Pearson Dental Supplies, Inc.

Trademark Trial and Appeal Board

Mar 29, 2012

No. 77470466 (T.T.A.B. Mar. 29, 2012)

Mailed:
March 29, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pearson Dental Supplies, Inc.
________

Serial No. 77470466
_______

Joseph M. Fowler for Pearson Dental Supplies, Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Gwen Stokols, Acting Managing Attorney).
_______

Before Seeherman, Bucher and Wolfson, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pearson Dental Supplies, Inc. seeks registration on the
Principal Register of the mark Sylk (in standard character
format) for goods identified as “dental floss; dental floss
dispensers” in International Class 21.1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s mark,
when used in connection with the identified goods, so
resembles the mark SILK for “dental care products, namely,

1 Application Serial No. 77470466 was filed on May 9, 2008,
based upon applicant’s claim of use anywhere and use in commerce
since at least as early as September 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77470466
- 2 -
disposable dental flossers” also in International Class 21,2
as to be likely to cause confusion, to cause mistake or to
deceive. Additionally, the Trademark Examining Attorney
refused registration under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), solely with respect to the
“dental floss” listed in applicant’s application, on the
ground that the mark Sylk is deceptively misdescriptive of
that item.
After the Trademark Examining Attorney made the
refusals final, applicant appealed to this Board.
Likelihood of Confusion
In urging registrability, applicant contends that it
does not sell “flossers” under its own trade name or under
the Sylk mark; that in reality, registrant is not currently
using the SILK mark on dental care products; that its listed
goods and registrant’s goods are marketed to substantially
different classes of purchasers and hence, they move through
distinct channels of trade; and that applicant’s consumers
are knowledgeable, sophisticated purchasers.
By contrast, the Trademark Examining Attorney argues
that the marks are nearly identical in appearance,
equivalent phonetically, and create identical connotations

2 Registration No. 3433309 issued on May 20, 2008.
Serial No. 77470466
- 3 -
and commercial impressions; that the respective goods are
very closely related, both being dental flossing devices for
individual use; and that these respective goods travel
through the same channels of trade to a population that
includes members of the general public who cannot be held to
a high standard of care in making purchasing decisions
involving these items.
Our determination of likelihood of confusion is based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on this issue. See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations are
the similarities between the marks and the relationship
between the goods. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity of the Marks
As to the first du Pont factor, we compare the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
Serial No. 77470466
- 4 -
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
As to appearance, the Trademark Examining Attorney
points out that each mark is presented in standard character
format, making them nearly identical. While applicant
argues that 25% of the letters are different (Silk vs.
Sylk), we do not apply mathematical formulae in determining
whether visual dissimilarities outweigh the similarities.
Moreover, this particular difference between the marks is
subtle, not significant. Even if prospective consumers
notice this change of a single letter, the fact that the
letters “i” and “y” are sometimes used interchangeably
lessens the visual impact of this particular change.
Similarly, for items that may be recommended by word of
mouth, it is also relevant to our determination under this
factor that the words are phonetically indistinguishable.
Further, because “Sylk” (spelled with a letter “y”) will be
recognized as a misspelling of the word “silk,” we find that
these two words create similar connotations and commercial
impressions. Hence, this du Pont factor favors a finding of
likelihood of confusion.
Serial No. 77470466
- 5 -
The Relationship between the goods
Initially, we note that applicant has raised questions
about whether the cited SILK trademark still exists in the
marketplace as a purchasable product. However, this
argument is, in effect, a collateral attack on the validity
of the registration that cannot be entertained in the
context of this ex parte proceeding. The cited registration
is entitled to the presumptions of Section 7(b) of the
Trademark Act, 35 U.S.C. § 1057(b). See Countour Chain-
Lounge Co., Inc. v. The Englander Co., Inc., 324 F.2d 186,
139 USPQ 285 (CCPA 1963). Under Section 7(b) of the Lanham
Act, registrant is presumed to be the owner of the mark SILK
for “dental care products, namely, disposable dental
flossers.”
In order to show a relationship between the respective
flossing devices, the Trademark Examining Attorney attached
copies of the following third-party registrations having
marks registered in connection with goods of the type listed
in the cited registration and those identified in
applicant’s application:
PLACONTROL for “oral care devices, namely, dental
flossers, dental floss holders, dental
floss, toothpicks” in Int. Class 21;3

3 Registration No. 3214212 issued on February 27, 2007.
Serial No. 77470466
- 6 -
Dr. Fresh for “electric toothbrushes; manual
toothbrushes; synthetic fibers for the
manufacture of brushes, namely,
toothbrushes, hair brushes and cleaning
brushes; toothbrush cases; toothbrush
holders; toothbrushes; dental floss;
dental floss dispensers; dental
flossers; dental tape” in Int. Cl. 21;4
ORAL CHOICE for “tooth brushes; dental floss;
dental flossers” in Int. Class 21;5
PLACKERS for “orthodontic appliances for the
treatment of bruxism, orthodontic
appliances, tongue scrapers” in
International Class 10;
“oral care devices, namely dental
flossers, dental floss, tooth brushes,
interdental brushes, dental floss
holders” in Int. Class 21;6 and
CLEAN IDEA for “dental floss; dental flossers;
tooth brushes” in Int. Class 21.7

