American Orthodontics Corporation

Trademark Trial and Appeal Board

Apr 19, 2013

No. 76655313 (T.T.A.B. Apr. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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American Orthodontics Corporation
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Serial No. 76655313
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Lloyd L. Zickert for American Orthodontics Corporation.

Sara Benjamin, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
_____

Before Quinn, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
American Orthodontics Corporation seeks registration of the mark shown
below

for
Serial No. 76655313
2

Orthodontic appliances and supplies, namely, bands,
brackets, ligatures, springs, buccal tubes, attachments,
curing lights, archwires, palatal arches, facebows,
headgear, impression trays; and orthodontic instruments,
namely, wire cutters, wire bending and crimping pliers,
archwire crimpers, ligature cutters and benders, ligature
directors and removers, ligature pliers, pin cutters, pin
benders, band slitters, band seaters, band contouring
pliers, band removers, bracket removers, adhesive/cement
removers and scalers, bracket and tube holders, tweezers,
crimping pliers, cap-removing pliers, self-ligating bracket
tools, archwire end benders, enamel strippers, coil spring
and elastic force measuring tools, convertible cap
removers, cement-mixing spatulas, mouth mirrors,
bracket height gauges, and micrometers
In the application, applicant describes the mark’s design as a “fanciful eagle.”1
The examining attorney refused registration of applicant’s mark under
Section 2(d) of the Act, on the ground that applicant’s mark, when used in
connection with applicant’s goods, so resembles the previously-registered mark AO,
in typed format, as to be likely to cause confusion. The cited mark is the subject of
Registration No. 3628725 (the “’725 Registration) for, inter alia,
“surgical, medical, dental, and veterinary implants of
biodegradable and non-biodegradable materials, in
particular for osteosynthesis, musculoskeletal surgery,
maxillofacial and spine surgery; artificial limbs, artificial
teeth, bone pins, bone nails, bone screws and bone plates,
angulated plates, compression plates, hip screws and hip
plates, pedicle screws and pedicle hooks, intramedullary
nails, splints, cerclage wires, bone clamps and bone
staples; endoprosthesis, in particular endo-joint-
prosthesis, intramedullary plugs; prostheses and
reinforcements for ligaments and tendons; apparatus and
instruments for stereo-tactical and computer-aided

1 Application Serial No. 76655313, filed February 17, 2006 based on asserted first use
dates of January 2005.
Serial No. 76655313
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surgery, in particular, gastroscopes, laryngoscopes, probes
and surgical knives; bone drills, rasps and saws,
distractors, bone forceps, elevators, retractors, chisels,
impactors, internal and external fixators, pelvic clamps,
surgical drills, drill guides, aiming devices; trays and
cases for instruments and implants of the aforesaid kind;
surgical sutures; artificial bones and limbs for medical
insertion purposes;”2

and Registration No. 3944379 (the “’379 Registration”) for

“surgical, medical, and veterinary implants of non-
biodegradable and biodegradable materials, namely, bone
pins, bone nails, bone screws and bone plates, angulated
plates, compression plates, hip screws and hip plates,
internal and external distractors, pedicle screws and
pedicle hooks, spinal rods and plates, disc replacements,
resorbable plates and cages, intramedullary nails,
cerclage wires, cables, bone clamps, bone staples, bone
cements, pastes, putties and ceramics, bone substitutes,
allograft implants, chips, strips, and surgical instruments
to implant same; bone graft extenders and bone growth
factors all used for bone void fillers and bone
regeneration; instruments for the mixing and delivery of
flowable implants; intramedullary plugs; surgical,
medical, and veterinary instruments and apparatus,
namely, probes, surgical knives, bone drills, rasps, saws,
power and hand tools, bone forceps, elevators, retractors,
chisels, impactors, internal and external fixators, pelvic
clamps, surgical drills, drill guides, aiming devices;
surgical diagnostic instrumentation; devices for computer
guided surgery; trays and cases for instruments and
implants; all for use in connection with osteosynthesis,
musculoskeletal, maxillofacial, and spine surgery.”3

After the refusal was made final and applicant’s request for reconsideration
was denied, applicant appealed. Applicant and the examining attorney filed briefs.

