Familia Management Group, LLC

Trademark Trial and Appeal Board

Oct 10, 2019

87524734 (T.T.A.B. Oct. 10, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Familia Management Group, LLC
_____

Serial No. 87524734
_____

Mindi M. Richter of Shumaker Loop & Kendrick, LLP,
for Familia Management Group, LLC.
Angela M. Micheli, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Ritchie, Shaw, and English,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
On July 12, 2017, Familia Management Group, LLC (“Applicant”) filed an
application to register the mark FAMILIA DENTAL (and design), as shown below,1
for “dental hygienist services; dentist services; orthodontic services,” in International
Class 44, on the Principal Register:

1 Application No. 87524734 was filed under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a), claiming dates of first use and first use in commerce in January, 2012.
Serial No. 87524734
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Applicant claims acquired distinctiveness in part under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f), with the following statement: FAMILIA DENTAL has
become distinctive of the goods/services through the applicant’s substantially
exclusive and continuous use of the mark in commerce that the U.S. Congress may
lawfully regulate for at least the five years immediately before the date of this
statement. The mark contains a translation statement: The English translation of
FAMILIA DENTAL in the mark is FAMILY DENTAL. The mark contains the
following description: The mark consists of the word Dental below the word familia
with two curved lines in between the two words. Color is not claimed as a feature of
the mark.
The Trademark Examining Attorney has finally refused registration on the
ground that under Sections 1, 2, 3, and 45 of the Trademark Act; 15 U.S.C. §§ 1051,
1052, 1053, and 1127, the wording “FAMILIA DENTAL” in the mark is generic as
applied to the identified services, and must be disclaimed under Section 6(a) of the
Serial No. 87524734
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Trademark Act; 15 U.S.C. § 1056(a).2 The Examining Attorney has also finally
refused registration on the basis that if the wording in the mark is not generic,
Applicant’s claim of acquired distinctiveness based on at least five years’ use and
additional evidence is insufficient due to its highly descriptive nature.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register on the ground
that the wording “FAMILIA DENTAL” in Applicant’s mark is generic as applied to
its identified services and must be disclaimed. For this reason, we need not consider
the refusal on the insufficiency of the Section 2(f) evidence.
Disclaimer Requirement
If a mark is “comprised in part of matter that, as applied to the goods or services,
is generic or does not function as a mark, the matter must be disclaimed to permit
registration on the Principal Register.” TRADEMARK MANUAL OF EXAMINING
PROCEDURE § 1213.03(b) (TMEP) (Oct. 2018). See also In re Grass GmbH, 79 USPQ2d
1600, 1603 (TTAB 2006). Neither Applicant nor the Examining Attorney argues that
the applied-for mark is unitary. We therefore need not consider whether the

2 The Examining Attorney refers at times to a “generic refusal.” 12 TTABVUE 19. While the
refusal is actually a disclaimer refusal based on the genericness of the wording, we find that
it was sufficiently clear from the Office Actions, the denial of Applicant’s Request for
Reconsideration, and the Examining Attorney’s brief, that the Examining Attorney was
requiring a disclaimer of the wording, and that this refusal is based on Applicant’s failure to
submit the disclaimer.
Serial No. 87524734
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composite mark as a whole is generic. Nevertheless, unregistrable matter must be
disclaimed “in its entirety.” TMEP § 1213.08(b).
In this case, there is no dispute that the wording “FAMILIA DENTAL” is at least
merely descriptive, and Applicant has submitted a claim of acquired distinctiveness
under Section 2(f) for the word portion of the mark. See 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.”) The question before us is
therefore whether the wording “FAMILIA DENTAL” is not merely descriptive but
generic for the applied-for services, and thus incapable of acquiring distinctiveness.3
Genericness
A. Legal Standard for Genericness
As dictated by our precedent, “A generic mark, being the ‘ultimate in
descriptiveness,’ cannot acquire distinctiveness, and is not entitled to registration on
either the Principal or Supplemental Register under any circumstances.” In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015)
(quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)). A designation is generic if it refers to the class or
category of goods or services on or in connection with which it is used. In re Dial-A-