While these third-party registrations are not evidence of
use, they serve to suggest that the listed goods are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Additionally, the Trademark Examining Attorney has placed
into the record advertisements from Internet websites
showing a single trademark used on both type of goods:

4 Registration No. 3418139 issued on April 29, 2008.
5 Registration No. 3562283 issued on January 13, 2009.
6 Registration No. 3754249 issued on March 2, 2010.
7 Registration No. 3793625 issued on May 25, 2010.
Serial No. 77470466
- 7 -

Brand Dental Floss Dental Flossers
Oral-B

Reach

G·U·M

Based upon this combination of third-party
registrations and Internet advertising showing that dental
floss and dental dispensers on the one hand, and disposable
dental flossers on the other hand, are of a kind that may —
and in fact, do – emanate from a single source, we find that
the Trademark Examining Attorney has shown that the goods
herein are related.
Serial No. 77470466
- 8 -
Channels of trade
Applicant represents itself as a large, wholesale
dental supply company that has in stock more than 130,000
dental supply items. In addition to selling the brands of
many other manufacturers or suppliers (including those of
registrant), applicant also sells “house” brands like their
Sylk branded dental floss. Moreover, applicant argues at
some length that there can be no likelihood of confusion
because it sells its products only to licensed dental
professionals and buyers for dental professional practices –
not to members of the general public.
Nonetheless, as contended by the Trademark Examining
Attorney, given the lack of restrictions in applicant’s
identification of goods, we must presume that the goods
might well travel through the same ordinary trade channels,
including drugstores, grocery stores, convenience stores and
other retailers of dental hygiene items.
Moreover, even if one were to presume that applicant
distributes all of its branded dental floss through
dentist’s offices without any purchasing decision by the
ultimate user, these dental patients will later encounter
disposable dental flossers like registrant’s in the usual
channels of retail trade for dental hygiene supplies. Thus,
because the ultimate users will be exposed to both goods,
Serial No. 77470466
- 9 -
the asserted separation in the channels of trade argued by
applicant will not prevent confusion.
Levels of care
Turning then to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made,
(i.e., “impulse” vs. careful, sophisticated purchasing),
inasmuch as these goods, by their very nature, are
inexpensive and may be purchased on impulse, the consumers
for applicant’s and registrant’s products will not exercise
great care in examining the involved trademarks. As noted
earlier, as identified, applicant’s goods are not restricted
as to customers or channels of trade. This du Pont factor,
too, favors a finding of likelihood of confusion.
Conclusion on Likelihood of Confusion
While neither applicant nor the Trademark Examining
Attorney discussed the strength of the cited mark in the
context of the likelihood of confusion analysis, in
considering this du Pont factor, we view the cited mark as
highly suggestive of registrant’s disposable flossers, but
still entitled to protection against the use of an extremely
similar mark for the closely related goods at issue herein.
Given that these relatively inexpensive goods are closely
related, and must be deemed to move through the same
Serial No. 77470466
- 10 -
channels of trade to the same classes of ordinary
purchasers, and that the marks are quite similar, we find a
likelihood of confusion despite applicant’s arguments to the
contrary.
Section 2(e)(1), Deceptive Misdescriptiveness
In the interest of completeness, we turn next to the
question of whether the term Sylk is deceptively
misdescriptive as to applicant’s dental floss because it
misdescribes the material content of this product.8 The
two-prong test for whether a mark is deceptively
misdescriptive has been set out as follows: (i) whether the
mark misdescribes the goods to which it applies; and (ii)
whether consumers are likely to believe the misdescription.
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 (TTAB
2002) and In re Quady Winery Incorporated, 221 USPQ 1213,
1214 (TTAB 1984). Under the second prong, the
misrepresentation must concern a feature that would be
relevant to a purchasing decision. Hoover Co. v. Royal
Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720,

8 The Trademark Examining Attorney explicitly says in footnote
1 of her brief that “[t]he final refusal under Section 2(e)(1)
finding the mark misdescriptive is limited to applicant's ‘dental
floss.’”

Serial No. 77470466
- 11 -
1723 (Fed. Cir. 2001); and In re Shniberg, 79 USPQ2d 1309,
1311 (TTAB 2006).
Does the term SYLK misdescribe the goods?

