David J. Fox, D.M.D.v.David S. Hornbrook

Trademark Trial and Appeal Board

Aug 25, 2004

No. 91121292 (T.T.A.B. Aug. 25, 2004)

Mailed: August 25, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
David J. Fox, D.M.D.
v.
David S. Hornbrook
_____
Opposition No. 91121292 to application Serial No. 75866104
filed on December 7, 1999
_____
Howard C. Miskin of Stoll, Miskin & Badie for David J. Fox,
D.M.D.
Freling E. Baker of Brown Martin Haller & McClain for David S.
Hornbrook.
______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
David S. Hornbrook has filed an application to register
the mark "DENTISTRY FOR THE QUALITY CONSCIOUS" for "dental
services."1
David J. Fox, D.M.D. has opposed registration on the
ground that, inter alia, he "has been using the phrase 'Dentistry
for the Quality Conscious' in his business since 1986 as ... a
1 Ser. No. 75866104, filed on December 7, 1999, which alleges a date of
first use anywhere and in commerce of June 1994. The word "DENTISTRY"
is disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91121292
2
descriptive mark for promotion and marketing of his professional
services, the General Practice of Dentistry"; that "[a]s such,
his use of this word mark and phrase precedes use by applicant
for the [above noted] Service Mark by eight years"; that "[t]he
phrase 'Dentistry for the Quality Conscious' became distinctive
of [opposer's] ... services by reason of exclusive and continuous
use in commerce for a period exceeding five years before any
claim of distinctiveness (or use) was made by the Applicant";
that "[t]he proposed Service Mark has subsequently come into
common use by a number of dentists in the United States, and as
such has become a generic term for professional services both by
dentists in general and specialty practice"; that "[s]uch a
generic term ... is incapable of functioning as a registrable ...
service mark"; that "[t]he service mark proposed by the Applicant
is not inherently distinctive" and "has not become distinctive of
the applicant's ... services"; and that "[f]or the above
reasons," opposer "has not previously made application ... to
register the mark 'Dentistry for the Quality Conscious', instead
using it as a common generic descriptive term for his general
dental practice."
As an additional ground for opposition, opposer alleges
that "[u]pon formation of the Pennsylvania Corporation 'David J.
Fox, D.M.D., P.C.' in June of 1998, a corporation formed in part
to engage in the practice of dentistry, ... the distinctive
phrase 'Quality Dentistry for Discerning Adults' was put into
use"; that, with respect to "high quality, multidisciplinary,
specialty level dental care and general adult dental services
Opposition No. 91121292
3
provided by a dentist or dentists, with specialty certificates in
prosthodontics and/or periodontics," an "[a]pplication was made
... for a service mark on the phrase 'Quality Dentistry for
Discerning Adults'" and a registration therefor was granted;2 and
that "[a]pplicant's mark, as used on or in connection with the
specified ... services, so resembles the registered mark 'Quality
Dentistry for Discerning Adults' as to be likely to cause
confusion, or to deceive."
Applicant, in his answer, has denied the salient
allegations of the opposition. In addition, as affirmative
defenses, applicant has asserted among other things "the
equitable defenses of laches, estoppel and acquiescence,"
alleging that "[a]pplicant has been using his mark continuously
since at lease [sic] June of 1994 without objection from
Opposer."
The record consists of the pleadings; the file of the
involved application; and, as opposer's case-in-chief, his
testimony, and the exhibits thereto, together with a timely filed
notice of reliance on a certified copy of the registration
pleaded in the opposition, which shows that while such
registration is subsisting, it is actually owned by David J. Fox
(a Pennsylvania corporation) rather than by opposer (an
individual) as stated in the timely filed notice of reliance
which accompanies such copy. Applicant did not take testimony or
2 Reg. No. 2,311,366, issued on January 25, 2000, which sets forth a
date of first use anywhere and in commerce of June 19, 1998. The word
"Dentistry" is disclaimed.
Opposition No. 91121292
4
otherwise submit any evidence. Only opposer filed briefs3 and an
oral hearing was not requested.