3 As noted above, in accordance with our genericness analysis, we need not address the
alternative refusal that if the wording is not generic then the Section 2(f) evidence is
nevertheless insufficient.
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Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing
Marvin Ginn, 228 USPQ 528). “[A] term [also] is generic if the relevant public
understands the term to refer to part of the claimed genus of goods or services, even
if the public does not understand the term to refer to the broad genus as a whole.” In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“[T]he
term ‘pizzeria’ would be generic for restaurant services, even though the public
understands the term to refer to a particular sub-group or type of restaurant rather
than to all restaurants”). See also In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92
USPQ2d 1682, 1685 (Fed. Cir. 2009) (“The test is not only whether the relevant public
would itself use the term to describe the genus, but also whether the relevant public
would understand the term to be generic.”).
The test for determining whether a term is generic is its primary significance to
the relevant public. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1553-54 (Fed. Cir. 1991); Marvin Ginn, 228 USPQ at 530. 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.
Addressing the first part of the genericness inquiry, we find in this case that the
genus of services is commensurate with Applicant’s identification of services in the
application, i.e., “dental hygienist services; dentist services; orthodontic services.” See
Magic Wand, 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
description of services set forth in the [application or] certificate of registration.”).
Serial No. 87524734
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Applicant characterizes the genus generally in its brief as “dental and orthodontic
services.”4
We next proceed to the second part of the Marvin Ginn inquiry: whether the term
“Familia Dental” is understood by the relevant public primarily to refer to “dental
hygienist services; dentist services; orthodontic services.” Based on the identified
services, the relevant public would be those individuals who use or purchase dental
or orthodontic services. In this regard, we note that “a term can be generic for a genus
of goods or services” if the relevant public “understands the term to refer to a key
aspect of that genus.” See Cordua 118 USPQ2d at 1637; see also Royal Crown Co. v.
Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed Cir 2018). We consider
“[e]vidence of the public’s understanding of the term [which] may be obtained from
any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other publications.” In re Merrill Lynch,
Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
In this regard, competitor use may be evidence of genericness. See BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“The
cases have recognized that competitor use is evidence of genericness.”) (citing
Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1446
(Fed. Cir. 1990)); Cont’l Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395
(TTAB 1999) (use of term “e-ticket” by media and competitors indicates term is
generic for electronic tickets); Philip Morris Inc. v. Brown & Williamson Tobacco

4 10 TTABVUE 11.
Serial No. 87524734
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Corp., 230 USPQ 172, 176 (1986) (finding evidence that competitors have used a
particular word as the name of their goods is persuasive evidence of genericness).
B. Applicability of the Doctrine of Foreign Equivalents
Pursuant to a requirement from the Examining Attorney, Applicant submitted a
translation statement of the wording in its applied-for mark, stating: The English
translation of FAMILIA DENTAL in the mark is FAMILY DENTAL.
Under the doctrine of foreign equivalents, “foreign words from common languages
are translated into English to determine genericness, descriptiveness, as well as
similarity of connotation . . .” Cordua, 118 USPQ2d at 1637, citing Palm Bay Imps,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1696 (Fed. Cir. 2005). The doctrine of foreign equivalents applies when the
“ordinary American purchaser” would “stop and translate” a foreign mark into its
English equivalent. Palm Bay 73 USPQ2d at 1696. It is not an absolute rule, and does
not include dead or obscure languages. In re Spirits Int’l, N.V., 563 F.3d 1347, 90
USPQ2d 1489, 1491 (Fed. Cir. 2009).
The foreign language at issue here is Spanish. The Examining Attorney submitted
evidence from the United States Census Bureau stating that the Hispanic population
of the United States was, as of July 1, 2015, 56.6 million, constituting 17.6% of the
nation’s total population, and comprising “the nation’s largest ethnic or racial
minority.”5 The Examining Attorney also submitted evidence that a large segment of
the population in various places where Applicant lists its service locations speak

5 Census.gov. Attached to October 18, 2017 Office Action, at 13.
Serial No. 87524734
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Spanish “at home.” The numbers range from five to ten percent in some locations, to
over forty percent in others.6
Overall, there is no question that Spanish is a relatively common, modern
language. The consumers of Applicant’s services are likely to stop and translate the
wording “FAMILIA DENTAL,” used in connection with dental and orthodontic
services. It is therefore appropriate to apply the doctrine of foreign equivalents. In
this regard, we consider in our analysis relevant evidence regarding the translated
term “family dental.”
C. Evaluating the Evidence
To support the refusal that the wording “FAMILIA DENTAL” is generic, the
Examining Attorney submitted a definition of the term “family dentistry;”
explanatory use of the term “family dental” and “family dentistry” on the Internet;
use of the term “family dental” or “family dentistry” by competitors; and third-party
registrations that disclaim use of the term “family dental.”
Applicant, in response, submitted evidence regarding its prior registration; a
declaration from its Director of Corporate Development; and search results from
Google and Westlaw for the term “family dental.”
We discuss and analyze the evidence of the public’s understanding of “Familia
Dental” or its translation, “family dental.”

