Holladay Dental Studio, PLLC

Trademark Trial and Appeal Board

Feb 22, 2019

No. 87666886 (T.T.A.B. Feb. 22, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Holladay Dental Studio, PLLC
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Serial Nos. 87666882 and 87666886
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Brian D. Tucker of Kirton McConkie,
for Holladay Dental Studio, PLLC.
Susan Kastriner Lawrence, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Cataldo, Shaw, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Holladay Dental Studio, PLLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark HOLLADAY DENTAL STUDIO and of the
composite word-and-design mark shown at right,
both with DENTAL STUDIO disclaimed, and both
for:
Dental hygienist services; Dental imaging services; Dental
services, namely, performing restorative and cosmetic
procedures; Dental services, namely, treatment of patients
with snoring, sleep apnea and TMJ (temporomandibular
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joint) disorders; Orthodontic services; Dentist services;
Oral surgery and dental implant services; Providing a
website featuring information for patients in the field of
dental health; Providing information in the field of
orthodontics; in International Class 44.1
The Trademark Examining Attorney refused registration to each application
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, as applied to the services identified in the application, so resembles
the standard character mark HOLLADAY SMILES for “dentistry” in International
Class 442 on the Principal Register as to be likely to cause confusion, to cause mistake,
or to deceive. When the Examining Attorney made each refusal final, Applicant
requested reconsideration. After reconsideration was denied and each final refusal
maintained, Applicant appealed to this Board.
We consolidate the appeals and decide them in a single opinion because they
involve common issues of law and fact and identical records. See In re Anderson, 101

1 Application Serial No. 87666882 (the standard character mark) and Application Serial No.
87666886 (the word-and-design mark) were both filed on October 31, 2017, under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere
and use in commerce since at least as early as January 1, 2012. Prior to examination,
Applicant filed a Voluntary Amendment in each application to change all first use dates to
July 2012; however, it does not appear that the amendments were considered by the Office.
For Application Serial No. 87666882, Applicant claims acquired distinctiveness under
Section 2(f), 15 U.S.C. § 1052(f). For Application Serial No. 87666886, Applicant claims
acquired distinctiveness under Section 2(f), in part, as to HOLLADAY DENTAL STUDIOS,
and this application contains the following description of the mark: “The mark consists of the
wording ‘HOLLADAY DENTAL STUDIOS’ with two sets of leaves separating the wording
‘HOLLADAY’ and ‘DENTAL’ with one rising above the letter ‘D’ and the other seeming to
extend from the end of the letter ‘Y’.” Color is not claimed as a feature of the mark.
2 Registration No. 3564200, issued January 20, 2009; combined Section 8 affidavit and
Section 9 renewal application received December 19, 2018; Section 8 declaration accepted
and Section 15 declaration acknowledged January 24, 2015.
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USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals). We
affirm each refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter
regarding Applicant’s use of hyperlinks to Internet material without providing
printouts from the web sites.
In response to the final Office Action, Applicant argued that “Holladay is a city in
Salt Lake County, Utah,” and cited a hyperlink to cityofholladay.com which it
embedded in the response.3 We have made clear that providing only the link without
attaching a printout of the website is not sufficient to introduce evidence into the
record. See In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017); In re HSB
Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (stating that “a
reference to a website’s Internet address is not sufficient to make the content of that
website or any pages from that website of record”); Safer Inc. v. OMS Invs. Inc., 94
USPQ2d 1031, 1039 (TTAB 2010) (noting that because of the transitory nature of
Internet postings, websites referenced only by links may later be modified or deleted).
The procedure for making printouts of Internet evidence of record is addressed in
TMEP § 710.01(b) (Oct. 2018) and the cases cited therein. In the next Office action,
the Examining Attorney did not object to Applicant’s use of the cityofholladay.com
hyperlink, did not instruct Applicant that it was improper to refer to a hyperlink in

