Dental Emporium Corp.

Trademark Trial and Appeal Board

Sep 11, 2017

No. 86942024 (T.T.A.B. Sep. 11, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dental Emporium Corp.
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Serial No. 86942024
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Chris Sanchelima of Sanchelima & Associates PA,
for Dental Emporium Corp.

Mark T. Mullen, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Quinn, Wellington and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
Dental Emporium Corp. (“Applicant”) seeks to register on the Principal Register,
pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), the mark DENTAL
EMPORIUM in standard characters for “On-line wholesale and retail store services
featuring dental supplies” in International Class 35.1 The Examining Attorney
refused registration on the ground that the proposed mark is generic and therefore

1 Application Serial No. 86942024, filed March 16, 2016, based on use of the mark in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), stating June 19,
2008 as the date of first use and first use in commerce.
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incapable of distinguishing the identified services, and, alternatively, that the mark
is merely descriptive and that Applicant’s proffer of acquired distinctiveness under
Section 2(f) is insufficient. Applicant responded that its mark is not generic, and
although it did not supplement its evidence of acquired distinctiveness, argued that
its mark should be registered under Section 2(f). When the Examining Attorney made
both refusals final, Applicant appealed. The case is fully briefed.
I. Evidentiary Issues
Before turning to the merits, we sustain the Examining Attorney’s objection to
new evidence Applicant attached to its Appeal Brief, consisting of Google search
results for various terms. Applicant offers no justification for the untimely evidence.
Pursuant to Trademark Rule 2.142(d), “[t]he 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.” 37 C.F.R. § 2.142(d). See also In re Hollywood
Lawyers Online, 110 USPQ2d 1852, 1856-57 (TTAB 2014) (refusing to consider new
evidence attached to the brief). Similarly, we have not considered the third-party
registrations listed in Applicant’s Reply Brief that were not part of the record. As
noted in In re Promo Ink, 78 USPQ2d 1301, 1303-04 (TTAB 2006):
First, the submission of this evidence for the first time in applicant’s briefs
is untimely. 37 CFR § 2.142(d). Second, if applicants or examining attorneys
would like to rely on third-party registrations for support of their position,
they must submit a copy of those registrations. Simply providing a list of
registrations is not sufficient. In re Duofold, Inc., 184 USPQ 638, 640 (TTAB
1974) (“The submission of a list of registrations is insufficient to make them
of record”). Applicant did not do that in this case and, therefore, we will not
consider as evidence the registrations listed in applicant’s briefs.

Serial No. 86942024
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Accordingly, the evidence submitted with or referred to for the first time in
Applicant’s briefs is excluded.2
II. Genericness and Descriptiveness
Applicant has conceded that its mark is at least descriptive, both explicitly in its
brief (“The terms DENTAL and EMPORIUM are each descriptive, individually”)3 and
by seeking registration pursuant to Section 2(f). See The Cold War Museum, Inc. v.
Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)
(“Where an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”). However, Applicant maintains
that its mark is not generic.
A designation is generic if it refers to the genus of services on or in connection with
which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807 (Fed. Cir. 2001) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”)). Whether a proposed

2 Even if we considered the new evidence, it would carry very little weight and would not
change the result in this case. Google search result summaries lack sufficient context and
therefore are of little probative value. See In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828,
1833 (Fed. Cir. 2007) (noting in a descriptiveness case that “[s]earch engine results--which
provide little context to discern how a term is actually used on the webpage that can be
accessed through the search result link--may be insufficient to determine the nature of the
use of a term or the relevance of the search results to registration considerations.”). Similarly,
third-party registrations offered to seek consistent treatment are not persuasive because we
must decide each case on its own merits and are not bound by the allowance of prior
registrations. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001).
3 4 TTABVUE 8 (Applicant’s Brief).
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mark is generic rests on its primary significance to the relevant public. In re American
Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). Making this determination
“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?” Marvin Ginn, 228 USPQ at 530.
The Examining Attorney must establish by clear evidence that a mark is generic. In
re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987); In re American Fertility Soc’y, supra. “Evidence of the public’s
understanding of the mark may be obtained from any competent source, such as
consumer surveys, dictionaries, newspapers and other publications.” In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (internal
quotations omitted).
Because the identification of services in an application defines the scope of rights
that will be accorded the owner of any resulting registration under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), generally “a proper genericness inquiry focuses
on the description of services set forth in the [application or] certificate of
registration.” Id. at 1636 (quoting Magic Wand, 19 USPQ2d at 1552). In this case the
recitation appropriately expresses the genus of services at issue. While the
Examining Attorney asserts that the “genus is not only limited by the identification,”4
we are mindful that “the focus must be on the public’s understanding with respect to

