Lancer Orthodontics, Inc.

Trademark Trial and Appeal Board

Jul 8, 1998

No. 75017413 (T.T.A.B. Jul. 8, 1998)

Paper No. 16
HANAK/MD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lancer Orthodontics, Inc.
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Serial No. 75/017,413
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Stephen J. Strauss of Fulwider, Patton, Lee & Utecht for
Lancer Orthodontics, Inc.
Chris Doninger, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell , Managing Attorney)
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Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Lancer Orthodontics, Inc. (applicant) seeks
registration of the mark IN ADVANCE and design in the form
shown below for “dental abrasives and polishes.” The
application was filed on November 6, 1995 with a claimed
first use date of May 5, 1995.
Ser No. 75/017,413
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The Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark ADVANCE, previously
registered in typed capital letters for “dental restorative
materials.” Registration No. 1,963,489.
When the refusal was made final, applicant filed an
appeal to this Board. Applicant and the Examining Attorney
filed briefs. Applicant has withdrawn its request for an
oral hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d) goes
to the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the goods, both applicant’s goods and
registrant’s goods are sold to and used by dentists.
Moreover, the Examining Attorney has made of record two
third-party registrations showing that the same marks have
Ser No. 75/017,413
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been registered for both dental abrasives and polishes and
dental restorative materials. Nevertheless, as acknowledged
by the Examining Attorney, not only are applicant’s goods
and registrant’s goods by no means identical, but in
addition, they are not even “directly competitive.”
(Examining Attorney’s brief page 6).
Turning to a consideration of the marks, we find that
in terms of visual appearance and connotation there are
decided differences. Applicant’s mark includes a depiction
of a dental instrument. As applied to dental abrasives and
polishes, a dental instrument is certainly not an arbitrary
design. Nevertheless, the dental instrument in applicant’s
mark is depicted in a rather prominent fashion, and thus
serves, along with the presence of the word IN, to
distinguish in terms of visual appearance applicant’s mark
from registrant’s mark. We simply do not share the view of
the Examining Attorney that the presence of this prominent
design in applicant’s mark “would not play a role” in
distinguishing applicant’s mark from registrant’s mark.
(Examining Attorney’s brief page 4).
In terms of connotation, the marks are also decidedly
different. The Examining Attorney has dismissed the
presence of the word IN in applicant’s mark as “merely a
preposition modifying the word that makes the greatest
commercial impression in the registrant’s mark, ADVANCE.”
Ser No. 75/017,413
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(Examining Attorney’s brief page 3). We disagree. The
phrase “in advance” is a common one which has a well
understood meaning which is different from the meaning of
the word “advance.” The phrase “in advance” denotes prior
to or in preparation for, a connotation which is reinforced
by its use on goods which can be used in preparation for
other dental procedures.
On the other hand, registrant’s mark ADVANCE,
especially as applied to dental restorative materials, has
an entirely different meaning which is laudatory in nature.
In this regard, we note that the word “advance” is defined
as meaning, among other things, “to help or aid in the
improvement of,” Webster’s Third New International
Dictionary (1976), and thus suggests a superior product.
Accordingly, not only do the meanings of applicant’s mark
and registrant’s mark differ, but in addition, registrant’s
mark, especially as applied to dental restorative materials,
is laudatory in nature and hence is entitled to a narrower
scope of protection than an arbitrary mark. In re General
Motors Corp., 23 USPQ2d 1465, 1470 (TTAB 1992). While it is
true that in terms of pronunciation, there are clear
similarities between applicant’s mark and registrant’s mark,
we find that such similarities in pronunciation are simply
outweighed by the clear dissimilarities in terms of visual
appearance and meaning or connotation.
Ser No. 75/017,413
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Finally, it must be remembered that both applicant’s
goods and registrant’s goods are sold to and used by
dentists. The Examining Attorney does not take issue with
applicant’s contention that dentists are sophisticated
purchasers. In this regard, we note that it has been stated
that “doctors [are] as sophisticated a group as one could
imagine.” Pfizer Inc. v. Astra Pharmaceutical, 858 F. Supp.
1305, 33 USPQ2d 1545, 1562 (SDNY 1994). Of course, the term
“doctors” includes “doctors of dental medicine” and “doctors
of dental surgery.” It has been noted that with regard to
the issue of likelihood of confusion, purchaser
“sophistication is important and often dispositve because
sophisticated consumers may be expected to exercise greater
care.” Electronic Design & Sales v. Electronic Data
Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.
1992).
We find that applicant’s mark and registrant’s mark are
sufficiently different in terms of visual appearance and
connotation or meaning such that their use on related but
different dental products would not result in confusion when
the purchasers and users of said dental products are
decidedly sophisticated and careful in their purchases, as
are dentists.
Decision: The refusal to register is reversed.
Ser No. 75/017,413
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E. J. Seeherman
E. W. Hanak
G.D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board