3 April 10, 2018 Request for Reconsideration after Final Action, TSDR 1. Citations to the
TSDR record are to the .pdf version and are the same for both applications.
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lieu of a printout of the relevant evidence, and specifically addressed Applicant’s
argument.4 Accordingly, we find that the Examining Attorney waived any objection
to Applicant’s arguments on that point. TMEP § 710.01(b). Cf. In re Mueller Sports
Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018) (Board may consider the objection
to Internet evidence waived if examining attorney fails to object to the evidence in
the first Office action following the response and to advise the applicant of proper
way to make Internet evidence of record). However, because neither Applicant nor
the Examining Attorney introduced into the record screenshots or other webpage
printouts putatively accessible from the hyperlink, there is no evidence on this point,
and unsupported argument is entitled to little, if any, probative weight. See, e.g., Saul
Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010). See also TBMP
§ 704.06(b) (June 2018).
Further, we sustain the Examining Attorney’s objection to Applicant’s including
in its appeal brief five links to other web sites, cited for the first time in its appeal
brief.5 This objection is timely and proper. In re Olin, 124 USPQ2d at 1332 n.15.
“Even had this been an effective way to make evidence of record, . . . evidence
submitted with an appeal brief is untimely.” Id., citing Trademark Rule 2.142(d)
(“The record in the application should be complete prior to the filing of an appeal.”).

4 April 30, 2018 Request for Reconsideration Denied, TSDR 2.
5 See Applicant’s Appeal Brief, pp. 6 & 8; 4 TTABVUE 7 & 9.
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II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception of the
relevant public. 15 U.S.C. § 1052(d). Our determination under Section 2(d) is based
on an analysis of all probative facts in evidence that are relevant to the likelihood of
confusion factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each du Pont factor that is relevant
and for which there is evidence or argument. See, e.g., M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
Two key factors in every likelihood of confusion case are the similarity or
dissimilarity of the marks and goods or services, because the “fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Applicant and the Examining Attorney both focus primarily on the similarity or
dissimilarity of the marks, the Examining Attorney also focuses on the similarity of
the services, and Applicant discusses the conditions under which and buyers to whom
sales are made, as well as conceptual weakness of the term HOLLADAY and the
number and nature of similar marks in use on similar services.
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A. Similarity or Dissimilarity of the Services and Trade Channels
We first consider the second and third du Pont factors, the similarity of the
services and channels of trade. Our analysis under these factors is premised on the
identifications of services in the applications and the cited registration. In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051, 1052 (Fed. Cir. 2018); Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-63 (Fed. Cir. 2014); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
“[L]ikelihood of confusion can be found ‘if the respective [services] are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The services identified in each application include “dentist services” and various
specific “dental” services. The services identified in the cited registration are
“dentistry” services. Applicant’s “dentist services” and Registrant’s “dentistry” are
legally identical. Indeed, “Applicant acknowledges that the [parties’] respective
services are identical.”6 Moreover, the broadly identified “dentistry” services in the
cited registration encompass the dental services more narrowly identified in the
applications as “dental hygienist services; dental imaging services; dental services,
namely, performing restorative and cosmetic procedures; dental services, namely,
treatment of patients with snoring, sleep apnea and TMJ (temporomandibular joint)

6 Applicant’s Appeal Brief, p. 7; 4 TTABVUE 8.
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disorders.” These services in the application and cited registration are thus deemed
to be legally identical in part. Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007,
1025 (TTAB 2015) (Where services are broadly identified in an application or
registration, “we must presume that the services encompass all services of the type
identified.”) As a result, “there is no need for us to further consider the relatedness of
the [services].” FabFitFun, 127 USPQ2d at 1672.7
We also must presume that Applicant’s and Registrant’s legally identical services
will be available in the same channels of trade to the same classes of purchasers,
because the services “are identical and legally identical in part and there are no
limitations as to channels of trade or classes of purchasers in either the application
or cited registration.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018)
(citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
See also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018). In view
of the legal identity of the services, and the identical channels of trade and classes of
purchasers, the second and third du Pont factors weigh heavily in favor of a finding
that confusion is likely.
B. Purported Weakness of the Common Term HOLLADAY
The fifth du Pont factor is the fame or strength of the prior mark, and the sixth
factor is the number and nature of similar marks in use for similar goods or services.
Du Pont, 177 USPQ at 567. In determining strength of a mark, we consider both

