Microbrush Corp.

Trademark Trial and Appeal Board

Jan 29, 2004

No. 76290053 (T.T.A.B. Jan. 29, 2004)

Mailed: January 29, 2004
Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Microbrush Corporation
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Serial No. 76120194
Serial No. 76290053
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Eric P. Schellin of Schellin & Associates, Ltd. for
Microbrush Corporation.
Marlene Bell, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on
August 30, 2000 and July 24, 2001, respectively, by
Microbrush Corporation (a Wisconsin corporation) to
register on the Principal Register the marks FLOW THRU for
goods amended to read “applicator of liquid to the surfaces
of teeth” in International Class 10 (application Serial No.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76120194 and 76290053
2
76120194), and FLOWTHRU for goods amended to read “dental
applicators for applying a treatment liquid medicament to
the surface of teeth” in International Class 10
(application Serial No. 76290053). Applicant asserts, in
each application, a bona fide intention to use the mark in
commerce.
The Examining Attorney has refused registration in
each application under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark
(FLOW THRU or FLOWTHRU), when used on applicant’s
identified goods, would be likely to cause confusion,
mistake or deception with the registered mark FLOW-THRU-
HEAD for “dental posts” in International Class 10.1
When the refusal to register was made final, applicant
appealed in each application. Applicant and the Examining
Attorney have filed briefs, but applicant did not request
an oral hearing.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
1 Registration No. 1964508, issued March 26, 1996, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. Nos. 76120194 and 76290053
3
We affirm the refusals to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney contends that each of
applicant’s marks (FLOW THRU and FLOWTHRU) is very similar
to the registered mark FLOW-THRU-HEAD, as all of the marks
use the identical words “FLOW” and “THRU,” and applicant’s
deletion of the hyphens and the word “HEAD” does not
sufficiently distinguish applicant’s marks from
registrant’s mark to avoid confusion; that each of
applicant’s marks is similar in sound, appearance,
connotation and overall commercial impression to the cited
registered mark; that the goods are closely related as they
are dental products, which would be marketed in the same
channels of trade in the dental field; and that doubt must
Ser. Nos. 76120194 and 76290053
4
be resolved in favor of registrant. In application Serial
No. 76120194, the Examining Attorney submitted printouts of
a few pages from the “www.trdental.com” web site (TR-Dental
Supplies) showing that that company offers both
Microbrushes Disposable Applicators and SB Posts (stainless
steel dental posts). The Examining Attorney requested, in
her brief on appeal in each application, that the Board
take judicial notice of The American Heritage Dictionary
definition of “head” as “17.c. The working end of a tool
or implement. … 21. The uppermost part; the top.” The
Examining Attorney’s request is granted. See TBMP
§704.12(a) (2d ed. June 2003).2
Applicant contends that the marks are different; that
applicant’s goods and the cited registrant’s goods are
“vastly different” (application Serial No. 76120194 brief,
p. 1) and “very different” (application Serial No. 76120194
brief, p. 2); and that the respective goods travel through
distinct channels of trade to different consumers, with
registrant’s goods offered only to dentists, while
applicant’s goods are sold to anyone requiring a small
2 Also, in each application, the Examining Attorney submitted
copies of third-party registrations for the first time with her
appeal brief. These are untimely and were not considered. See
Trademark Rule 2.142(d). The fact that in each application the
Examining Attorney had previously referenced a search she made
does not make the actual third-party registrations of record.
Ser. Nos. 76120194 and 76290053
5
applicator to deposit a small amount of liquid on a
surface, including hobbyists, horological experts, artists,
machinists and dentists.3
Turning first to a consideration of the cited mark and
each of applicant’s marks, we find that they are very
similar in sound, appearance, connotation and commercial
impression. All of the involved marks consist of the words
“FLOW,” “THRU” and registrant’s mark includes
nondistinctive hyphens and the descriptive word “HEAD”
referring to the working end of a tool. The minor
differences are not likely to be recalled by purchasers
seeing the marks at separate times. Under actual market
conditions, consumers do not have the luxury of a side-by-
side comparison of the marks; and further, we must consider
the recollection of the average purchaser, who normally
retains a general, rather than a specific, impression of
the many trademarks encountered. Thus, the purchaser’s
fallibility of memory over a period of time must also be
3 In applicant’s appeal brief in application Serial No. 76290053,
applicant requested that judicial notice “be taken of the fact
that dental posts cost thousands of dollars while the liquid
applicators of the applicant cost only pennies and are designed
to be disposable.” Inasmuch as this is not proper material for
judicial notice, applicant’s request is denied. See TBMP
§704.12(a) (2d ed. June 2003). We note that both applications
are based on applicant’s assertion of a bona fide intention to
use the marks in commerce, and therefore there are no specimens
of record. Moreover, applicant has offered no informational
material regarding its own goods in either application.
Ser. Nos. 76120194 and 76290053
6
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Applicant’s marks and the registered mark are highly
similar in connotation, all connoting the ease with which
bonding agents or other involved materials will move
through applicant’s applicators or around the top of
registrant’s dental posts.
Turning next to a consideration of the respective
goods, it is well settled that goods need not be identical
or even competitive to support a finding of likelihood of
confusion; it being sufficient that the goods are related
in some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992); and In re International
Telephone and Telegraph Corporation, 197 USPQ 910 (TTAB
1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
Ser. Nos. 76120194 and 76290053
7
constrained to compare the goods as identified in the
application with the goods as identified in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce, N. A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
In this case, the registered mark is for “dental
posts,” while applicant intends to offer “applicator of
liquid to the surfaces of teeth” (application Serial No.
76120194), and “dental applicators for applying a treatment
liquid medicament to the surface of teeth” (application
Serial No. 76290053). The Examining Attorney’s submission
of printouts of pages from the web site of a dental supply
company showing it offers both products is persuasive that
these goods, as identified, are related. In fact, the
evidence placed in the record by the Examining Attorney
shows that applicators are used by dentists to apply
bonding agents. Contrary to applicant’s suggestions, there
is no evidence in the record clarifying whether or not a
dental post may itself be cemented into position inside the
tooth.
Applicant argues in application Serial No. 76290053
that the present refusal to register is the result of “a
Ser. Nos. 76120194 and 76290053
8
failure of the classification system” that brought the
involved goods into juxtaposition in International Class 10
(brief, p. 1); and stated another way, that “it is only the
unfortunate happenstance of a limiting classification
system which brings the registrant’s product and the
applicant’s applicator into tortured juxtaposition”
(applicant’s September 18, 2002 response). We disagree
that it is the classification system; rather, it is
applicant’s identifications of goods which limit its goods
for registration purposes to applicators for dental uses.
While applicant contends that the trade channels are
different in that applicant sells applicators for a wide
array of uses (e.g., hobbyists, artists, machinists) in
addition to uses for dentists, those other uses are not
relevant in light of applicant’s identifications of goods,
which are both clearly limited to dental uses.
We find the respective goods are closely related, and
could be sold through the same channels of trade, to the
same classes of purchasers, which include dentists.
Even if the consumers in the dental field are
relatively sophisticated, they are likely to believe that
the parties’ respective goods come from the same source, if
offered under the involved substantially similar marks.
See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
Ser. Nos. 76120194 and 76290053
9
1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and Aries Systems
Corp. v. World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB
1992).
Decision: The refusal to register under Section 2(d)
is affirmed in each application.