Dentek Oral Care, Inc.Download PDFTrademark Trial and Appeal BoardJan 14, 2013No. 85250567 (T.T.A.B. Jan. 14, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: January 14, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Dentek Oral Care, Inc. ________ Serial No. 85250567 _______ Matthew M. Googe and Robert O. Fox of Luedeka, Neely & Graham, PC for Dentek Oral Care, Inc. Cory Boone, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Quinn, Cataldo and Hightower, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Dentek Oral Care, Inc., filed an application to register in standard characters on the Principal Register the mark DENTEK for the following goods, as amended: Non-medicated mouth rinse; Breath freshening tongue sprays; Tooth whitening preparations; all the foregoing dental care products for wide general consumer use in International Class 3; Ser. No. 85250567 2 Dental wax; Emergency dental care kits for repairing lost fillings and caps consisting primarily of dental cement; Toothache kits consisting primarily of pain relief medication; Sanitizing preparations for toothbrushes; all the foregoing dental care products for wide general consumer use in International Class 5; Dental mirrors; Mouth guards for wearing while sleeping for protecting teeth from bruxism; Dental instruments, namely, scalers; Oral irrigators; Soft dental picks; Tongue scrapers; all the foregoing dental care products for wide general consumer use in International Class 10; and Dental flosser instruments; Dental floss threading devices; Dental floss; Handles for holding disposable tooth flosser instruments; Handles for holding interdental tooth brushes; Interdental tooth brushes; Toothbrushes; all the foregoing dental care products for wide general consumer use in International Class 21.1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as used on or in connection with its goods, so resembles the marks displayed below, previously registered by Professional Dental Technologies, Inc. on the Principal Register: 1 Application Serial No. 85250567 was filed February 24, 2011, based upon its assertion of use of the mark in commerce under Section 1(a) of the Trademark Act. In response to the examining attorney’s requirement, applicant claimed ownership of Registration Nos. 1767347 and 2132258. Ser. No. 85250567 3 PRO-DENTEC in typed or standard characters for: toothpaste in International Class 3; dental rinse and plaque disclosing solution in International Class 5; dental instruments, namely dental probes, dental scalers, interdental cleaners, and intraoral diagnostic systems comprised of a video camera, monitor and computer used for conducting dental examinations in International Class 10; and educational services, namely conducting seminars in the field of dental and periodontal health in International Class 41;2 and for dental and periodontal devices and materials, namely, rotary toothbrushes, replacement necks, and replacement brush heads in International Class 21,3 as to be likely to cause confusion, mistake or deception.4 2 Registration No. 1953949 issued on February 6, 1996. Section 8 affidavit accepted; Section 15 affidavit acknowledged; Renewed. 3 Registration No. 2087922 issued August 12, 1997. Section 8 affidavit accepted; Section 15 affidavit acknowledged; Renewed. 4 The examining attorney cited two additional registrations owned by Professional Dental Technologies, Inc. for its Pro-Dentec and design mark with variations in the positioning of the words and Ser. No. 85250567 4 When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs on the issue under appeal, and applicant filed a reply brief.5 Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.” In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). design relative to each other, for goods that essentially are identical to those recited in the two registrations listed herein. As such, we need not consider these two additional registrations in our determination of the issue under appeal. 5 In addition, applicant filed a subsequent “supplemental reply brief.” Inasmuch as there are no provisions for the filing of such a brief, it has been given no consideration. See Trademark Rule 2.128. Ser. No. 85250567 5 The Marks Turning to our consideration of the marks at issue, we note initially that 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 goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). We begin by observing that the terms comprising registrant’s PRO-DENTEC mark include PRO, which is widely recognized as a shorthand form of “professional,” and DENTEC, which does not have a recognized meaning on this record but suggests in general goods used in the fields of dental health. Similarly, registrant’s mark shown below contains the same wording and an abstract triangular design. The term PRO in registrant’s marks modifies DENTEC Ser. No. 85250567 6 and suggests that registrant provides professional grade goods and services in the dental field. Further, the triangular design in Registration No. 2087922 is visually less significant than the wording therein and contributes less to the overall commercial impression of the mark than the wording. In that regard, it is settled that when a mark comprises both wording and a design, the wording is normally accorded greater weight because it would be used by customers to request the identified goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these reasons, we consider DENTEC to be the dominant feature of the registered marks. This term is nearly identical to applicant’s DENTEK mark in appearance and sound. Further, while as noted above the term DENTEC or DENTEK possesses no apparent meaning, both suggest goods or services, perhaps of a technical nature, in the fields of dental health. Thus, the terms are highly similar in meaning. Viewing the marks as a whole, we find that applicant’s DENTEK mark and registrant’s PRO-DENTEC mark and PRO-DENTEC and design mark shown