7 It is sufficient for a refusal based on likelihood of confusion that relatedness is established
for any item encompassed by the recitation of services in applications. See, e.g., Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
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inherent strength, based on the nature of the mark itself, and commercial strength
or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686
(Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014). And, as set out as the sixth du Pont factor, we may give weight to any
commercial weakness based on third-party use of similar marks for the same or
similar services. Du Pont, 177 USPQ at 567.
As to conceptual strength, Applicant argues that HOLLADAY is a city in the Salt
Lake City metro area, both Applicant and Registrant are located in this city, and “[n]o
one would use Holladay to identify his or her dentist or dental office. This is simply
common sense and does not require any evidence beyond the fact that Holladay is a
city.”8 Applicant claims that because HOLLADAY is a term with geographic
significance to both Applicant and Registrant, HOLLADAY is weak and cannot be
the dominant portion of the marks.
The Examining Attorney correctly noted that the cited “registered mark is on the
Principal Register without a disclaimer of the term HOLLADAY, nor is it registered
pursuant to Section 2(f).”9 Applicant’s election to seek registration under Section 2(f)
of the Trademark Act is a concession that its own standard character mark and the
same wording in its word-and-design mark is not inherently distinctive and that it

8 Applicant’s Appeal Brief, pp. 5-6; 4 TTABVUE 6-7.
9 April 30, 2018 Request for Reconsideration Denied at TSDR 2.
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therefore is not registrable on the Principal Register absent a sufficient showing of
acquired distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section 2(f), the statute accepts
a lack of inherent distinctiveness as an established fact.”); In re Leatherman Tool
Grp., Inc., 32 USPQ2d 1443 (TTAB 1994). As discussed above, the Examining
Attorney considered Applicant’s unsupported argument regarding the purported
significance of HOLLADAY in Registrant’s mark.10 However, in the absence of any
supporting evidence,11 we decline to find that the term HOLLADAY may be
somewhat conceptually weak or geographically suggestive of Registrant’s services.12
As for marketplace strength, there is no evidence regarding the mark’s
commercial strength, as is typical with ex parte appeals in which the owner of the
cited registration is not a party.

10 See id.
11 Although Applicant’s city is listed in the subject applications as Holladay, Utah,
Registrant’s city is listed in the cited registration certificate of record as Salt Lake City, Utah.
Application, TSDR 1; and February 15, 2018 Office Action, TSDR 6. Applicant submitted no
evidence establishing that Registrant is located in Holladay.
12 We make no finding in this ex parte proceeding whether HOLLADAY is primarily
geographically descriptive. Further, we cannot agree with Applicant’s characterization of the
term HOLLADAY as “incapable of being perceived by patients as distinguishing source
because it is geographically descriptive.” Applicant’s Appeal Brief, p. 6; 4 TTABVUE 7. This
argument conflates geographically descriptive terms with generic terms, see In re La. Fish
Fry Prods., Ltd., 116 USPQ2d 1262, 1267 (Fed. Cir. 2015) (“generic terms by definition are
incapable of indicating a unique source”), and Applicant did not submit evidence
demonstrating that HOLLADAY is generic or primarily geographically descriptive. See In re
Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1844 (TTAB 2012) (“A mark is
not primarily geographic where the geographic meaning is obscure, minor, remote, or not
likely to be connected with the [services].”).
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In support of its position that HOLLADAY is weak and entitled only to a limited
scope of protection, Applicant argues that HOLLADAY is so “commonly used and
therefore cannot be the dominant portion of the marks or serve a source identification
function.”13 Applicant claims that there are three third-party dental offices in
Holladay, Utah, which use HOLLADAY in their names. However, as noted above, we
sustained the Examining Attorney’s objection to Applicant’s including for the first
time in its appeal brief links to third-party web sites purportedly showing use of
HOLLADAY in connection with dental or orthodontic services. The record contains
no evidence of third-party registration or use in the marketplace of HOLLADAY for
any goods or services; thus, we cannot infer the possible extent of consumer exposure.
Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“considerable
evidence of third-party registration and usage of marks in commerce . . . indicates
that the . . . portion of [opposer’s] mark is relatively weak”); Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)
(“considerable number” of third-party use “powerful on its face”); Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar
goods is relevant to show that a mark is relatively weak and entitled to only a narrow
scope of protection.”). Here, Applicant has failed to show any commercial weakness
in the common term HOLLADAY.

