B & D Dental Corp.

Trademark Trial and Appeal Board

Jul 25, 2014

No. 85591438 (T.T.A.B. Jul. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re B & D Dental Corp.
_____

Serial No. 85591438
_____

Garron M. Hobson and Eric E. Westerberg of Thorpe North and Western, LLP.,
for B & D Dental Corp.
Zachary B. Cromer, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Kuhlke, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
B & D Dental Corp. (“Applicant”) seeks registration on the Principal Register of
the mark DIGITALPREP (in standard characters) for, as amended,
dental software for automatically generating an electronic
model of a cutting guide positionable on a patient’s teeth
and marking margins on the electronic model of a
patient’s teeth in International Class 9.1 2

1 Application Serial No. 85591438 was filed on April 6, 2012, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 Applicant erroneously classified its goods in International Class 10. The
classification has been amended to International Class 9. We note the Examining
Serial No. 85591438
- 2 -

The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that Applicant’s mark is merely descriptive. When the refusal was made
final, Applicant appealed and requested reconsideration. After the Examining
Attorney denied the request for reconsideration, the appeal was resumed. We affirm
the refusal to register.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a
term is merely descriptive is determined not in the abstract, but in relation to the
goods for which registration is sought, the context in which it is being used on or in
connection with the goods, and the possible significance that the term would have to
the average purchaser of the goods because of the manner of its use; that a term

Attorney, in his brief, indicated the classification requirement is still outstanding,
but Applicant did not appeal this issue. In view thereof, the requirement is moot
and the reclassification has now been entered into the record. The better practice
would have been for the Examining Attorney to have telephoned the Applicant to
resolve the reclassification issue following Applicant’s amendment of the
identification to include goods in class 9 only, and then to have issued a Priority
Action/Examiner’s Amendment reclassifying the goods and making Final the
refusal under Section 2(e)(1). See TMEP 708.03 (“A priority action may be used for a
final or nonfinal refusal or requirement.”)

Serial No. 85

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Serial No. 85591438
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preparation for surgery - Mosby’s Medical
Dictionary, 8th edition © 2009 Elsevier; and
• “colloquially, to prepare skin or other body surface
for an operative procedure, usually by applying
antiseptic solutions.” – Medical Dictionary for the
Dental Profession – © Fairlex 2012.
Office Action date March 29, 2013.
The Examining Attorney also submitted evidence from several websites
establishing the growing use of digital technology in the dental field, including the
use of computer aided design (CAD) and computer aided manufacture (CAM).
Examples include the following:
• Excerpt from an article: “In the case of digital impressioning, the
creators of the impression-taking devices have introduced
scientific developments in the fields of optics, digitation, and
CAD/CAM into the art of capturing impressions of prepared
teeth and surrounding structures to develop 3D digital and even
physical representations from which dental restorations can be
made.”… Nathan S. Birnbaum and Heidi B. Aaronson, Digital
Dental Impression Systems, Inside Dentistry (February 2011);
accessed online at www.dentalaegis.com”;
• Excerpt from an article: “Digital dental impressioning is a
disruptive technological advancement that so surpasses the
accuracy and efficiency of former techniques for obtaining
replicas of prepared teeth for the purpose of fabricating
restorations that its adoption by dentists is rapidly eclipsing the
use of elastomeric impression materials.” Id.;
• Promotional material for Cliosoft dental imaging software:
“Seamlessly sync your digital imaging exams with your practice
management patient chart or appointment book” Sota Imaging –
www.sotaimaging.com;
• Blog for Digital Dentist: The latest developments in digital
imaging technology are now the foundation of a digital practice
that will incorporate implantology, orthodontics and
prosthodontics.” www.thedigitaldentist.blogspot.com; and
Serial No. 85591438
- 5 -

