Colleen P. Taylor PC

Trademark Trial and Appeal Board

Mar 24, 2017

No. 86622613 (T.T.A.B. Mar. 24, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Colleen P. Taylor PC
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Serial No. 86622613
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Nicole M. Deforge of Fabian Vancott,
for Colleen P. Taylor PC.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Greenbaum, Masiello, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Colleen P. Taylor PC (“Applicant”) seeks registration on the Principal Register of
the mark KID’S DENTISTRY WITH A WOMAN’S TOUCH in standard characters
for services identified as “pediatric dentistry,” in International Class 44.1
The Trademark Examining Attorney has refused registration of the mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so

1 Application Serial No. 86622613 was filed on May 7, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark,
and first use of the mark in commerce, at least as early as January 2001.
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resembles the mark DENTISTRY WITH A WOMAN’S TOUCH in standard
characters (DENTISTRY disclaimed) for “dentistry services,” shown in Registration
No. 2477971,2 as to be likely, when used in connection with Applicant’s services, to
cause confusion, mistake, or deception.
After the Examining Attorney made the refusal final, Applicant timely appealed.
Applicant and the Examining Attorney have filed briefs. We affirm the refusal to
register.
I. Evidentiary Issue
We must resolve an evidentiary issue before turning to the merits. Applicant
attached to its appeal brief pages from the United States Patent and Trademark
Office’s TESS database showing third-party registrations of marks in which the word
“KID’S” appears without a disclaimer of the word. 4 TTABVUE 10-17 (Exhibit B).
The Examining Attorney objected in her appeal brief to the submission of the
registrations on the ground that they were untimely because they were offered for
the first time on appeal. 6 TTABVUE 4.3
Rule 2.142(d) of the Trademark Rules of Practice, 37 C.F.R. § 2.142(d), provides
that the “record in the application should be complete prior to the filing of an appeal.
Evidence should not be filed with the Board after the filing of a notice of appeal.”
Because the third-party registrations were offered for the first time with Applicant’s
appeal brief, they are untimely. We sustain the Examining Attorney’s objection to

2 The cited registration issued on August 14, 2001 and was renewed on April 20, 2011.
3 The Examining Attorney subsequently mentioned this evidence in passing in her appeal
brief, but maintained her position that it was not properly of record. 6 TTABVUE 9.
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this evidence and have given it no consideration in our decision. See, e.g., In re Fiat
Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014)
(sustaining objection to registration referenced in appeal brief where a copy of
registration had not been submitted prior to appeal); In re Licensing Inc., 49 USPQ2d
1379, 1380 n.3 (TTAB 1998) (third-party registration first submitted with appeal
brief untimely and not considered).
II. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used in connection with the goods
or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based upon an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
In every case under Section 2(d), two key considerations are the similarities
between the marks and the similarities between the goods 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 [or services] and differences
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in the marks”). We turn first to the similarity of the services, and the related factor
regarding the similarity of their trade channels and classes of customers.
A. Similarity of the Services, Trade Channels, and Classes of Customers
Our determination of the similarity of the services is based upon the
identifications of services in the application and in the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The identification of services in the cited registration is “dentistry services.” The
identification of services in the application is “pediatric dentistry.” Applicant argues
that these services are different because “Applicant is seeking registration of its Mark
only in connection with ‘pediatric dentistry,’ and Registrant does not use its Mark in
connection with pediatric dentistry,” 4 TTABVUE 5, and because Applicant “is a
pediatric dentistry office, while the owner of the cited registration focuses on cosmetic
dentistry and medical procedures, such as teeth whitening and Botox, as shown in
Exhibit A.” 4 TTABVUE 4.4
As discussed above, we must assess the similarity of the services on the basis of
the services identified in the application and in the cited registration, not on the basis
of extrinsic evidence showing the specific services that are currently provided under
either mark. Stone Lion, 110 USPQ2d at 1162 (in assessing similarity of parties’