6 Statisticalatlas.com. Attached to May 31, 2018 Final Office Action, at 77-133.
Serial No. 87524734
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a) Dictionary definition of “family dentistry”
The Examining Attorney submitted the following definition of “family dentistry”:

Family dentistry: the branch of dentistry that is concerned with the
diagnosis and treatment of dental problems in people of either sex and
at any age. Family dental professionals were formerly known as general
practitioners, and therefore family dentistry does not constitute one of
the specialty areas of dentistry.7

b) Explanatory use
The Examining Attorney submitted the following explanatory use of the term
“family dental” or “family dentistry” on the Internet:
Family Dental Group: What it is and the best way to find one; Busy
parents know scheduling appointments for everyone in your family can
take time. Finding a family dental group can mean fewer individual
office visits, if you know where to look. . . . Although family dental
groups have been around for years, they’re unique in that they provide
a variety of treatments in-house, whereas many practices are built
around a specialty.8
Finding the Best Family Dental in Sioux Falls: Imagine a scenario.
You have to take your kids and other family members to different
dentists based on their age group and dental health needs, regular
checkups and treatment. How tiring and cumbersome would that be?
Wouldn’t it be much easier if a dental practice provided all dental care
facilities for your entire family under one roof? Certainly. That is why,
at Riverview Dental we offer all major family dentistry services to the
residents of Sioux Falls SD under one roof, so they don’t have to visit
multiple dentists for their dental care.9

7 https://medical-dictionary. Thefreedictionary.com/family+dentistry. Attached to January
24, 2019 Denial of Request for Reconsideration, at 2.
8 Colgate.com. Attached to January 24, 2019 Denial of Request for Reconsideration, at 12.
9 RiverviewDentalSF.com. Attached to January 24, 2019 Denial of Request for
Reconsideration, at 39.
Serial No. 87524734
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c) Competitor use
The Examining Attorney included evidence of use of the term “family dental” or
“family dentistry” by competitors. Applicant argues that the evidence is not probative
because it is all from “dental practice websites as opposed to uses by ordinary
consumers.”10 As noted above, however, evidence of use by competitors may be
relevant to our analysis of genericness. See BellSouth Corp. 35 USPQ2d at 1558;
Remington Prods., 13 USPQ2d at 1446; Cont’l Airlines, Inc., 53 USPQ2d at 1395;
Philip Morris Inc., 230 USPQ at 176. We agree with Applicant that mere trade name
use of the term “FAMILY DENTAL” by competitors is not probative evidence of
genericness. Nevertheless, the Examining Attorney included multiple examples of
dental or dentistry practices that include reference to the term “family dental” or
“family dentistry” as being a key aspect of their dental services. Examples include the
following:11
Princeton Smiles: Our family dental practice emphasizes prevention –
meaning that we partner with our patients in the defense against
common dental problems, including tooth decay, bad breath, and gum
disease.
Princetonsmiles.com

Fields Family Dental: Fields Family Dental is a family dental practice
in Odenton MD focused on providing the best dental care to adults and
children.
Drkimberlyfields.com

Dental Care, and design: Welcome to Dental Care, your family dental
practice with conveniently located offices –
Dentalcareofsouthjersey.com

10 13 TTABVUE 5.
11 Attached to May 31, 2018 Final Office Action at 12-57, and January 24, 2019 Denial of
Request for Reconsideration at 15-36.
Serial No. 87524734
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Welcome to Steadman Family Dentistry: As a family dental practice,
our dentist and team cater to the entire family and offer a
comprehensive range of adult and children’s dentistry procedures to
serve patients of all ages –
Grinfixer.com

Farmington Family Dentistry: As family dentists in Farmington, CT,
our goal is to provide our patients with an exceptional dental experience
each time they visit our office. . . . As a family dental practice we are
dedicated to providing our patients with exceptional dental care.
Farmingtonctsmiles.com

West County Dental: Family Dental Practice: A standard of excellence
in personalized family dental care enables us to provide the quality
dental services our St. Louis patients deserve.
Westcountydental.com

