Delta Dental of California

Trademark Trial and Appeal Board

Jun 21, 2012

No. 77921755 (T.T.A.B. Jun. 21, 2012)

Mailed: 6/21/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Delta Dental of California
________

Serial No. 77921755
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John C. Baum and Kathleen E. Letourneau of Owen, Wickersham
& Erickson for Delta Dental of California.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Grendel and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Delta Dental of California filed, on January 27, 2010,
an application to register the mark MY SMILEKIDS (in
standard characters) for “providing a website featuring
information in the field of dental care; providing
information in the field of dental care.”1

1 Applicant claims first use anywhere and first use in commerce
on January 22, 2010. Applicant claims ownership of Registration
No. 2823405 of the mark SMILEKIDS (in standard characters) for
“providing a web site concerning dental care and distributing
information relating thereto.”
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 77921755

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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the
previously registered mark MYSMILE for “providing health
information”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant requested an oral hearing, but subsequently
withdrew the request.
Applicant argues that the examining attorney “ignored
the integrity of unitary elements in each mark – by
dividing up the coined composites ‘SMILEKIDS’ and ‘MYSMILE’
– and disregarded the connotative differences between the
marks owing to the fact that [applicant’s] MY SMILEKIDS
mark refers directly to [applicant’s] long-standing
incontestable registration for SMILEKIDS (Reg. No.
2,823,405) for the same services. [Applicant’s] SMILEKIDS
registration has subsisted on the Register for more than
eight years.” (Brief, p. 1). Further, applicant contends
that the common elements of the marks (MY and SMILE) are
weak, that the dissimilar commercial impressions engendered

2 Registration No. 2849640, issued June 1, 2004; combined
Sections 8 and 15 affidavit accepted and acknowledged.
Ser. No. 77921755

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by the marks are so significant that consumers will likely
be able to distinguish the marks, and that the coexistence
of applicant’s prior registered mark with the cited mark is
probative to show that there is no realistic likelihood of
confusion. It is applicant’s position that the common
pronoun MY should be discounted in comparing the marks
because, in marks such as applicant’s where it precedes an
existing brand name, it serves as a conventional means to
connote a user-defined service and thus has a limited
source identifying function. Applicant also points to the
common use of SMILE by other registrants in the dental
field. In support of its arguments, applicant submitted
dictionary listings of the term “my”; a printout of its
registered mark; and copies of seven third-party
registrations of marks beginning with “MY”, and ten third-
party registrations of marks that include the term “SMILE,”
all for dental-related services.3

3 Applicant also submitted for the first time with its appeal
brief excerpts of four third-party websites showing use of “my
smile” in connection with dental information services. The
examining attorney objected to consideration of this evidence due
to its untimely submission. The objection is sustained in view
of Trademark Rule 2.142(d) providing that the record in an
application should be complete prior to the filing of an appeal,
and that the Board ordinarily will not consider additional
evidence submitted after the appeal is filed. See TBMP §1207.01
(3d ed. 2011). In any event, even if considered, this evidence
would not result in a different decision on the merits.
Ser. No. 77921755

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The examining attorney maintains that the marks
MYSMILE and MY SMILEKIDS are similar, with the KIDS portion
of applicant’s mark being relegated to a subordinate
source-identifying role due to its descriptiveness of the
intended audience for the services. Also, according to the
examining attorney, the services are closely related. As
to applicant’s ownership of a prior registration, the
examining attorney accords little relevance to this fact.
The examining attorney also discounts the absence of actual
confusion. In support of the refusal, the examining
attorney introduced third-party registrations and excerpts
of third-party websites to show that the provision of both
health and dental information may emanate from the same
source.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Ft. Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
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We first turn to compare the services. Applicant does
not seriously dispute that the involved services are
related; rather it implicitly concedes the point. (Brief,
pp. 18-19). According to applicant, it operates “a [user-
defined] website where their children can learn about
dental health in a fun way, with stories, games and tips.”
(Brief, p. 17). It is not necessary that the respective
services be identical or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). The issue is not whether consumers would confuse
the services themselves, but rather whether they would be
confused as to the source of the services.
We make our comparison of the services, including
between the respective channels of trade and classes of
purchasers, based on the services as they are identified in
the application and the cited registration. In re Giovanni
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Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). If the cited
registration describes the services broadly, and there is
no limitation as to their nature, type, channels of trade,
or class of purchasers, it is presumed that the
registration encompasses all services of the type
described, that they move in all normal channels of trade,
and that they are available to all classes of purchasers.
See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1638
(TTAB 1990) (“We have no authority to read any restrictions
or limitations into the registrant’s description of
goods.”). Accordingly, if the cited registration has a
broad identification of services, an applicant does not
necessarily avoid a likelihood of confusion merely by more
narrowly identifying its related services. See, e.g., In
re Diet Center, Inc., 4 USPQ2d 1975 (TTAB 1987) (noting
that, although applicant had limited its identification to
indicate that its goods were sold only through franchised
outlets offering weight-reduction services, the cited
registration’s identification contained no limitations as
to trade channels or classes of customers and thus it must
be presumed that registrant’s goods travel through all the
ordinary channels of trade).
In the present case, registrant’s recitation of
services broadly reads “providing health information,”
Ser. No. 77921755