4 The referenced Exhibit A consists of pages from the website of the cited registrant that
Applicant made of record during prosecution. February 19, 2016 Response to Office Action at
3-5.
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services, “[e]ven assuming there is no overlap between [the parties’] current
customers, the Board correctly declined to look beyond the application and registered
marks at issue.”); Octocom, 16 USPQ2d at 1787 (“The authority is legion that the
question of registrability of an applicant's mark must be decided on the basis of the
identification of [services] set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s [services], the particular
channels of trade or the class of purchasers to which sales of the [services] are
directed.”).
The identification of services in the cited registration, “dentistry services,” is broad
and unrestricted, and must be presumed to encompass “all the [services] of the nature
and type described therein.” In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB
2006). “Pediatric dentistry” is, by definition, a type of “dentistry.” The general
“dentistry services” identified in the cited registration encompass the specific
“pediatric dentistry” services identified in the application, and the services are thus
legally identical. This du Pont factor supports a finding of a likelihood of confusion.
Because Applicant’s services and the registrant’s services are legally identical,
they are presumed to travel in the same channels of trade to the same classes of
customers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012).5 This du Pont factor also supports a finding of a likelihood of confusion. We
turn now to the du Pont factor regarding similarity of the marks.

5 Applicant argues that its “patients are children, and Registrant’s patients are adults,” and
that it “does not provide services under its Mark in the same geographic market as the owner
of the cited registration.” 4 TTABVUE 5. These arguments are irrelevant to our analysis of
the similarity of the trade channels and classes of customers under du Pont. The classes of
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B. Similarity of the Marks
This factor focuses on “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The
proper test is not a side-by-side comparison of the marks, but instead whether the
marks are sufficiently similar in terms of their commercial impression such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The legal identity of the
services reduces the degree of similarity between the marks that is necessary for
confusion to be likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004); In re Bay State Brewing Co., 117 USPQ2d 1958,
1960 (TTAB 2016).
Applicant’s mark KID’S DENTISTRY WITH A WOMAN’S TOUCH contains the
entirety of the cited mark DENTISTRY WITH A WOMAN’S TOUCH. “[L]ikelihood
of confusion is often found where the entirety of one mark is incorporated within
another.” In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (BARR
GROUP for various computer hardware and software design services found to be

customers for the unrestricted “dentistry services” identified in the cited registration are
deemed to include children, Jump Design, 80 USPQ2d at 1374, and, because Applicant “is
seeking a geographically unrestricted registration, the Board is constrained to evaluate
similarities in terms of potentially nationwide markets . . .” In re Integrity Mutual Ins. Co.,
216 USPQ 895, 896 (TTAB 1982).
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similar to BARR for various engineering and consulting services because “the
addition of GROUP in Applicant’s BARR GROUP mark is insufficient to distinguish
it from the registered mark.”); see also In re Toshiba Medical Sys. Corp., 91 USPQ2d
1266, 1271 (TTAB 2009) (VANTAGE TITAN for medical magnetic resonance imaging
diagnostic apparatus found to be similar to TITAN for a medical ultrasound device);
In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS
for food items found to be similar to MACHO for restaurant services). This case is a
textbook illustration of this principle. For the reasons discussed below, we find that
the marks are very similar in appearance, sound, connotation, and commercial
impression, and that the addition of the word KID’S to the cited mark to form
Applicant’s mark does not avoid a likelihood of confusion.
Applicant argues that the Examining Attorney has improperly dissected its mark
by focusing on the words DENTISTRY WITH A WOMAN’S TOUCH rather than on
the word KID’S, which Applicant argues is the dominant portion of its mark because
it is a “unique term” and the first word in the mark. 4 TTABVUE 3-4. Applicant’s
argument is unpersuasive given the nature and structure of the marks.
“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on
only part of a mark. On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, 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.” In re Nat’l Data
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Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We give greater weight, in
our comparison of the marks in their entireties, to the shared phrase WITH A
WOMAN’S TOUCH. The other wording, DENTISTRY in the cited mark and KID’S
DENTISTRY in Applicant’s mark, is generic or, at best, highly descriptive with
respect to the services and therefore has little, if any, source-identifying capability.
In the context of both marks, the phrase WITH A WOMAN’S TOUCH suggests
that the services provided under the marks have some sort of special qualities or
attributes because they are rendered by women.6 The record is devoid of evidence that
the distinctiveness of the phrase WITH A WOMAN’S TOUCH has been reduced by
third-party uses or registrations of marks that contain the phrase or otherwise refer
to female service providers.
The marks at issue are similar in appearance, sound, and meaning to the extent
that they share the words DENTISTRY WITH A WOMAN’S TOUCH. The word
KID’S in Applicant’s mark is a point of difference in appearance and sound. In
meaning, however, the addition of KID’S does little to distinguish the marks, because
DENTISTRY, as it appears in the cited mark, is understood to include dental services
rendered to children as well as to adults. Contrary to Applicant’s claim, 4 TTABVUE
4, there is nothing “unique” about the use of the word KID’S in connection with
pediatric dentistry services. The word KID’S modifies DENTISTRY in Applicant’s