Welcome to Powers Family Dental Care: A FULL SERVICE FAMILY
DENTAL PRACTICE.
Powersfamilydentalcare.com

Sharpe Family Dental: Dr. Sharpe and the experienced staff at Sharpe
Family Dental provide family dental care you can trust in a relaxed
atmosphere with personalized treatment for the whole family.
Sharpefamilydental.com

Chesterland Family Dental Care: Chesterland Family Dental Care is a
reputable general practice and family dental clinic.
Chesterlandfamilydentalcare.com

Preston Family Dentistry: General & Family Dentistry: General and
family dentistry encompasses a number of dental treatments that are
aimed at helping you achieve and maintain optimal oral health for a
lifetime.
Prestonfamilydentistry.com

Davis Family Dental Care, and design: for complete family dentistry
services: Bedford’s Home for Family Dentistry
Davisfamilydentists.com

Village Family Dental: Visit Us for Thorough and Reliable Family
Dentistry in the Fayetteville, NC Area.
Vfdental.com
Serial No. 87524734
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Piscataway Family Dental: Our practice ensures a positive dentist office
experience for you and your loved ones by focusing on family dentistry
that incorporates a wide-range of dental services and specialties.
Piscatawayfamilydental.com

Framingham Family Dental Care: Framingham Family Dental Care is
a full service dental practice providing comprehensive cosmetic,
restorative and family dentistry for patients of all ages.
Framinghamfamilydentalcare.com

d) Third-party registrations and Applicant’s prior registration

We note that both Applicant and the Examining Attorney submitted copies of
third-party registrations containing the term “FAMILY DENTAL,” some with
disclaimers of the term “FAMILY DENTAL” and some with disclaimers of only the
term “FAMILY.” It is, however, “axiomatic that we are not bound by the Office’s
determination in other cases, and these third-party registrations are not particularly
probative in our analysis.” See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC,
124 USPQ2d 1184, n.15 (TTAB 2017), citing Cordua, 118 USPQ2d at 1635 (“The PTO
is required to examine all trademark applications for compliance with each and every
eligibility requirement . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91
USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-party registrations
should have been refused registration . . . , such errors do not bind the USPTO to
improperly register Applicant’s marks.”) (citation omitted); In re Nett Designs, Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett Designs’ application, the PTO’s
allowance of such prior registrations does not bind the Board or this court.”).
Serial No. 87524734
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Applicant further makes reference to its prior registration for FAMILIA DENTAL
(and design) on the Principal Register. Applicant was granted Registration No.
3779160 for the composite mark shown below on April 20, 2010, with a disclaimer of
the term “FAMILIA DENTAL”:

Applicant argues that based on its prior Principal Registration it will suffer “serious
detriment and prejudice” if a disclaimer is required for the wording in its present
application.12
We note, first, that the mark for which Applicant currently seeks registration is
and not as previously registered. Second,
the prior registration included a disclaimer of the wording “FAMILIA DENTAL,” and
thus does not support Applicant’s argument that the term need not be disclaimed.
Finally, it is well established that an existing registration “does not preclude a finding
of genericness” since, even if Applicant is entitled to the Section 7(b) presumption of
validity for registration of a mark on the Principal Register, the presumption “does
not carry over from registration of the older mark to a new application for registration
of another mark that happens to be similar (or even identical).” Cordua, 118 USPQ
at 1635 (citations omitted).

12 13 TTABVUE 6.
Serial No. 87524734
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e) Applicant’s submitted declaration and third-party web evidence
Applicant submitted a declaration from its Director of Corporate Development,
Brendan Gibney. The declaration is titled “Declaration under Section 2(f).” In
addition to making reference to Applicant’s revenues and marketing expenditures,
Mr. Gibney’s declaration states that “Applicant is frequently in the news,” citing,
inter alia, Exhibits 2 and 4. We consider Mr. Gibney’s declaration, and the various
exhibits in our genericness inquiry, to the extent they demonstrate whether the term
“Familia Dental,” or its translation “family dental,” is understood by the relevant
public primarily to refer to “dental hygienist services; dentist services; orthodontic
services.” The declaration itself discusses Applicant’s commercial success with its
services. However, the declaration does not have sufficient information to indicate
the understanding of the relevant public with regard to the term “Familia Dental” or
“family dental.”13
Applicant also submitted search results from Google and Westlaw.14 The search
results are not very probative since they are truncated and do not provide us with
sufficient information upon which to make a clear finding. See In re Bayer
Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search
engine results – which provide little context to discern how a term is actually used on
the web page that can be accessed through the search link – may be insufficient to
determine the nature of the use of a term or the relevance of the search results to