below Ser. No. 85250567 7 are more similar than dissimilar in appearance, sound and connotation and, overall, convey highly similar commercial impressions. As a result, this du Pont factor favors a finding of likelihood of confusion. Strength of Registered Marks and Applicant’s Prior Registrations As noted above, applicant is the owner of Registration No. 1767347 for the mark U.S. DENTEK for dental instruments; namely, dental piks for plaque removal, tooth polishers, tooth polisher refill kits, interdental brushes, interdental brush refill kits, gum stimulators and toothbrushes for cleaning sulcus in International Class 10; and Registration No. 2132258 for the mark DENTEK for dental instruments, namely, dental piks for plaque removal, interdental brushes, interdental brush refill kits, and toothbrushes for cleaning sulcus in International Class 10. Applicant contends that “the DENTEC portion of the cited registrations is at least highly suggestive if not descriptive of dental products and instruments.”6 However, applicant has provided no evidence to support its contention. As a result, and as discussed above, we can only infer the marks’ connotation from the 6 Applicant’s brief, p. 5. Ser. No. 85250567 8 commonly understood meaning of their composite terms. Applicant further argues that DENTEC is weak based upon its above-noted prior registrations. However, we disagree with applicant that the existence of its prior registrations, without additional evidence, compels a finding that the marks in the cited registrations are entitled only to a narrow scope of protection in this case. In short, there simply is insufficient evidence by which we may conclude that registrant’s marks are weak. In addition, to the extent applicant is arguing that the Office should be estopped from refusing to register the application at issue when it has previously registered the same and a highly similar mark for related goods, “[t]his Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration.” In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). This Board has the authority and duty to decide an appeal from a final refusal to register, and this duty may not be delegated by adopting the conclusion of reached by another examining attorney on a different record. Id., quoting In re BankAmerica Corp., Ser. No. 85250567 9 231 USPQ 873, 876 (TTAB 1986). Accordingly, the issuance of the prior registration is not controlling here. The Goods and Services We turn now to our consideration of the identified goods and services, noting that it is not necessary that the goods or services at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective goods and/or services are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and 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 originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). It further is settled that in making our determination regarding the relatedness of the parties’ goods and/or services, we must look to the goods and services as identified in the involved application and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products v. Johnson Ser. No. 85250567 10 Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”) We begin by noting that applicant has not presented any arguments in its brief regarding the similarity or dissimilarity of its goods with those identified in the cited registrations. The examining attorney, for his part, argues that applicant’s goods are related on the face of their identifications to those of registrant. We turn then to the goods identified in the involved application, noting that it is not necessary for the examining attorney to prove likelihood of confusion with respect to each of the goods identified in each class of applicant’s application; if there is likelihood of confusion with respect to any of applicant’s identified goods in each class, the refusal of registration must be affirmed to all goods in that class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). International Class 3 Non-medicated mouth rinse; Breath freshening tongue sprays; Tooth whitening preparations; all the foregoing dental care products for wide general consumer use. Ser. No. 85250567 11 Turning to applicant’s goods in Class 3, we find that applicant’s “non-medicated mouth rinse” is related on its face to registrant’s “dental rinse” in Class 5 of its Reg. No. 1953949 insofar as both are oral rinses used for the common purpose of promoting dental health. International Class 5 Dental wax; Emergency dental care kits for repairing lost fillings and caps consisting primarily of dental cement; Toothache kits consisting primarily of pain relief medication; Sanitizing preparations for toothbrushes; all the foregoing dental care products for wide general consumer use. The goods identified in Class 5 of the involved application consist of dental cement, pain medications and sanitizing preparations for toothbrushes and appear to be used in case of dental emergencies. These goods may be considered to be related to registrant’s goods and services, which broadly speaking concern dental care, diagnosis and examination. However, the relationship appears rather tenuous, without some evidence of similarity to registrant’s goods or services, to support a finding of likelihood of confusion. Particularly, applicant’s goods specifically intended for dental emergency use do not appear to be related, on the face of their identification, to registrant’s dental goods and services, none of which appear to be directed toward use in dental emergencies. Ser. No. 85250567 12 Thus, while a relationship may exist between these goods and services, on this record we do not find sufficient support for such a relationship. International Class 10 Dental mirrors; Mouth guards for wearing while sleeping for protecting teeth from bruxism; Dental instruments, namely, scalers; Oral irrigators; Soft dental picks; Tongue scrapers; all the foregoing dental