RAK Trademarks, LLC and Comfort Dental Group, Inc.v.H. Jerry Paz D.D.S L.L.C.

Trademark Trial and Appeal Board

Apr 16, 2015

No. 91212384 (T.T.A.B. Apr. 16, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

RAK Trademarks, LLC and Comfort Dental Group, Inc.

v.

H. Jerry Paz D.D.S L.L.C.
_____

Opposition No. 91212384
_____

Marc C. Levy of Faegre Baker Daniels LLP for RAK Trademarks, LLC and Comfort
Dental Group, Inc.

Drew Alia of Alia Law Group for H. Jerry Paz D.D.S. L.L.C.
_____

Before Zervas, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
H. Jerry Paz D.D.S. L.LC. (“Applicant”) seeks registration on the Principal
Register, under the provisions of Section 2(f) of the Trademark Act of 1946, 15
U.S.C. § 1052(f), of the mark LASER COMFORT DENTISTRY (in standard
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characters) for “Cosmetic dentistry; Dentistry; Orthodontic services,” in Class 44.1
Applicant disclaimed the exclusive right to use the word “Dentistry.”
RAK Trademarks, LLC and Comfort Dental Group, Inc. (“Opposers”) opposed
the registration of Applicant’s mark on the ground of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and on the ground that
Applicant has not used his mark in interstate commerce pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a).2 In connection with their likelihood of
confusion claim, Opposers pleaded ownership of eight registrations, including
Registration No. 3560959 for the mark COMFORT DENTAL (in standard
characters) for, inter alia, “Dentist services; Dentistry; Orthodontic services,” in
Class 44.3 Opposers disclaimed the exclusive right to use the word “Dental.”
Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition.

1 Application Serial No. 85775037 was filed on November 8, 2012, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as July 1, 2006.
2 Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), provides that “[t]he owner of
a trademark used in commerce may request registration of its trademark on the principal
register.” (Emphasis added). According to Section 45 of the Trademark Act, 15 U.S.C. §
1027, “a mark shall be deemed to be in use in commerce … (2) on services when it is used or
displayed in the sale of advertising of services and the services are rendered in commerce,
or the services are rendered in more than one State or in the United States and a foreign
country and the person rendering the services is engaged in commerce in connection with
the services.” “The word ‘commerce’ means all commerce which may lawfully be regulated
by Congress.” Id.
3 Issued January 13, 2009; Sections 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91212384
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I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. Opposers introduced the testimony
and evidence listed below:
A. Notice of reliance on copies of Opposers’ pleaded registrations prepared and
issued by the Patent and Trademark Office showing both the current status of and
current title to the registrations;4
B. Notice of reliance on news stories published in printed publications available
to the general public in libraries or in general circulation among members of the
public pursuant to Trademark Rule 2.123(j);5
C. Notice of reliance on materials printed from the Internet pursuant to Safer
Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010);6
D. Notice of reliance on excerpts from Applicant’s discovery deposition with
attached exhibits;7
E. Notice of reliance on Applicant’s supplemental responses to Opposers’
interrogatories;8 and

4 9 TTABVUE. Citations to the briefs and record refer to TTABVUE, the Board’s publicly-
accessible online proceeding file, by prosecution history entry and page numbers.
5 10 TTABVUE.
6 11 TTABVUE.
7 12 TTABVUE.
8 14 TTABVUE.
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F. Testimony deposition of Richard A. Kushner, D.D.S., President, Chief
Executive Officer, and founder of Opposer Comfort Dental Group, Inc., and owner of
Opposer RAK Trademarks, LLC, with attached exhibits.9
Applicant did not introduce any testimony or evidence.
II. Standing
Because Opposers have properly made of record their pleaded registrations,
Opposers have established their standing. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Priority
Because Opposers have properly made of record their pleaded registrations,
Section 2(d) priority is not an issue in the opposition as to the marks and the
services covered by the pleaded registrations. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

9 16 TTABVUE. Opposers filed a copy of Mr. Kushner’s testimony deposition including
material designated as confidential at 15 TTABVUE.
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analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
We focus our analysis on Opposers’ pleaded Registration No. 3560959 for the
mark COMFORT DENTAL (in standard characters) for, inter alia, “Dentist
services; Dentistry; Orthodontic services” because when considered vis-à-vis
Applicant’s mark and identified services, it is that mark that is most likely to
support a finding of likelihood of confusion. That is, if confusion is likely between
those marks, there is no need for us to consider the likelihood of confusion with the
marks in Opposers’ other pleaded registrations, while if there is no likelihood of
confusion between Applicant's mark and the COMFORT DENTAL mark, then there
would be no likelihood of confusion with the marks in Opposers’ other pleaded
registrations. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
A. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register his mark for “Cosmetic dentistry; Dentistry;
Orthodontic services.” The description of services in Opposers’ pleaded registration
is “Dentist services; Dentistry; Orthodontic services.” The services are in part
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identical. Opposers need not prove, and we need not find, similarity as to each and
every activity listed in the description of services of a single class. It is sufficient for
finding likelihood of confusion that relatedness is established for any activity
encompassed by the identification of services in a class in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584,
1588 n.1 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267
(TTAB Jan. 22, 2014).
B. Established, likely-to-continue channels of trade and classes of consumers.
Because the services described in the application and Opposers’ pleaded
registration are in part identical, we must presume that the channels of trade and
classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

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We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991, aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (emphasis in the
original; citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91
USPQ2d 1511, 1519 (TTAB 2009), citing Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”).
In comparing the marks, we are mindful that where, as here, the services are in
part identical, the degree of similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the services.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“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
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between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. June 5, 1992). The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Since the services at issue are dental
services, the average customer will be an ordinary consumer of dental services.10
Applicant’s mark LASER COMFORT DENTISTRY is similar to Opposers’ mark
COMFORT DENTAL in appearance, sound, connotation and commercial impression
because of the similarity of the terms COMFORT DENTISTRY and COMFORT
DENTAL. The word “Comfort” is defined, inter alia, as “the state of ease and
satisfaction of bodily wants, with freedom from pain and anxiety.”11 Consumers
encountering the marks LASER COMFORT DENTISTRY and COMFORT DENTAL
will perceive both marks as meaning pain-free dentistry.

10 Dr. Kushner, Opposer’s President, CEO and founder, testified that Opposers’ clients are
“[a]ny person in need of general dental services.” “Our target client is a lower-middle to
middle-income person looking for quality, affordable dental services, but, of course,
everyone is welcome.” 16 TTABVUE 15.
11 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
410 (2nd ed. 1987). The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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The addition of the word “Laser” to Applicant’s mark does not serve as a point of
distinction between the marks because consumers are likely to believe that LASER
COMFORT DENTISTRY is the application of laser technology to Opposers’
COMFORT DENTAL services.
We find that the marks are similar in terms of appearance, sound, connotation
and commercial impression.
D. Balancing the factors.
Because the marks are similar, the services are in part identical and the services
are presumed to move in the same channels of trade and are rendered to the same
classes of consumers, we find that Applicant’s mark LASER COMFORT
DENTISTRY for “Cosmetic dentistry; Dentistry; Orthodontic services” is likely
cause confusion with Opposers’ registered mark COMFORT DENTAL for “Dentist
services; Dentistry; Orthodontic services.”
Decision: The opposition is sustained and registration of Applicant’s mark
LASER COMFORT DENTISTRY is refused.