• Information regarding CAD/CAM: “To say the future of
dentistry is in CAD/CAM is an understatement. It’s here now
and it’s here to stay. Computer-aided design/computer-aided
manufacturing technology for dentistry is allowing us to provide
even better care for patients.” The Dentistry IQ Network,
www.dentaleconomics.com; and
• Information regarding marginal integrity: “As with all
restorations, marginal integrity is critical to the long-term
success of the restoration. The replication of the tooth margin in
traditional lab restorations is directly affected by various
impression materials, techniques, shrinkage, or expansion of
both the impression material and or the dental stone, the
amount of time elapsed between the impression and the model
work, the accuracy of the die trim, and the expansion and/or
contraction associated with the final casting of the restoration …
… What could take hours or sometimes days in a lab, takes
minutes on the computer [when] [t]he CAD portion of the
process begins …” Id.
Final Office Action dated March 29, 2013.
Without addressing the evidence, Applicant argues that
[t]he term “DIGITAL” within the mark DIGITALPREP is
not merely descriptive because the term is vague and
lacks specificity. The term “digital” is associated with a
wide variety of entirely different products and services.
The term is used in association with computers, software,
photography, music, storage media, cell phones, radios,
timekeeping, imaging equipment – almost any modern
electronic device,4 and
the term “prep” within applicant’s mark communicates
only a vague and indirect meaning to consumers and is
therefore not descriptive under the imagination test. The
examining attorney submits that “prep” merely described
preparation for a procedure. While applicant does not
concede this point, even if the Examining Attorney is
correct, the term would still be too vague and indefinite to
be merely descriptive. Even the Evidence submitted by
the Examining Attorney demonstrates this ambiguity, as

4 Appeal Brief, unnumbered pp. 3-4, 6 TTABVUE at 4-5.
Serial No. 85591438
- 6 -

the term “prep” or “preparation” is used in connection
with preparing dentists for their board exams.5
Applicant’s argument is not well-taken. As stated supra, “[w]hether a term is
merely descriptive is determined not in the abstract, but in relation to the goods for
which registration is sought, the context in which it is being used on or in
connection with the goods, and the possible significance that the term would have to
the average purchaser of the goods because of the manner of its use; that a term
may have other meanings in different contexts is not controlling.” In re Chamber of
Commerce of the U.S., 102 USPQ2d at 1219. Applicant’s goods are dental software
for automatically generating an electronic model of a cutting guide positionable on a
patient’s teeth and marking margins on the electronic model of a patient’s teeth.
The mark immediately conveys to purchasers, i.e., dentists, that applicant’s
software is used in preparing for dental procedures by digitally creating models of
patients’ teeth.
[The following information on Applicant’s website6 supports our finding that the
term DIGITALPREP describes both a feature and a function of Applicant’s goods:

5 Appeal Brief, unnumbered pp. 6-7, 6 TTABVUE at 7-8.
6 www.origincadcam.com
Serial No. 85

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Serial No. 85591438
- 8 -

covered software is related to Applicant’s software. Similarly, the goods in the final
registration (fecal sample specimen collection, transport and preparation device) are
not related to Applicant’s goods. Moreover, this issue was addressed by our primary
reviewing court when determining the nature of the term “ULTIMATE” in
registered trademarks. The Court stated:
The record in this case contains many prior registrations
of marks including the term ULTIMATE. These prior
registrations do not conclusively rebut the Board’s finding
that ULTIMATE is descriptive in the context of this
mark. As discussed above, the term ULTIMATE may tilt
toward suggestiveness or descriptiveness depending on
context and any other factor affecting public perception.
The Board must decide each case on its own merits. In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227
USPQ 417, 424 (Fed. Cir. 1985). Even if some prior
registrations had some characteristics similar to Nett
Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.
In re Nett Designs Inc., 57 USPQ2d at 1566. As with the Nett Designs case, the
third-party registrations introduced do not rebut our findings that DIGITALPREP
is descriptive of Applicant’s goods.
Decision: The refusal to register Applicant’s mark DIGITALPREP is affirmed.