6 A page from the registrant’s website made of record by Applicant confirms that the
registrant, Dorothy Gogol-Mach, is a female dentist. Text on the page that appears under a
depiction of the cited mark states that Dr. Gogol-Mach and her colleagues “are professional
women dedicated to the service of others.” 4 TTABVUE 7.
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mark, and it identifies, in a colloquial manner, the specific class of customers to whom
pediatric dentistry services are directed. See Shen Mfg., 73 USPQ2d at 1356 (the word
“kids” in mark THE RITZ KIDS for ready-made and tailored clothing was
“undeniably used to indicate that the product was geared towards children”). The
word KID’S is generic for or, at best, merely descriptive of, pediatric dentistry
services. See In re Planalytics, Inc., 70 USPQ2d 1453, 1455-56 (2004) (GASBUYER
merely descriptive of on-line risk management services in the field of pricing and
purchasing decisions for natural gas because it immediately conveyed that the
services were intended for individuals who purchased natural gas). As used in
Applicant’s mark, the word KID’S has little, if any, source-identifying significance
notwithstanding its position as the first word in the mark.7
Additions or deletions to marks may be sufficient to avoid a likelihood of confusion
if the marks in their entireties convey significantly different commercial impressions
or the matter common to the marks is not likely to be perceived by purchasers as
distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed.

7 Applicant cites Palm Bay for the proposition that “because customers are more inclined to
focus on the first word, prefix, or syllable in any trademark or service mark, the first word in
a mark is the most ‘prominent feature’ of a mark.” 4 TTABVUE 2-3 (emphasis in original).
The case does not stand for that broad proposition. The Federal Circuit held in Palm Bay
that the Board had properly given more weight to the word VEUVE (French for “widow”)
than to the name CLIQUOT in comparing the opposer’s VEUVE CLIQUOT marks for
champagne to the applicant’s VEUVE ROYALE mark for sparkling wine. This conclusion
was based on the fact that VEUVE was the first word in both marks and that it was “an
arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as
a trademark.” 73 USPQ2d at 1692. As discussed above, the word KID’S is not arbitrary or
conceptually strong when it is used in Applicant’s mark.
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Cir. 2011) (CAPITAL CITY BANK not confusingly similar to CITIBANK due in part
to frequent use of “City Bank” in banking industry); Shen Mfg., 73 USPQ2d at 1356-
57 (THE RITZ KIDS for clothing creates different impression from RITZ for kitchen
textiles). Considering the marks in their entireties, giving more weight to the shared
phrase DENTISTRY WITH A WOMAN’S TOUCH than to the word KID’S, we find
that the addition of the word KID’S to the words DENTISTRY WITH A WOMAN’S
TOUCH in Applicant’s mark is clearly insufficient to differentiate the marks in any
of the means of comparison.
Neither criterion for differentiation discussed above is satisfied. Far from creating
a significantly different commercial impression, Applicant’s mark KID’S
DENTISTRY WITH A WOMAN’S TOUCH simply creates the impression that the
registrant of DENTISTRY WITH A WOMAN’S TOUCH offers services to children.
As discussed above, the matter common to the marks, the words DENTISTRY WITH
A WOMAN’S TOUCH, is not merely descriptive of the services,8 and there is nothing
in the record to suggest that the phrase DENTISTRY WITH A WOMAN’S TOUCH
has been diluted by third-party use or registration of similar marks for dentistry
services.
When considered in their entireties, the marks KID’S DENTISTRY WITH A
WOMAN’S TOUCH and DENTISTRY WITH A WOMAN’S TOUCH look alike, sound

8 Even assuming that the cited mark DENTISTRY WITH A WOMAN’S TOUCH is relatively
weak because it is suggestive, it is well settled that such marks are entitled to protection
against confusingly-similar marks, see, e.g., King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974), and there is no evidence in the record that
any dentists other than Applicant and the registrant use marks that identify themselves as
providing any form of “DENTISTRY WITH A WOMAN’S TOUCH.”
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alike, and have very similar connotations and commercial impressions. This du Pont
factor supports a finding of a likelihood of confusion.
Conclusion
All of the du Pont factors for which there is record evidence support a finding of a
likelihood of confusion. The services, channels of trade, and classes of customers are
legally identical, and the marks are very similar. We find that confusion as to the
source or sponsorship of Applicant’s services is likely.
Decision: The refusal to register is affirmed.