13 Applicant’s Appeal Brief, p. 8; 4 TTABVUE 9.
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We find no demonstrated conceptual or commercial weakness in the term
HOLLADAY, and we accord Registrant’s mark the ordinary scope of protection as
opposed to a limited scope of protection that would be accorded a weaker mark. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). The fifth and sixth
du Pont factors are neutral.
C. Similarity of the Marks
We next consider the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps. 73 USPQ2d at 1691
(quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1721 (quotation omitted). Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268
(TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Here, the average purchaser includes ordinary consumers requiring dental services.
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Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751. Moreover, where, as in the present case, the marks are used in
connection with identical services, the degree of similarity between the marks
necessary to support a finding of likely confusion declines. In re Am. Cruise Lines,
Inc., 128 USPQ2d 1157, 1160 (TTAB 2018). See also Bridgestone Ams. Tire
Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
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Applicant’s marks are HOLLADAY DENTAL STUDIO and . Because
HOLLADAY is the first word in Applicant’s marks, and the secondary term DENTAL
STUDIO is descriptive and disclaimed, we find the term HOLLADAY to be the
dominant portion of each of Applicant’s marks, notwithstanding any geographic
suggestiveness in Applicant’s mark.14 See In re Detroit Athletic Co., 128 USPQ2d at
1049 (“Indeed, in view of the marks’ structural similarity, the lead words [DETROIT
ATHLETIC] are their dominant portion and are likely to make the greatest
impression on consumers.”); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d
1738, 1742 (TTAB 2014) (confusing similarity of MT. RAINER and MOUNT RAINER
marks heightened by placement as first words of the mark). See also In re Dixie Rests.,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed and
generic word less dominant); In re Nat’l Data Corp., 224 USPQ at 752; Palm Bay
Imps., 73 USPQ2d at 1692 (first word in the mark most prominent); Century 21 Real
Estate, 23 USPQ2d at 1700 (upon encountering the marks, consumers must first
notice the identical lead word); Presto Pros. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”). This finding is further

14 Applicant’s argument that three third-party registrations for NEW YORK-formative marks
show that where marks share a common geographic indicator that indicator cannot be the
dominant portion of the mark, is unavailing. Applicant’s Appeal Brief, p. 9; 4 TTABVUE 10.
There is no such per se rule. Each application must stand on its own record and be assessed
on a case-by-case basis. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the board or this
court.”).
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supported for Applicant’s word-and-design mark by the primary placement and
relative size of HOLLADAY, where that term is the approximate first half of the
mark. Although Applicant’s word-and-design mark incorporates a leaf design,
Applicant makes no argument about the simple design, apparently ascribing little or
no import thereto, and our cases “reflect the principle that if a mark comprises both
a word and a design, the word is normally accorded greater weight because it would
be used by purchasers to request the goods or services.” M.C.I. Foods, Inc. v. Bunte,
96 USPQ2d 1544, 1551 (TTAB 2010). See also In re Viterra, USPQ2d at 1911 (“[T]he
verbal portion of a word and design mark likely will be the dominant portion.”). We
find this case to be typical, in that the wording of Applicant’s mark is its dominant
feature, particularly given the size and position of the wording relative to the
bifurcating leaf design.
Registrant’s mark is HOLLADAY SMILES. The term SMILES is suggestive of
dental services inasmuch as, as Applicant acknowledges, “SMILES refers to an
orientation of the mouth.”15 Although we consider the mark as a whole, we find this
suggestive term is less dominant in the overall impression of Registrant’s mark, and
that ordinary consumers requiring dental services are likely to focus primarily on
HOLLADAY as the lead word in the mark. Palm Bay Imps., 73 USPQ2d at 1692.
The lead term HOLLADAY in each mark is identical in terms of its appearance,
sound, connotation, and commercial impression. Indeed, Applicant does not argue
otherwise. Instead, Applicant claims that because “marks must be considered in their

15 Applicant’s Appeal Brief, p. 6; 4 TTABVUE 7.
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entireties and because common matter that is weak should not be considered
dominant, the inquiry must therefore be whether the inclusion of DENTAL STUDIO
with HOLLADAY conveys a significantly different commercial impression from” the
inclusion of SMILES with HOLLADAY.16
As discussed above, we agree that the likelihood of confusion analysis must
consider the marks in their entireties. However, Applicant appears to analyze the
terms “in isolation.” Specifically, Applicant argues that “[i]n isolation, these terms
mean entirely different things and convey completely different impressions. SMILES
refers to an orientation of the mouth, while DENTAL STUDIO suggests a location
where dental work is performed.”17 Instead of focusing on these separate terms “in
isolation,” we must look to the marks as a whole. When we do so, we are not persuaded
that the mark HOLLADAY DENTAL STUDIO or creates such a
“significantly different commercial impression” than HOLLADAY SMILES as to
avoid a likelihood of confusion. The meaning and commercial impression of
HOLLADAY is the same in each mark, and when it is coupled with either SMILES
or DENTAL STUDIO, the resulting mark calls to mind some oral connotation, which,
when considered in relation to the identical dental services, conveys a similar
commercial impression. The leaf design of Applicant’s word-and-design mark does not
change the meaning or commercial impression of the HOLLADAY DENTAL STUDIO
wording in that mark; in fact, the word DENTAL appears larger than the word