13 Attached to April 24, 2018 Response to Office Action, at 23.
14 Attached to April 24, 2018 Response to Office Action, at 2-21.
Serial No. 87524734
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registration considerations.”); See also Alcatraz Media Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013) (finding results from search engine
introduced by testimony admissible but of limited probative value because they
lacked sufficient context), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).
Applicant did include printouts of several of the results from both the Google and
the Westlaw searches with the Request for Reconsideration.15 The evidence includes
Applicant’s website as well as printouts of websites that include consumer and
employee reviews. There are also several news articles that reference Applicant,
including an article from PR NewsChannel (Blog) which discusses a dentist who
works with Familia Dental in Milwaukee, Wisconsin; an article from The Post-
Tribune (Merrillville, Ind.) which mentions organizations participating in a charity
event, including among others on a list, Familia Dental; an article from Herald &
Review (Decatur, Ill.) which discusses services that will be available to the
community, including among others on a list, Familia Dental; an article from
University Wire (Madison, Wis.) which mentions that Familia Dental will be opening
a second clinic in Madison; and two articles in State News Service (Indianapolis, Ind.)
which mention the sponsors for a community event, including among others on a list,
Familia Dental.

15 Attached to November 28, 2018 Request for Reconsideration, at 2-56.
Serial No. 87524734
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Analysis of the relevant purchasing public’s understanding of the meaning of
FAMILIA DENTAL or its translation “family dental”
A generic term names a good or service. See Marvin Ginn, 228 USPQ at 530 (“The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.”); see also 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 12:20 (5th ed.).
To be the first user of a particular name for a product is not sufficient to take it
out of the realm of genericness. Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 39
USPQ 296 (1938). Rather, the question is whether “the primary significance of the
term in the minds of the consuming public is not the product but the producer.” Id.
at 299. As the Federal Circuit has further explained:
Generic terms, by definition incapable of indicating source, are the
antithesis of trademarks, and can never attain trademark status. The
reason is plain: To allow trademark protection for generic terms, i.e.,
names which describe the genus of goods being sold, even when these
have become identified with a first user, would grant the owner of the
mark a monopoly, since a competitor could not describe his goods as
what they are.

In re Pennington Seed Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006)
(affirming Board ruling that applicant cannot trademark varietal name for plant seed
even if it created genus) (quoting In re Merrill Lynch, 4 USPQ2d at 1142). In this
regard, the Court of Customs and Patent Appeals, citing the Kellogg Supreme Court
decision, noted that generic marks, even those well known to the public, cannot be
registered. In re The Deister Concentrator Co., Inc, 289 F2d 496, 129 USPQ 314, 322
(CCPA 1961) (“The true basis of such holdings is not that they cannot or do not
Serial No. 87524734
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indicate source to the purchasing public but that there is an overriding public policy
of preventing their monopolization.”). Similarly, a mark containing generic matter
cannot be registered on the Principal Register without a disclaimer. See In re Grass
GmbH, 79 USPQ2d at 1603; TMEP § 1213.03(b).
The CCPA has further explained that one who chooses the name of an article
cannot be granted exclusive trademark rights to the term:
While it is always distressing to contemplate a situation in which money
has been invested in a promotion in the mistaken belief that trademark
rights of value are being created, merchants act at their peril in
attempting, by advertising, to convert common descriptive names, which
belong to the public, to their own exclusive use. Even though they
succeed in the creation of de facto secondary meaning, due to lack of
competition or other happenstance, the law respecting registration will
not give it any effect.

Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411,
414 (CCPA 1961).
We thus consider whether the wording “Familia Dental,” or its translated “family
dental,” is generic for “dental hygienist services; dentist services; orthodontic
services” such that it must be disclaimed. The Examining Attorney has the burden of
proving genericness by clear evidence. See La. Fish Fry Prods., 116 USPQ2d at 1265
(citations omitted).
We find availing the dictionary definition submitted by the Examining Attorney,
which defines “family dentistry” as a “branch of dentistry.” Although Applicant
argues that the definition is for “family dentistry” rather than for “family dental,” it
is clear that the term “family dental” is used interchangeably with “family dentistry”
Serial No. 87524734
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to refer to a subgenus and key aspect of dental and orthodontic services. Third-party
web evidence explains the meaning of a “family dental” practice as one where
“everyone in your family” is provided services with “dental care facilities for your
entire family.”
Numerous websites elaborate on this explanation, with competitors making
reference to their “family dental” practices as being able to provide “the best dental
care to adults and children;” “offer a comprehensive range of adult and children’s
dentistry procedures;” and as providing “personalized treatment for the whole
family.” Others refer similarly to “family dentistry” as providing “a wide-range of
dental services and specialties” and as being applicable to “patients of all ages.”
Accordingly, the Examining Attorney has shown by clear evidence that “family
dental” is a subgenus and key aspect of Applicant’s identified dental and orthodontic
services, and it is a generic term therefor. See Cordua, 118 USPQ at 1638 (explaining
that “a term is generic if the relevant public understands the term to refer to part of
the claimed genus of goods or services, even if the public does not understand the
term to refer to the broad genus as a whole.”).
This conclusion is not refuted by the evidence submitted by Applicant. As noted,
Applicant’s prior registration for a composite mark,
included a disclaimer of “FAMILIA DENTAL,” which does not support Applicant’s
argument that the wording need not be disclaimed. Furthermore, the prior
registration does not confer a presumption of validity for the mark
Serial No. 87524734
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in the present application. We must base our analysis of genericness of the wording
“FAMILIA DENTAL” on the record of this case. See Section 7(b) of the Trademark
Act; 15 U.S.C. § 1057(b); Cordua, 118 USPQ at 1635 (citations omitted). While
Applicant’s declaration and web evidence may show use of Familia Dental as a trade
name, they do not provide information about whether the relevant public
understands “Familia Dental,” or its translated “family dental” to refer to “dental
hygienist services; dentist services; orthodontic services.” See In re Pacer Tech., 338
F.3d 1348, 67 USPQ2d 1629, 1633 (Fed. Cir. 2003) (finding submitted affidavits “all
signed by individuals in the artificial nail business, at most purport to represent the
views of a small segment of the relevant market.”); see also Mag Instrument, Inc. v.
Brinkman Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding submitted
declarations do not represent views of “end consumer.”).
Evaluating the record as a whole, we find that the Examining Attorney has proven
by clear evidence that the wording “Familia Dental” or its translated “family dental”
refers to a key aspect of “dental hygienist services; dentist services; orthodontic
services,” namely, the subgenus of dental and orthodontic services that serves
families. While we have discussed references to the term “family dentistry,” and we
find that it is used interchangeably with the term “family dental,” our analysis and
conclusion are the same if we exclude consideration of the former.
Although Applicant may have created “de facto secondary meaning” by potentially
being a commercially successful user of the term, such use has not prevented the
relevant public from viewing “FAMILIA DENTAL” or “family dental” as “primarily
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us[ing] or understand[ing] the term sought to be protected to refer to the genus of
goods or services in question.” Marvin Ginn 228 USPQ at 530. Overall, the record
supports a finding that the primary significance of the term in the minds of the
consuming public is to identify a service rather than to identify a single source
thereof, and that indeed “FAMILIA DENTAL” and “family dental” services derive
from more than one source. See Kellogg, 39 USPQ at 299; In re Merrill Lynch, 4
USPQ2d at 1142; Weiss Noodle, 129 USPQ at 414.
Therefore, we find that the wording “FAMILIA DENTAL” in the applied-for mark
is generic for the identified services, and we affirm the refusal to register absent a
disclaimer. Because the wording “FAMILIA DENTAL” is generic as applied to the
identified services, it is not registrable on the Principal Register under the provisions
of Section 2(f). See In re Northland Aluminum Prods., 777 F.2d 1556, 227 USPQ 961,
963 (Fed. Cir. 1985); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, 13 (TTAB
2019).
Decision: The refusal to register is affirmed on the ground that under Sections 1,
2, 3, and 45 of the Trademark Act; 15 U.S.C. §§ 1051, 1052, 1053, and 1127, the
wording “FAMILIA DENTAL” in the mark is generic as applied to the identified
services, and must be disclaimed under Section 6(a) of the Trademark Act; 15 U.S.C.
§ 1056(a).
However, if Applicant submits the required disclaimer to the Board within two
months of the mailing date of this decision, then the decision will be set aside, and
the application will proceed to publication.