2 Filed November 14, 2000, issued May 26, 2009. In addition to the Class 10 goods
listed, this registration also includes goods and services in International Classes 9, 16, 35
and 41.
3 Filed July 26, 2002, issued April 12, 2011.
Serial No. 76655313
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Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no
evidence or argument was presented and which cannot be analyzed based on the
face of the application and cited registrations may nonetheless be applicable, we
treat them as neutral.
The Marks
Turning first to the similarity of the marks, we must compare them “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
That is, we may not dissect the marks into their various components. In re Nat’l
Serial No. 76655313
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Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
The test is not whether the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
In this case, the dominant element of applicant’s mark is the initials AO,
which is identical to the mark in the cited registrations. Indeed, it is well-settled
that “if a mark comprises both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services.” See M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB
2010); see also, CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
Serial No. 76655313
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1983) (“in a composite mark comprising a design and words, the verbal portion of
the mark is the one most likely to indicate the origin of the goods to which it is
affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
Katushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).
Furthermore, as the examining attorney pointed out during prosecution of the
application, where, as here, the marks at issue consist of a series of letters,
confusion is more likely, and this is especially so where the letters are, as here,
identical. Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d
1840, 1841 (Fed. Cir. 1990); Dere v. Institute for Scientific Information, Inc., 420
F.2d 1068, 164 USPQ 347, 348 (CCPA 1970); Cluett, Peabody & Co., Inc. v. J.H.
Bonck Co., Inc., 156 USPQ 401 (CCPA 1968).
In short, because the dominant element of applicant’s mark is identical to the
entirety of the cited mark, we find that the parties’ marks look similar, sound
identical and convey very similar commercial impressions.4 They are, in short,
quite similar when considered in their entireties. This factor therefore weighs
heavily in favor of a finding of likelihood of confusion.
The Parties’ Goods, Services and Channels of Trade
Turning to the similarity of the parties’ goods and services, and their
channels of trade, it is well-settled that the goods need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
the goods are related in some manner or that the circumstances surrounding their

4 Neither applicant nor the examining attorney presented evidence or argument
regarding the meaning, if any, of “AO.”
Serial No. 76655313
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marketing are such that they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks used, to a mistaken belief
that the parties’ goods originate from or are in some way associated with the same
source or that there is an association between the sources of the parties’ goods.
Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991);
Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex
Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not
whether purchasers would confuse the goods or services, but rather whether there
is a likelihood of confusion as to the source of the goods or services. In re Rexel Inc.,
223 USPQ at 832.
Here, applicant offers orthodontic appliances, supplies and instruments,
while registrant offers surgical, medical and veterinary instruments and devices, as
well as dental implants and artificial teeth, as set forth in the ‘725 Registration.
The evidence of record establishes that the parties’ goods are related. In fact,
according to the Declaration of Lee H. Tuneberg, applicant’s Executive Vice
President (“Tuneberg Dec.”),5 orthodontics is a specialty within the broader field of
dentistry. Tuneberg Dec. ¶ 7 (“Orthodontists receive specialized education beyond
dental school to understand and learn the proper procedures for aligning and
straightening teeth.”). In other words, orthodontists are dentists, and their

5 Applicant’s April 2, 2012 Office Action response.
Serial No. 76655313
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instruments and other supplies are a specific, specialized subset within the general
field of dental instruments and supplies. Therefore, because the ‘725 Registration
includes dental implants and artificial teeth, the parties’ dental supplies are
related.
Furthermore, the examining attorney introduced evidence establishing that
orthodontic and dental supplies sometimes originate from the same source, and are
sometimes even offered under the same mark, and also introduced evidence
establishing that orthodontic and surgical supplies also sometimes originate from
the same source. For example, the examining attorney highlights the following:
• Integra LifeSciences Corporation offers orthodontic,
dental and surgical supplies under the mark MILTEX®;

• Hu-Friedy offers orthodontic and dental supplies;

• Nordent Manufacturing, Inc. offers orthodontic and
dental supplies;

• Patterson Dental Supply Inc. offers orthodontic and
dental supplies;

• Sklar Instruments offers orthodontic and dental
supplies;

• Sun Dental Laboratories, LLC offers orthodontic
supplies and crowns, bridges and dentures.