Inasmuch as there is no evidence to support applicant's
asserted affirmative defenses, such defenses will not be given
further consideration. The issues to be determined herein,
therefore, are whether the mark "DENTISTRY FOR THE QUALITY
CONSCIOUS" is a generic designation for "dental services";
whether opposer has priority of use of the mark "QUALITY
DENTISTRY FOR DISCERNING ADULTS" for his various dental services;
and, if so, whether applicant's mark so resembles opposer's mark
as to be likely to cause confusion as to source or sponsorship
when such marks are respectively used in connection with the
parties' services.
According to the record, opposer is a dentist who,
since 1984, specializes in prosthodontics and periodontics.
Opposer, while formerly a sole practitioner, has since August
1998 rendered his specialty level dental care and general adult
dental services under the mark "QUALITY DENTISTRY FOR DISCERNING
ADULTS" through a Pennsylvania corporation named David J. Fox,
3 Besides confirming that applicant did not file a brief, opposer's
reply brief merely asserts, notably without citation to any authority,
that "[t]he Board should treat the fact that Applicant has failed to
respond in any way to Opposer's Trial Brief as Applicant's conceding"
the issues herein. However, while it is indeed the better practice
for a defendant, if it believes that the plaintiff has failed to
sustain its burden of proof in the case, to file a brief indicating
the inadequacy of the plaintiff's evidence or otherwise arguing the
insufficiency of the ground or grounds on which the proceeding has
been brought, there is no requirement that a defendant do so. See
Trademark Rule 2.128(a)(3); and TBMP § 801.02(b) (2d ed. rev. 2004)
["The filing of a brief on the case is optional, not mandatory, for a
party in the position of defendant"]. Consequently, it cannot be said
that applicant has conceded the issues herein by failing to file a
brief on the case.
Opposition No. 91121292
5
which he formed in June 1998 and is the "principal shareholder"
thereof. (Dep. at 4-5.) Such corporation is the owner, as noted
above, of the pleaded registration of the mark "QUALITY DENTISTRY
FOR DISCERNING ADULTS" for "high quality, multidisciplinary,
specialty level dental care and general adult dental services
provided by a dentist or dentists, with specialty certificates in
prosthodontics and/or periodontics."
Opposer finished dental school and received a D.M.D
degree in 1980. Thereafter, he received a certificate for his
general practice dental residency in 1981; he received a
certificate in periodontics in 1983; and he received a
certificate in periodontal prosthesis and fixed prosthodontics in
1984. Opposer has practiced dentistry in Jenkinstown,
Pennsylvania since August 1998. Prior thereto, he practiced
dentistry in Doylestown, Pennsylvania from July 1997 to July 1998
and practiced such in Philadelphia, Pennsylvania from 1982 until
July 1997.
Opposer promotes his dental practice through an
Internet website and has "also ... done some direct mail as well
as some newspaper advertisements." (Id. at 9.) He first used
the mark "QUALITY DENTISTRY FOR DISCERNING ADULTS" in connection
with his dental services in June 1998. In addition, opposer has
used the slogan or phrase "DENTISTRY FOR THE QUALITY CONSCIOUS"
in various business and promotional materials to indicate the
nature or category of his dental services. Specifically, since
August 1986, he has used such designation on patient appointment
Opposition No. 91121292
6
cards for his dental practice and, beginning in July 1997, the
designation was used on his business cards and letterhead while
practicing in Doylestown. Opposer, in December 1990, had new
year's cards bearing the designation mailed to his patients and,
since 1994, has also used such designation in connection with
promotional materials on cosmetic dentistry and on pamphlets
describing his dental practice, which he distributes to new and
prospective patients. The latter, for example, features such
slogan on the front cover in the following manner:
DAVID J. FOX, D.M.D.
Dentistry for the Quality Conscious
(Exhibit 6.) Opposer does not consider the phrase "DENTISTRY FOR
THE QUALITY CONSCIOUS" to be a mark for his dental services
"[b]ecause this phrase has, over the years, come into common use
and it's used by a number of dentists around the United States."
(Dep. at 22.)
As examples of third-party use of the slogan "DENTISTRY
FOR THE QUALITY CONSCIOUS" in a generic manner, that is, as a
designation of dental services of a certain kind or category,
opposer has furnished display ads by two different dentists. One
such advertisement appeared in the December 2002 issue of Main
Line Today and touts a dental practice in King of Prussia,
Pennsylvania, while the other ran in the 2002 Milwaukee Yellow
Pages and advertises a dental practice in Milwaukee, Wisconsin.
