Crosstex International

Trademark Trial and Appeal Board

Jun 25, 2004

No. 76428814 (T.T.A.B. Jun. 25, 2004)

Mailed: June 25, 2004
Paper No. 8
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Crosstex International
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Serial No. 76428814
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Myron Amer of Myron Amer, P.C. for Crosstex International
John E. Michos, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Crosstex International has filed an application to
register the mark "ISOLATOR" for "dental face masks."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "ISOLATOR," which is registered for a "dental device for use
1 Ser. No. 76428814, filed on July 5, 2002, which alleges as the basis
thereof a date of first use anywhere and in commerce of September 1,
1996. Applicant claims ownership of Reg. No. 2,143,277, which issued
on March 10, 1998 in connection with the mark "ISOLATOR" for "face
masks for the non-dental medical field"; combined affidavit §§8 and
15.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76428814
2
in a patient's mouth to hold cotton rolls,"2 as to be likely to
cause confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3
Turning first to consideration of the respective marks,
applicant essentially contends that they are highly suggestive
and therefore neither is entitled to a broad scope of protection.
Specifically, applicant asserts that the marks at issue "are
merely the addition of the ending 'or' to the word 'isolate,' a
word which is highly descriptive of the functioning of the goods
and, as such, is of minimal effect in conveying source-
identification."
2 Reg. No. 1,502,931, issued on September 6, 1988, which sets forth a
date of first use anywhere and in commerce of July 7, 1982; combined
affidavit §§8 and 15.
3 The court, in particular, pointed out that: "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."
Ser. No. 76428814
3
The Examining Attorney, on the other hand, maintains
that not only are applicant's and registrant's marks identical in
all respects, but that "registrant's mark ISOLATOR must be
considered to be a 'strong' mark which is entitled to a 'wide
range' of protection from the registration of confusingly similar
marks." In particular, the Examining Attorney insists that:
Registrant's mark ISOLATOR is, at worst,
mildly suggestive of healthcare products.
There is no evidence that the term "isolator"
is used or has ever been used in connection
with dental products other than as the
registered trademark of the registrant. In
the absence of such evidence, it must be
concluded that the mark ISOLATOR is a strong
mark without any relevant meaning of any kind
in relation to registrant's goods. Words
that may be in common linguistic use but
which, when used with products or services
they represent, neither suggest nor describe
any characteristic of those goods or
services, are entitled to protection from the
registration of confusingly similar marks.
....
While we concur with applicant that, when used in
connection with applicant's and registrant's respective goods,
the mark "ISOLATOR" is indeed highly suggestive of such goods, we
nonetheless agree with the Examining Attorney that registrant's
mark is entitled to protection from the registration of
applicant's mark. Specifically, as applicant points out in its
reply brief, the information which it made of record concerning
registrant's "ISOLATOR" product states that the use thereof is
"[t]o isolate an area of the mouth and keep it dry." In a like
manner, the use of applicant's "ISOLATOR" dental face mask, as
applicant indicated in its response to the initial Office Action,
"is to isolate the wearer from an airborne virus." Thus, in each
Ser. No. 76428814
4
instance, the mark "ISOLATOR" is highly suggestive of a device
which is designed to isolate or provide isolation.
However, the fact that such a mark is weak in terms of
its trademark significance does not mean that registrant's mark
is entitled to protection only against the same or a virtually
identical mark for the same or essentially the same goods. It is
well established, instead, that even a weak mark is entitled to
protection against the registration of the same or a
substantially similar mark for identical and/or closely related
goods. See, e.g., Plus Products v. Physicians Formula Cosmetics,
Inc., 198 USPQ 111, 114 (TTAB 1978); and In re Textron Inc., 180
USPQ 341 (TTAB 1973), citing Eastern Industries, Inc. v. Waterous
Co., 289 F.2d 952, 129 USPQ 422, 424 (CCPA 1961). Here, not only
is applicant's mark identical to registrant's mark in sound and
appearance, but it is essentially the same in connotation and
contains no additional element which might serve to distinguish
such mark from registrant's mark. Accordingly, the overall
commercial impression engendered by applicant's "ISOLATOR" mark
is virtually identical to that conveyed by registrant's
"ISOLATOR" mark, such that if the respective marks were to be
used in connection with the same or closely related goods,
confusion as to the source or sponsorship thereof would be likely
to occur. As stated by our principal reviewing court in, for
example, King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974):
Confusion is confusion. The likelihood
thereof is to be avoided, as much between
"weak" marks as between "strong" marks, or as
between a "weak" and a "strong" mark.
Ser. No. 76428814
5
Turning, then, to the goods at issue, applicant insists
that the evidence, consisting of copies of eight prior use-based
registrations which the Examining Attorney relies upon to support
the contention in his final refusal that "manufacturers market
dental face masks and other goods like the registrant's under the
same trademark," fails to show that applicant's dental face masks
and registrant's dental devices for use in a patient's mouth to
hold cotton rolls are so related that confusion as to the origin
or affiliation thereof would be likely when marketed under the
identical mark "ISOLATOR."4 Specifically, applicant urges that
(footnote omitted):
One registration, however, is
applicant's ([No.] 2,327,775) and another
five ... have to be discounted because they