As noted previously, applicant’s proposed mark is a
misspelling of the word “Silk.” When a mark is the phonetic
equivalent of a misdescriptive term, that term is also
misdescriptive if purchasers would perceive the differently
spelled word as the equivalent of the descriptive term.
R. Neumann & Co. v. Bon-Ton Auto Upholstery, Inc., 140 USPQ
245, 247 (CCPA 1964). Accord, Tanner's Council of Am., Inc.
v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979). We agree
with the Trademark Examining Attorney that persons seeing or
hearing the word “Sylk” will immediately recognize the mark
as meaning “silk.” Further, the record shows that
applicant’s goods are not made of silk, but of
polytetrafluoroethylene (PTFE).
As we have often stated, a term is merely descriptive
if it immediately describes the ingredients, qualities, or
characteristics of the goods or services or if it conveys
information regarding a function, purpose, or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217 (CCPA 1978). “[F]or a term to
misdescribe goods or services, the term must be merely
Serial No. 77470466
- 12 -
descriptive, rather than suggestive, of a significant aspect
of the goods or services which the goods or services
plausibly possess but in fact do not.” Phillips-Van Heusen,
63 USPQ2d at 1051.
Applicant argues that the word Sylk is suggestive,
rather that descriptive or deceptively misdescriptive,
because it suggests the “silky” or “silk-like”
characteristics of frictionless dental floss.9 This
argument would be more persuasive if the record did not show
that some floss is indeed made of silk fibers. However, the
examining attorney has submitted evidence that dental floss
made of silk is sold to the general public, including in
large retail enterprises such as Whole Foods, Target.com,
and Amazon.com.
Because dental floss is known to consumers to be made
of silk, the word “silk” clearly describes dental floss.
Thus, for dental floss not made of silk, we find that the
term “silk” is misdescriptive of such goods. Therefore, the
first prong of the test for misdescriptiveness is satisfied.

9 Applicant analogizes here to Registration No. 2292989,
arguing that much as consumers will view the SATINFLOSS brand of
dental floss as suggesting “satin-like” (rather than “made of
satin materials”), so in the case at bar, Sylk suggests only “silk-
like” characteristics. In addition to the fact that each case
must be decided on its own particular facts, we note that the
SATINFLOSS registration to which applicant refers is not of
record.

Serial No. 77470466
- 13 -
Are consumers likely to believe the misdescription?

Next, we address the second prong, which is whether
consumers are likely to believe the misdescription. As
described above, the Trademark Examining Attorney has
introduced evidence that some dental floss is made with silk
and sold in large retail enterprises such as Target.com.
Hence, we find that consumers are likely to believe that
applicant’s goods are made of silk.
Applicant argues that Sylk is not misdescriptive
inasmuch as its packaging says in bold type that applicant’s
dental floss is made from PTFE/Teflon. However, we agree
with the Trademark Examining Attorney that the fact that
applicant’s packaging states that its floss is made of PTFE
does not overcome the deceptively misdescriptive refusal.
See, e.g., In re Budge Manufacturing Co., 857 F.2d 773,
8 USPQ2d 1259, 1261 (Fed. Cir. 1988): “Congress has said
that the advantages of registration may not be extended to a
mark which deceives the public. Thus, the mark standing
alone must pass muster, for that is what the applicant seeks
to register, not extraneous explanatory statements.”
Applicant also argues that no one will actually believe
the alleged misrepresentation because its customers are
literate, sophisticated, licensed dental professionals.
However, applicant’s identification of goods offers no
Serial No. 77470466
- 14 -
restrictions on applicant’s trade channels, and the relevant
population in making our determination on the second prong
of the deceptive misdescriptiveness test must therefore
include consumers of dental floss, i.e., the public at
large.
Further, the misdescription would be a relevant factor
in the consumer’s decision to purchase the goods, since some
consumers would be interested in natural or environmental-
friendly ingredients. The evidence submitted by the
examining attorney shows that vendors advertise their dental
floss as being made of silk as a positive characteristic,
e.g., it is a natural product, it is biodegradable, it does
not have a negative effect on septic systems, and it has a
lesser environmental impact.10
Hence, the second prong of the misdescriptiveness test
is also satisfied.
Therefore, we conclude that the mark Sylk, when used in
connection with dental floss that is not made of silk, is
deceptively misdescriptive. In light of the discretionary
position taken by the Trademark Examining Attorney in
footnote 1 of her brief, our finding that applicant’s mark

10 See http://www.target.com/Radius-Floss-4-pk-Silk/;
http://www.naturalproductsmarketplace.com/ as accessed on October
5, 2010; http://www.jsonline.com/entertainment/102668664.html;
and http://www.greenyour.com/body/personal-
care/toothbrush/tips/use-natural-dental-floss.
Serial No. 77470466
- 15 -
is deceptively misdescriptive for dental floss will not
serve as a bar to registration as to the second item in
applicant’s International Class 21, namely “dental floss
dispensers.” Accordingly, if this were the only statutory
basis for refusal, this application would proceed to
publication only as to “dental floss dispensers” in
International Class 21. However, the refusal on the ground
of likelihood of confusion applies to all goods of Class 21.
Decision: We affirm the refusals to register under
Section 2(d) and Section 2(e)(1) of the Lanham Act.