Opposer has also submitted an excerpt from a book by William G.
Dickerson, D.D.S. entitled The Exceptional Dental Practice
(1992), which prominently features on the front cover thereof the
Opposition No. 91121292
7
slogan "DENTISTRY FOR THE QUALITY CONSCIOUS." Opposer notes that
he has heard the book's author use such phrase while viewing a
videotape of one of the author's lectures and observes in
particular that:
Dr. Dickerson has been a prominent
speaker on dentistry, he's given many
continuing education courses all around the
United States ... and I think that this
[book] is the source of many doctors around
the United States learning or first hearing
the phrase "Dentistry for the quality
conscious."
(Id. at 26.)
As a further example of third-party use in a generic
manner of the phrase "DENTISTRY FOR THE QUALITY CONSCIOUS,"
opposer has submitted a printout of an Internet website for
Waterside Dental Group, P.C. in New York, New York which, as
indicated below, uses such phrase on the first page thereof in
essentially the same way as does opposer in his advertising:
Waterside Dental Group
Dentistry for the Quality Conscious
(Exhibit 15). In addition, opposer has furnished the results of
his Internet searches of the slogan "DENTISTRY FOR THE QUALITY
CONSCIOUS," which he conducted on December 9 and 10, 2001 using,
respectively, the search engines "Yahoo" and "Dogpile." Such
searches revealed numerous instances "of dentists and dental
practices across the United States that are using the phrase
'Dentistry for the quality conscious' as a phrase to promote
their dental practice," including both applicant and opposer.
Opposition No. 91121292
8
(Dep. at 33.) A representative sample thereof is set forth below
(emphasis added):
"Joseph J. Vamo Dentistry for the
Quality Conscious, Edina, 952-925-3555." --
www.mspmag.com/feature.asp?featureid=2110;
"Dr. Joe Vamo, Dentistry for the Quality
Conscious, named 'Top Dentist' by Mpls St.
Paul Magazine." -- www.edinasmiles.com;
"Our dental "Golden Rule" allows us to
do dentistry for the quality conscious." --
www.tucson-dentist.com/fees.html;
"Dr. Fallon and his entire staff have
been specially trained to help create the
smile of your dreams. This is aesthetic
dentistry for the quality conscious." --
www.shoresmiles.com;
"SOUTHWEST COSMETIC DENTAL. EXCEPTIONAL
DENTISTRY FOR THE QUALITY CONSCIOUS." --
www.swcosmeticdental.com;
"Dentistry for the Quality Conscious
Donald G. Katz DDS, FAGD 1195 Bustleton
Avenue Philadelphia, PA 19116" -- www.-
drdonkatz.com;
"Museum Dental Center, Exceptional
Dentistry For The Quality Conscious, General
Dentistry, Dental Implants, Cosmetic
Dentistry & Laser Dentistry." -- www-hsc.-
usc.edu/~khalifeh/;
"Dentistry for the Quality Conscious To
acquaint you with our office, we're offering
all new adult patients $25.00 off your first
out-of-pocket expense." -- www.hycomb.com/o_-
fpr,_smile.html;
"Our staff is genuinely interested in
each patient. Bloomington Dental is
'Dentistry for the Quality Conscious.'" --
www.southernutah.com/exec/index/Business/-
Companies/Medical_and_Fitness;
"High Quality, Cutting-edge Dentistry
for the Quality Conscious Patient." -- www.-
dvcnetwork.com/briglia; and
Opposition No. 91121292
9
"Jim Rolfe DDS. Responsible Dentistry
for the Quality-Conscious 963-2329" -- www.-
independent.com/classifieds/healthyself.html
Finally, while acknowledging that he does not know of
any incidents of actual confusion between applicant's use of the
phrase "DENTISTRY FOR THE QUALITY CONSCIOUS" in connection with
dental services and opposer's use of the mark "QUALITY DENTISTRY
FOR DISCERNING ADULTS" for various dental services, opposer
testified that he believes that confusion is likely. The reason
therefor, opposer maintains, is not only "because of the
similarity between the mark[s]," but is also due to the fact that
"[w]e get patients as a result of the advertising that we do on
the Internet web site." (Id. at 28.) As opposer explained,
"[o]n Internet web engines[,] if the words 'quality' and
'dentistry' are simultaneously entered as a search phrase, both
marks will appear and have appeared and that's a source of
confusion." (Id.)