relate to medical and not to dental use (Nos.
2,739,120, 2,383,136, 2,451,731, 2,197,281,
and 1,983,715). The two remaining
registrations, 2,151,499 and 2,106,889[,]
relate to face masks, but probably those worn
by the dentist and not the patient[,] and the
other goods thereof do not include those of
the nature of registrant's goods.
The Examining Attorney, however, maintains that
applicant's and registrant's goods "are closely related goods
which, contrary to applicant's assurances, are marketed and sold
in the same channels of trade" to the same customers. In
particular, and notably without any discussion of applicant's
4 Applicant also sets forth, as a plausible explanation as to why its
registration for the mark "ISOLATOR" for "face masks for the non-
dental medical field" issued over the registration cited as a bar
herein, the asserted fact that "[t]here is a distinct difference
between face masks for dental use, [which is] the product of this
application, and face masks for non-dental medical use, as evidenced
by applicant's ownership of Registration No. 2,143,277[as] noted in
the application as filed."
Ser. No. 76428814
6
criticism of the evidence relied upon, the Examining Attorney
claims that:
The evidentiary record consists of
copies of [eight] federal trademark
registrations which show that the same
business entities provide both dental face
masks and a wide variety of other dental
devices under the same trademark.
Accordingly, customers for these particular
goods are accustomed to seeing them offered
for sale under the same ... marks by the same
companies.
Any doubt, the Examining Attorney adds, as to whether there
consequently is a likelihood of confusion "should be resolved in
favor of the prior registrant and against the applicant."
It is well settled that, for the purpose of
demonstrating that there is a likelihood of confusion, an
applicant's goods and those of a registrant need only be related
in some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be encountered by
the same persons under situations that would give rise, because
of the marks employed in connection therewith, to the mistaken
belief that they originate from or are in some way associated
with the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). One way of showing such a relationship is to make
of record copies of prior use-based registrations for marks
which, in each instance, set forth goods which are the same as or
substantially similar to those listed in both the application on
Ser. No. 76428814
7
appeal and the cited registration. While, admittedly, such
registrations are not evidence that the marks shown therein are
in use or that the public is familiar with them, it is
nevertheless well established that they have some probative value
in that they serve to suggest that the goods listed therein are
of the kinds which may emanate from a single source. See, e.g.,
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
In the present case, we agree with applicant to the
extent that, of the eight prior registrations made of record by
the Examining Attorney, only the three which list various dental
supply items have sufficient probative value since the remaining
five cover medical and surgical supplies rather than dental
products. Nonetheless, we concur with the Examining Attorney
that customers for applicant's and registrant's goods would
consider the respective products to be related dental supply
items. In this regard, it is noted that three registrations
specifically set forth a variety of such dental supplies as "face
masks," on the one hand, and "cotton filled sponges," "cotton
rolls ... [and] cotton-tipped applicators," or "mouthguard
polypropylene sheets for use by dentists," on the other hand.5
Particularly telling, in fact, is the prior registration which
applicant claims to own, which covers "[s]upplies for dentists[,]
namely, exdontia sponges, cotton rolls, bracket covers, face
5 See, respectively, Reg. Nos. 2,106,889, 2,327,775 and 2,151,499.
Ser. No. 76428814
8
masks, head rest covers, cotton-tipped applicators, examination
gloves and tongue depressors." Furthermore, as is made clear by
the product information furnished by applicant with respect to
the "dental device for use in a patient's mouth to hold cotton
rolls" listed in the cited registration, "[e]ach clamp firmly
holds two cotton rolls" and is "[a]daptable to cotton roll sizes
1, 2 and 3," while the product's touted benefits are that it is
"[e]asy to insert any size cotton roll and is patient friendly."
In view thereof, customers for applicant's dental face
masks and registrant's dental devices or clamps for holding
cotton rolls in a patient's mouth would regard such goods as
commercially related items of dental supplies which, like
sponges, cotton rolls, cotton-tipped applicators and examination
gloves, would be commonly used by dentists and dental hygienists
in their care of patients. We thus agree with the Examining
Attorney’s conclusion that the goods at issue herein are closely
related and would be sold through the same channels of trade
(e.g., distributors of dental supplies) to the same classes of
purchasers (e.g., dentists, dental hygienists and dental office
managers).
Accordingly, we conclude that dental professionals, who
are familiar or acquainted with registrant's "ISOLATOR" mark for
its "dental device for use in a patient's mouth to hold cotton
rolls," would be likely to believe, upon encountering applicant's
identical "ISOLATOR" mark for "dental face masks," that such
closely related dental supply items emanate from, or are
sponsored by or associated with, the same source. Such
Ser. No. 76428814
9
customers, for instance, could reasonably regard applicant's
"ISOLATOR" dental face masks as part of an expanded product line
from registrant or vice versa. Moreover, to the extent that we
nevertheless may entertain any possible doubt as to this
conclusion, we resolve such doubt, as we must, in favor of the
registrant. See, e.g., In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); and In
re Pneumatiques Caoutchouc Manufacture et Plastiques Kelber-
Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.