4 6 TTABVUE 5 (Examining Attorney’s Brief).
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the overall genus of … services, not limited to the term’s connection with [Applicant’s]
own [services].” See id. at 1636 n.4. Therefore the ultimate inquiry is whether the
relevant public understands DENTAL EMPORIUM to refer to on-line wholesale and
retail store services featuring dental supplies.
To support the genericness refusal, the Examining Attorney’s evidence consists
only of dictionary definitions of one component word in the mark. The record includes
the following definitions of EMPORIUM:5
• “a store that sells many different types of things;”6
• “a large and often ostentatious retail shop offering for sale a wide variety of
merchandise;”7
• “a large retail store, especially one selling a great variety of articles;”8
• “a store or shop;”9
• “a large retail store selling a wide variety of goods.”10
We also grant the Examining Attorney’s request that we take judicial notice of the
definition from the online American Heritage Dictionary, “a place where various

5 We do not rely on the British English definition from the Cambridge Dictionary, although
we note that its definition of “emporium” is consistent with others in the record. See In re
Future Ads LLC, 103 USPQ2d 1571, 1572 n.2 (TTAB 2012) (declining to take judicial notice
of a Cambridge Dictionary British English definition because “the meaning of the term in
Britain is not necessarily the meaning of the term in the United States” and the Board cannot
“treat a British dictionary as ‘a source whose accuracy cannot reasonably be questioned’”).
6 June 15, 2016 Office Action at 4 (macmillandictionary.com).
7 Id. at 7 (collinsdictionary.com).
8 September 8, 2016 Office Action at 4 (dictionary.com).
9 Id. at 11 (merriamwebster.com).
10 Id. at 21 (oxforddictionary.com).
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goods are bought and sold; a marketplace; a large retail store or place of business: a
furniture emporium.” See Univ. of Norte Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983);
In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Although the Examining
Attorney did not submit a definition of DENTAL, he relies on the appearance of
“dental supplies” in the identification of services as an indication of genericness.
According to the Examining Attorney, DENTAL EMPORIUM is generic “because the
underlying goods provided by the store services are indeed dental goods, and because
the combination of terms would be commonly used in the industry to refer to such
services.”11 However, the record lacks any evidence of such use in this industry of this
combination, or of the term EMPORIUM by itself or in combination with other terms.
Applicant counters that neither DENTAL nor EMPORIUM are generic terms
individually, and there is no evidence of their combined use as generic in the relevant
context. As to EMPORIUM, Applicant asserts that it is not commonly used to refer
to stores and instead connotes size and the variety of merchandise. Applicant points
to an abandoned application for the mark MUSIC EMPORIUM12 as an allegedly
analogous situation, in which the examining attorney advised that the mark would
be eligible for the Supplemental Register if an allegation of use were filed, thereby
indicating that the mark was not considered generic. As to DENTAL, Applicant
emphasizes that no dictionary evidence has been produced, either for the term by

11 6 TTABVUE 7 (Examining Attorney’s Brief).
12 August 19, 2016 Response to Office Action at 21-23.
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itself, or for DENTAL EMPORIUM as a whole. Applicant asserts that “[t]he term
DENTAL is too broad to be understood to mean a store that offers dental supplies.”13
Applying the clear evidence standard, we conclude that this record falls short of
showing that the public understands DENTAL EMPORIUM to refer to the genus of
on-line wholesale and retail store services featuring dental supplies. See Princeton
Vanguard, 114 USPQ2d at 1831. We have no evidence that relates to the term as a
whole, which remains the focus of our inquiry. While the absence of this type of
evidence may not be dispositive, the evidence regarding the component words in the
mark does not clearly establish genericness. The dictionary entries show that
EMPORIUM typically refers to an establishment selling a wide variety of goods,
rather than goods of a specialized nature such as dental supplies, and the record
contains no third-party evidence of EMPORIUM being used in connection with the
online retailing of dental supplies. Moreover, the record lacks evidence of actual use
of EMPORIUM in connection with any type of retail services, and the Examining
Attorney’s Collins Thesaurus entry for EMPORIUM designates the word “old-
fashioned.”14 To the extent the record includes third-party registrations of marks
consisting of or including EMPORIUM for retail services featuring other types of
goods such as bedroom furnishings or jewelry, EMPORIUM was not treated as a