Turning first to the issue of genericness, opposer
argues that the record establishes that applicant "does not have
exclusive use of the DENTISTRY FOR THE QUALITY CONSCIOUS mark, as
this mark has become generic through use by many dentists located
in the United States." We agree with opposer that, as shown by
the numerous third-party uses thereof, such phrase is so commonly
used in the field of dentistry as a designation for a high level
of, or excellence in, dental care services as to be generic, in
the sense that the slogan essentially denotes a category or class
of dentistry to the general public as well as to members of the
dental profession.
Opposition No. 91121292
10
As set forth by our principal reviewing court in H.
Marvin Ginn Corp. v. International Association of Fire Chiefs,
Inc., 728 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986), "[a]
generic term is the common descriptive name of a class of goods
or services." Such case also states the following as the legal
test for whether a mark, including one which constitutes a slogan
or phrase, is considered to be generic:
Determining whether a mark is generic
therefore involves a two-step inquiry:
First, what is the genus of goods or services
at issue? Second, is the term sought to be
registered ... understood by the relevant
public primarily to refer to that genus of
goods or services?
Id. However, a showing of the genericness of a mark requires
"clear evidence" thereof. In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Moreover, as noted in In re American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999), not only is it the
case that "[t]he correct legal test" for genericness of phrases
or slogans "is set forth in Marvin Ginn," but such test "is to be
applied to a ... phrase [or slogan] ... as a whole, for the whole
may be greater than the sum of its parts," and the test "requires
evidence of 'the genus of goods or services at issue' and the
understanding by the [relevant] general public that the mark [or
phrase or slogan at issue] refers primarily to 'that genus of
goods or services.'"
Applying the above legal test, we must first identify
the category of services in issue. In this case, the category or
type of services identified in applicant's involved application
Opposition No. 91121292
11
is clear: "dental services." Opposer, likewise, plainly renders
"dental services." Thus, for purposes of determining whether the
phrase or slogan "DENTISTRY FOR THE QUALITY CONSCIOUS" is
generic, we find that the category of services under the first
step of the test in Marvin Ginn is dental services.
Turning, then, to the second prong of the Marvin Ginn
analysis, the critical inquiry in this case is whether the phrase
"DENTISTRY FOR THE QUALITY CONSCIOUS" is understood by the
patients and dental professionals, who clearly constitute the
relevant public, primarily to refer to dental services. We find,
as indicated above, that the evidence clearly shows that such
slogan is generic in that it is understood by the relevant public
as primarily referring to the category or class of dental
services which is characterized by an emphasis on quality, that
is, a high level of, or excellence in, the providing of patient
dental care. Opposer has provided numerous instances showing
that the phrase "DENTISTRY FOR THE QUALITY CONSCIOUS" is used, as
a whole, not only by the parties themselves but also by many
third parties, in print advertising and through the Internet, as
a slogan to promote and designate the type or category of dental
services which they offer to patients seeking dental care.
Opposer, therefore, has demonstrated that such slogan would be
understood by the relevant public as being generic with respect
to dental services.
Considering next the remaining ground of priority of
use and likelihood of confusion, we note with respect to the
issue of priority of use that the record establishes that
Opposition No. 91121292
12
opposer, as an individual, first used the mark "QUALITY DENTISTRY
FOR DISCERNING ADULTS" for his various dental services in June
1998 and has continued to use such mark, through the professional
corporation he organized at such time and is the principal
shareholder of, since August 1998. However, as to applicant's
use of the asserted mark "DENTISTRY FOR THE QUALITY CONSCIOUS,"
we observe that because there is no testimony or other proof as
to his alleged date of first use anywhere and in commerce of June
1994, the earliest date upon which applicant can rely in this
proceeding is the December 7, 1999 filing date of his involved
application. See, e.g., Lone Star Mfg. Co., Inc. v. Bill
Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974);
Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192,
125 USPQ 406, 407 (CCPA 1960); and Miss Universe, Inc. v. Drost,
189 USPQ 212, 213 (TTAB 1975). Inasmuch as such date is
obviously subsequent to the June 1998 date of first use proven by
opposer, opposer has established that he has priority of use
herein.
