark is merely descriptive if it “‘consists merely of words
descriptive of the qualities, ingredients or characteristics of’ the
goods or services related to the mark.” [Citing In re Oppedahl &

17 Applicant’s specimen, Sept. 24, 2014.
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Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004).] One
articulation of that rule … is that a mark is merely descriptive if
it “conveys information regarding a function, or purpose, or use of
the goods.”
In re Fat Boys Water Sports LLC, 118 USPQ2d at 1514.

Under that well-established standard, Applicant’s mark does not require its target
audience of dental professionals to exercise any imagination or to follow a multi-stage
reasoning process to determine the characteristics of Applicant’s services. The terms
CLONE and MODEL—one defined, the other disclaimed—are immediately
comprehensible to this professional audience. There is nothing in the record to
suggest that the combination of these terms into a phrase conveys any meaning
distinct from their respective individual definitions. Applicant cannot prevent its
professional competitors or the public from using these terms together to describe
duplicate dental models. See Abcor Dev., 200 USPQ at 217. In sum, as the foregoing
analysis has shown, Applicant’s mark, CLONE MODEL, merely describes its custom
manufacture of duplicate dental models.
Decision: The refusal to register Applicant’s mark CLONE MODEL is affirmed.