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while applicant’s services are recited a bit more
specifically as “providing a website featuring information
in the field of dental care; providing information in the
field of dental care.” Because of the broad language in
registrant’s recitation, registrant’s services are presumed
to encompass the provision of all types of health
information, including information pertaining to dental
care. Further, registrant’s services, as worded in the
recitation, would include providing such information by way
of a website. When the services are compared in this
manner, as they must for purposes of our likelihood of
confusion analysis, the services are legally identical or
otherwise closely related. In view thereof, the trade
channels and purchasers are presumed to be identical.
Lest there be any doubt about this du Pont factor, the
examining attorney submitted third-party registrations,
each showing a single registered mark for services of
providing health and dental information. Given that dental
wellness is part of an individual’s overall health, this
fact comes as no surprise. “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,
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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
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
The legal identity between the services, trade
channels and purchasers are factors that weigh heavily in
favor of finding a likelihood of confusion between the two
marks.
As for the marks, we examine the similarities and
dissimilarities between applicant’s mark MY SMILEKIDS and
registrant’s mark MYSMILE in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test,
under the first du Pont factor, 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
that confusion as to the source of the services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
Ser. No. 77921755

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normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Where, as in the
present case, the marks appear in connection with legally
identical services, the degree of similarity between the
marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
Applicant’s mark MY SMILEKIDS and registrant’s mark
MYSMILE are similar in sound and appearance; the first
three syllables (comprising two words) of applicant’s mark
are identical to the entirety of registrant’s mark. See
Loreal S.A. v. Marcon, 102 USPQ2d 1434, 1438-39 (TTAB 2012)
(it is often the first part which is likely to be impressed
upon the mind of a purchaser and remembered). The absence
or presence of a space between MY and SMILE in the
respective marks is not a factor in distinguishing the two
marks. See, e.g., Stockpot, Inc. v. Stock Pot Restaurant,
Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576,
222 USPQ 665 (Fed. Cir. 1984) (“There is no question that
the marks of the parties [STOCKPOT and STOCK POT] are
confusingly similar. The words are phonetically identical
and visually almost identical.”); and In re Best Western
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Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984)
(“There can be little doubt that the marks [BEEFMASTER and
BEEF MASTER] are practically identical.”).
In terms of connotation, we recognize that the
presence of the term KIDS in applicant’s mark conveys the
meaning that applicant’s dental information features
information about children. This idea is absent from the
cited mark.
We believe, however, that the similarities between the
marks outweigh any differences, and that the differences
will not have any meaningful impact on the overall
commercial impressions of the marks. Rather, we find that
the marks engender similar overall commercial impressions.
Even those who notice the differences will not ascribe them
to differences in the source of the services, but will see
the marks as variations of each other, pointing to a single
source. That is to say, consumers familiar with
registrant’s services rendered under its mark MYSMILE will
assume that registrant has extended its line of providing
health information services to include providing dental
information about children under the mark MY SMILEKIDS.
The similarity between the marks MYSMILE and MY
SMILEKIDS is a factor that weighs in favor of a finding of
likelihood of confusion.
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In considering the marks, we have taken into account
the third-party registrations relied upon by applicant in
an attempt to diminish the distinctiveness of registrant’s
mark. The registrations are not evidence of use of the
marks or proof that consumers are familiar with such marks
as to be so accustomed to the existence of similar marks in
the marketplace that they can distinguish between them
based on small differences. Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982). In any event, even if we were to find, as
applicant urges, that registrant’s mark is weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of a similar
mark for legally identical services. See In re Farah Mfg.
Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
Applicant’s argument based on its ownership of
Registration No. 2823405 of SMILEKIDS for “providing a web
site concerning dental care and distributing information
relating thereto” is of little relevance to our likelihood
of confusion analysis in this case. The focus of the
analysis in this case must be on the mark applicant seeks
to register, MY SMILEKIDS, and not on the other mark
applicant already registered. See In re Cynosure Inc., 90
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USPQ2d 1644, 1645 (TTAB 2009). In saying this, we
recognize that applicant has not couched its argument in
terms of a family of marks, but rather that through use
over eight years “the SMILEKIDS component of applicant’s MY
SMILEKIDS mark has become a well-recognized source
identifier among consumers” (Brief, p. 1), and that
“consumers will interpret the possessive pronoun ‘MY’ as a
modifier to the name of a distinct service, SMILEKIDS.”
(Reply Brief, p. 7). There is no evidence of record to
suggest that prospective consumers of applicant’s services
under the mark MY SMILEKIDS will even be aware of
applicant’s mark SMILEKIDS. Nevertheless, we remain of the
opinion that the use of MY in applicant’s mark enhances the
likelihood of confusion with the cited mark MYSMILE rather
than detracts from it. See In re Chatam International
Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004).
The absence of actual confusion evidence is not
troubling. See In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
(“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In
re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
applicant’s corporate president’s unawareness of instances
Ser. No. 77921755

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of actual confusion was not conclusive that actual
confusion did not exist or that there was no likelihood of
confusion). In any event, the lack of evidence of actual
confusion carries little weight, J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965),
especially in an ex parte context. Moreover, applicant
only began use of its mark in January 2010; thus, there has
been a minimal period of contemporaneous use of the marks.
The record is devoid of probative evidence relating to the
specific extent of use of registrant’s and applicant’s
registered marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Further, the coexistence of
applicant’s prior registration with the cited registration
is entitled to little weight; as we noted earlier, the
addition of MY in the applied-for mark brings it closer to
the cited mark. Accordingly, the du Pont factor of the
length of time during and conditions under which there has
been contemporaneous use without evidence of actual
confusion is considered neutral.
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Based on the record before us, we conclude that
consumers familiar with registrant’s “providing health
information” rendered under the mark MYSMILE would be
likely to mistakenly believe, upon encountering applicant’s
mark MY SMILEKIDS for “providing a website featuring
information in the field of dental care; providing
information in the field of dental care,” that the services
originated from or are associated with or sponsored by the
same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.