Turning, therefore, to the issue of likelihood of
confusion, we find upon consideration of the evidence bearing on
the factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), which are relevant
with respect thereto, that opposer has not satisfied his burden
of demonstrating that confusion as to source or sponsorship is
likely to occur. In particular, it is pointed out in this regard
that, as indicated in Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), the two key
Opposition No. 91121292
13
considerations in any likelihood of confusion analysis are the
similarity or dissimilarity in the goods and/or services at issue
and the similarity or dissimilarity of the respective marks in
their entireties.4 As to the former, such factor clearly favors
opposer since, as identified in the involved application,
applicant's "dental services" encompass opposer's specialty level
dental care and general adult dental services. We consequently
agree with opposer that "[t]here can be no serious dispute that
the services at issue are [legally] identical" in significant
part.5 However, as to the latter factor, and assuming for
purposes of this discussion that applicant's mark is at most no
more than highly suggestive of his services rather than a generic
designation therefor, we disagree with opposer's contention that
"[t]he marks at issue here are very similar, and will cause
actual confusion for customers, since the terms 'quality' and
'dentistry' appear in both marks."
Specifically, not only has opposer admitted that he is
unaware of any incidents of actual confusion which have arisen
from the contemporaneous use of the marks at issue, but we find
that such marks are sufficiently dissimilar that confusion is not
4 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 services] and differences
in the marks." 192 USPQ at 29.
5 As a necessary corollary thereof, the du Pont factor pertaining to
the similarity or dissimilarity of established, likely to continue
trade channels also favors opposer. Nonetheless, and contrary to two
other du Pont factors mentioned by opposer in his initial brief, his
mark has not been shown to be famous nor has it been demonstrated that
the conditions under which and buyers to whom dental services are
rendered involve a significant number of "impulse" or emergency
Opposition No. 91121292
14
likely to result from their use in connection with the respective
services. Opposer nonetheless insists that "if an internet [sic]
search is conducted for the words 'quality' and 'dentistry,' both
marks will appear, leading the customer to believe that the
services associated [therewith] are provided by the same
dentist." However, when the highly suggestive marks at issue
herein are considered in their entireties, applicant's "DENTISTRY
FOR THE QUALITY CONSCIOUS" mark is readily distinguishable from
opposer's "QUALITY DENTISTRY FOR DISCERNING ADULTS" mark in sound
and appearance. Although, concededly, the respective marks share
a vague or generalized similarity in connotation in that each
contains the descriptive word "QUALITY" and the generic term
"DENTISTRY," such similarity is outweighed by the aural and
visual differences in the marks. Overall, the highly suggestive
marks at issue herein also engender sufficiently different
commercial impressions. Plainly, in applicant's mark, the term
"QUALITY" is used in reference to the targeted customers for his
"DENTISTRY" practice, that is, those who are "QUALITY CONSCIOUS,"
while in opposer's mark such term refers to his "DENTISTRY"
practice, which is oriented to consumers who are "DISCERNING
ADULTS." Given such differences in overall sound, appearance and
commercial impression, confusion as to the origin or affiliation
of the parties' dental services is not likely to occur.
Consequently, while an Internet search using the words
"quality" and "dentistry" retrieves, as the record shows, both
patients who would not be expected to exercise care or deliberation in
their selection of providers of dental services.
Opposition No. 91121292
15
applicant's website (which like numerous other dental practices
located through such a search is advertised under the slogan
"DENTISTRY FOR THE QUALITY CONSCIOUS") and opposer's website
(which he promotes through the use of the mark "QUALITY DENTISTRY
FOR DISCERNING ADULTS"), our principal reviewing court has
repeatedly cautioned that "[w]e are not concerned with mere
theoretical possibilities of confusion, deception, or mistake or
with de minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal."
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from
Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403,
1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153 USPQ 412 (TTAB
1967). Accordingly, for the reasons discussed above, we find
that the phrase "DENTISTRY FOR THE QUALITY CONSCIOUS," when used
by applicant in connection with dental services, does not so
resemble the mark "QUALITY DENTISTRY FOR DISCERNING ADULTS," as
used by opposer in connection with various dental services, as to
be likely to cause confusion.
Decision: The opposition is dismissed as to the ground
of priority of use and likelihood of confusion, but is sustained,
and registration to applicant is refused, on the ground of
genericness.