13 7 TTABVUE 3 (Applicant’s Reply Brief).
14 September 8, 2016 Office Action at 24 (collinsdictionary.com/thesaurus).
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generic term.15 Overall, the evidence does not clearly show that the relevant public
understands DENTAL EMPORIUM to refer to the genus of Applicant’s services.
III. Acquired Distinctiveness
As noted above, the descriptiveness of DENTAL EMPORIUM is definitively
established both by Applicant’s admissions and by the Section 2(f) claim included in
its application. “[M]arks that are merely descriptive cannot be registered unless they
acquire secondary meaning under § 2(f) of the Lanham Act, 15 U.S.C. § 1052(f)….” In
re N.C. Lottery, No. 2016-2558, slip op. at 4, available at www.cafc.uscourts.gov (Fed.
Cir. Aug. 10, 2017). “To establish secondary meaning, or acquired distinctiveness, an
applicant must show that in the minds of the public, the primary significance of a
product feature or term is to identify the source of the product rather than the product
itself.” Coach Svcs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1729 (Fed. Cir. 2012) (internal quotation marks omitted). We determine whether
Applicant’s asserted mark has acquired distinctiveness based on the entire record,
keeping in mind that “[t]he applicant … bears the burden of proving acquired
distinctiveness.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
1264 (Fed. Cir. 2015) (citation omitted).
The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of each case and the nature of the mark sought
to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34,
39 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (CCPA

15 Id. at 10-12, 14-18.
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1960). The use of “dental supplies” in Applicant’s identification of the subject matter
of its online wholesale and retail services shows that DENTAL is highly descriptive.
The dictionary definitions of EMPORIUM show that it describes the retail nature of
Applicant’s services. We find the mark DENTAL EMPORIUM highly descriptive.
We are not persuaded that Applicant’s mark has acquired distinctiveness.
Applicant rests its claim that the mark has acquired distinctiveness solely on its
declaration of substantially exclusive and continuous use for at least five years. The
first Office Action stated that in the event the mark were deemed descriptive rather
than generic, “the proposed mark is very weak and additional evidence beyond 5 years
use is necessary to prove secondary meaning in the marketplace.”16 However,
Applicant provided no additional evidence in response. The record lacks information
about sales under the mark, extensive promotional or advertising efforts, or other
evidence that customers have come to associate the mark with Applicant’s services.
The declaration of use, standing alone, does not convince us that consumers view this
highly descriptive term as a source indicator. See, e.g., In re Kalmbach Publ’g Co., 14
USPQP2d 1490, 1492 (TTAB 1989) (deeming insufficient for a highly descriptive
mark, a Section 2(f) claim of more than 10 years of use “without specific evidence of
the extent of the mark’s exposure to the purchasing public and of the purchasers’
perception of the asserted mark”); In re Synergistics Research Corp., 218 USPQ 165,
167 (TTAB 1983) “we have consistently held that a declaration or affidavit of
continuous and exclusive use as a mark for an extended period of years is insufficient

16 June 15, 2016 Office Action at 3.
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in and of itself to support registrability under Section 2(f) of the Trademark Act where
the term sought to be registered is highly descriptive in character”). Thus, Applicant
failed to satisfy its burden of showing that its mark has become distinctive of its
identified goods within the meaning of Section 2(f). Accordingly, we affirm the
Examining Attorney’s refusal to register the mark under Section 2(e)(1).
Decision: The refusal to register Applicant’s proposed mark on the ground
that it is generic is reversed. The refusal to register the mark on the ground that it is
merely descriptive under Section 2(e)(1) and has not acquired distinctiveness under
Section 2(f) is affirmed.