care products for wide general consumer use. Applicant’s “dental instruments, namely, scalers” in Class 10 are identical to the “dental scalers” recited in Class 10 of Reg. No. 1953949. The examining attorney further has submitted evidence from a commercial Internet web site displaying registrant’s “rotary toothbrushes, replacement necks, and replacement brush heads” in Class 21 of its Reg. No. 2087922 for sale from a common source along with tongue cleaners and inter-dental cleaning picks, which appear to be closely related to applicant’s “dental picks” and “tongue scrapers” in Class 10.7 The foregoing evidence suggests that goods of the type offered by applicant in Class 10 as well as registrant will be perceived by consumers as being offered by the same entities and identified by the same marks. International Class 21 7 www.cent.st.net/rotadent Ser. No. 85250567 13 Dental flosser instruments; Dental floss threading devices; Dental floss; Handles for holding disposable tooth flosser instruments; Handles for holding interdental tooth brushes; Interdental tooth brushes; Toothbrushes; all the foregoing dental care products for wide general consumer use. Applicant’s “interdental toothbrushes; toothbrushes” appear to encompass and are related on their face to the “rotary toothbrushes, replacement necks, and replacement brush heads” recited in Class 21 of cited Reg. No. 2087922. That is to say, applicant’s broadly identified “toothbrushes” are presumed to include registrant’s more narrowly identified “rotary toothbrushes” and, furthermore, are used for the same purposes. As a result of the foregoing, we find that certain of applicant’s goods in Classes 3, 10 and 21 of the involved application are related on their face and based upon the limited record in this proceeding to the goods identified in the cited registrations. Thus, applicant’s goods in Classes 3, 10 and 21 are related to the goods of registrant, and this du Pont factor further favors a finding of likelihood of confusion with regard to those goods. However, as discussed above the goods recited in Class 5 of the involved application are intended largely for dental emergency use, and do not appear either on their Ser. No. 85250567 14 face or the record of this case to be related to registrant’s goods or services. This du Pont factor does not favor a finding of likelihood of confusion as to these goods. Channels of Trade We are not persuaded by applicant’s arguments that because registrant’s marks contain the term “PRO,” registrant’s goods are marketed to professional users and travel in channels of trade that are separate and distinct from those in which applicant’s goods and services may be encountered, namely general consumers. It is settled that in making our determination regarding the relatedness of the parties’ goods and/or services, we must look to the goods and services as identified in the involved application and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 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 goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”) See also Paula Payne Products v. Johnson Publishing Co., 177 USPQ at 77. Ser. No. 85250567 15 In this case, applicant’s identification of goods recites “wide general consumer use” or the general public as the end users therefor. However, registrant’s identification of goods contains no limitations and must be read to include such users. While we observe that registrant’s goods used for diagnostic purposes and educational services would, by their very nature, appear limited to professional use, the majority of registrant’s goods appear to be suitable for use by the general public. Thus, we reject applicant’s extrinsic arguments that the asserted differences between its goods and registrant’s goods and services compel a finding that they move in different channels of trade and will be encountered by different purchasers. To the contrary, absent any restrictions in the identification of goods or services, registrant’s goods and services are presumed to move in all normal channels of trade and be available to all classes of potential consumers, including the trade channels in which applicant’s goods, broadly identified as being intended for “wide general consumer use,” may be encountered. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As a result, this du Pont factor further favors a finding of likelihood of confusion. Ser. No. 85250567 16 Actual Confusion Finally, applicant argues that there is no evidence of any actual confusion and that there has been concurrent use for over 20 years. We do not accord significant weight to applicant's contention, unsupported by any evidence, that there have been no instances of actual confusion despite contemporaneous use of the respective marks. The Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic's uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant's corporate president's unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not as compelling in support of a finding of no likelihood of confusion. Thus, we cannot Ser. No. 85250567 17 conclude from the lack of instances of actual confusion that confusion is not likely to occur. Summary In light of the foregoing, we conclude that consumers familiar with registrant’s goods and services sold under its above-referenced marks would be likely to believe, upon encountering applicant’s goods in Classes 3, 10 and 21 offered under its mark that the goods originated with or are associated with or sponsored by the same entity. However, primarily due to the lack of evidence or sufficient facial similarity between the goods and services, we come to the opposite result with regard to applicant’s Class 5 goods. Decision: The refusal of registration to the involved application is affirmed as to the goods in Classes 3, 10, and 21. The refusal to register is reversed as to the goods in Class 5. Copy with citationCopy as parenthetical citation