Exhibits to Denial of Request for Reconsideration, May 2, 2012. This evidence also
establishes that materials for dental surgery are sometimes referred to simply as
“surgical” supplies or instruments, which further supports the finding that the
parties’ goods are related. Moreover, registrant’s identification includes surgical
Serial No. 76655313
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“instruments and apparatus” for “maxillofacial” surgery, and therefore could
encompass instruments and apparatus for dental surgery.
The examining attorney has also established through a number of use-based
federal trademark registrations that several third-parties offer surgical instruments
or devices on the one hand and orthodontic or dental instruments or devices on the
other. August 2, 2011 and November 8, 2011 Office Action Exhibits (registrations
owned by, inter alia, Acme-Monaco Corp., Sirio Pharma Co., Ltd., Total Joint
Orthopedics, Inc., John Yah-Sung Kim, Integra York, PA, Inc., Renew Biocare USA,
Inc., Bonart Co., Ltd., Bio-Spine Corp., AetonMedical LLC, Trademark Holdings of
Illinois LLC, Sin-Sistema de Implante Nacional Ltda., Ortosim, S.A. de C.V.,
Osstem Co., Ltd., Gnatus Equipamento Medico Odontologicos Ltda. and Bernhard
Forester GmbH). “Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in commerce, although not
evidence that the marks shown therein are in use on a commercial scale or that the
public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); In re Davey Prods. Pty. Ltd., 92 USPQ2d
1198, 1203 (TTAB 2009).
Because the parties’ identifications contain no limitations with respect to
channels of trade, we must presume that the parties’ goods are offered in all
ordinary channels of trade and to all ordinary classes of customers for those goods
Serial No. 76655313
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and services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Venture Out
Properties LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB
2007). And as the examining attorney’s evidence establishes, orthodontic, dental
and surgical products may and do at times travel in the same channels of trade.
Mr. Tuneberg’s testimony that dentists do not use orthodontic products “in
the general practice of dentistry,” Tuneberg Dec. ¶ 4, is almost beside the point.
The other evidence of record establishes that relevant consumers are accustomed to
orthodontic, dental and surgical products being offered by the same source in the
same channels of trade, and while applicant may only market its products in
orthodontic journals, meetings or trade shows, applicant’s customers may elsewhere
encounter registrant’s dental and surgical products, just as registrant’s customers
may encounter applicant’s products.6
In short, the evidence establishes that registrant’s goods are related to
applicant’s goods, and neither applicant’s nor registrant’s identifications contain
any limitations as to channels of trade. Therefore, this factor also weighs in favor of
a finding of likelihood of confusion.

6 Applicant is incorrect in stating that “[t]o uphold the likelihood of confusion issue, it
must be found that the goods of the registrant are marketed in the same channel of trade as
the goods of applicant.” Applicant’s Reply Brief at 3. In fact, “[i]t is a well settled principle
of trademark law that it is not necessary that the goods of the parties be similar or
competitive, or even that they move in the same channels of trade to support a holding of
likelihood of confusion.” In re International Telephone and Telegraph Corp., 197 USPQ at
911.

Serial No. 76655313
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Other Factors
Applicant argues that orthodontists and dentists are sophisticated. Even
assuming this is true, it is well-settled that sophisticated purchasers are not
immune from source confusion, and this is especially true where, as here, they are
faced with similar marks and related goods. In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988). This factor is therefore neutral.
Mr. Tuneberg’s testifies that applicant has used its mark for over eight years
without encountering actual confusion. Tuneberg Dec. ¶ 12. However, “[t]he test is
likelihood of confusion not actual confusion … It is unnecessary to show actual
confusion in establishing likelihood of confusion.” Weiss Associates, 902 F.2d at
1546, 14 USPQ2d at 1842-43. The Court of Appeals for the Federal Circuit has
observed “[a] showing of actual confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite is not true, however. The
lack of evidence of actual confusion carries little weight, especially in an ex parte
context.” In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (internal citation
omitted). While eight years is not an insignificant amount of time, there is no
evidence as to the amount of use and whether there has been any meaningful
opportunity for confusion to occur. We therefore find this factor to be neutral.
As stated, in the absence of relevant evidence or argument, we find that the
remaining likelihood of confusion factors are also neutral.
Serial No. 76655313
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Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicant’s arguments and evidence, even if not
specifically discussed herein. In view of our findings that the marks are similar, the
goods and services related and the channels of trade, as identified, overlap, we find
that use of applicant’s mark is likely to cause confusion with the cited registered
mark as applied to registrant’s goods. To the extent that applicant’s arguments
raise any doubt concerning the likelihood of confusion, we resolve any such doubt in
registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.