16 Id.
17 Id.
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STUDIO, so the appearance and impression of the word-and-design mark emphasizes
the HOLLADAY DENTAL portion of the mark’s wording and de-emphasizes the
STUDIO portion of that HOLLADAY DENTAL STUDIO-and-design mark.
Nonetheless, we do not overlook the word STUDIO, and note that it contributes to a
similarity in the structure of the marks; that is, both SMILES and STUDIO begin
with the letter “S,” and as the final word in each mark following the identical lead
word HOLLADAY, further contributes to similarity in sound and appearance.
In sum, we find that the additional terms SMILES and DENTAL STUDIOS are
not sufficient to prevent a likelihood of confusion. Despite the fact that the term
HOLLADAY may have geographical significance, Registrant’s mark is presumed
valid and entitled to the presumption of validity under Section 7 of the Trademark
Act, 15 U.S.C. § 1057. Even if there is some small degree of geographic weakness to
the term HOLLADAY in Registrant’s mark – but, again, Applicant failed to introduce
any evidence of this – even weak marks are entitled to protection against a mark that
is similar in sight, sound, and commercial impression and is used on services that are
identical-in-part and otherwise related. See In re FabFitFun, 127 USPQ2d at 1676
(citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125
(Fed. Cir. 2007)). Although Applicant’s claim of distinctiveness under Section 2(f) may
be construed as Applicant’s concession that the wording HOLLADAY DENTAL
STUDIO is not inherently distinctive, we cannot ascribe such attribute to the wording
in Registrant’s mark. Cf. In re Nat’l Data Corp., 224 USPQ at 751 (“[S]uch action
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cannot affect the scope of protection to which another’s mark is entitled.”) (voluntary
disclaimer by Applicant has no legal effect on the issue of likelihood of confusion).
The first du Pont factor weighs in favor of a finding that confusion is likely.
D. Conditions under Which and Buyers to Whom Sales are Made
Applicant argues that consumers seeking dental care services are careful and
sophisticated purchasers who “exercise great care when choosing a dentist,” and that
while there may not be evidence in the record on this point it is “[c]ommon sense”
that “anyone [who] has selected a dentist knows that it is not an impulse decision.”18
Applicant cites Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1039 (TTAB 2016) to support its “common sense” argument. However,
in Primrose the Board did not rely on “common sense” but instead based its finding
that a consumer would select a senior living community after significant thought and
deliberation, resulting in a careful purchase, on testimony from multiple witness
about the substantial research conducted by consumers over a significant period of
time before making a once-in-a-lifetime decision for a service that usually costs tens
of thousands of dollars annually. See id.
There is no such evidence in this appeal. Both Applicant’s and Registrant’s
services appear to be available to ordinary consumers requiring dental services who
may not exercise a heightened degree of care, and we must consider the degree of care
that would be exercised by the least sophisticated consumer. See Stone Lion Capital

18 Applicant’s Brief, p. 7; 4 TTABVUE 8.

Serial Nos. 87666882 and 87666886
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110 USPQ2d at 1163 (affirming that the Board properly considered all potential
purchasers for recited services, including both sophisticated and unsophisticated
investors, since precedent requires consumer care for likelihood-of-confusion decision
be based “on the least sophisticated potential purchasers”).
Even if the least sophisticated purchaser of dental services may be relatively
sophisticated, “[t]hat the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar [services]. ‘Human memories even of discriminating
purchasers . . . are not infallible.’ Sophistication of buyers and purchaser care are
relevant considerations, but are not controlling on this factual record.” In re Research
& Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 1406, 168 USPQ 110,
112 (CCPA 1970)). We find that the sophistication of purchasers, while relevant and
even if in existence, is not a controlling factor in our determination. The fourth du
Pont factor is neutral.
III. Decision
We find that Applicant’s marks HOLLADAY DENTAL STUDIO and
are similar to the registered mark HOLLADAY SMILES, such that when they are
used in connection with legally identical dental services found in the same trade
channels offered to the same class of consumers, confusion is likely. In view thereof,
the refusal to register each of Applicant’s marks is affirmed.