Rodeo Dental- Main Street, PLLC

Trademark Trial and Appeal Board

Nov 25, 2014

No. 85807031 (T.T.A.B. Nov. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Rodeo Dental – Main Street, PLLC
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Serial No. 85807031
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James S. Patterson of Hiersche, Hayward, Drakeley & Urbach P.C.,
for Rodeo Dental – Main Street, PLLC.
Kevin A. Mittler, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Zervas, Cataldo and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Rodeo Dental – Main Street, PLLC (“Applicant”) seeks registration on the
Principal Register of the mark for
Orthodontic, oral surgery and endodontic services in
International Class 44.1

1 Application Serial No. 85807031 was filed on December 19, 2012, based upon applicant’s
claim of first use anywhere and use in commerce since at least as early as June 16, 2009.
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The description of the mark is: “The mark consists of the words Rodeo Dental &
Orthodontics with a tooth wearing a cowboy hat with a floss lasso and a longhorn
holding a toothbrush.” The phrase DENTAL & ORTHODONTICS has been
disclaimed.
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant's mark so resembles the registered mark
for cosmetic dentistry2 that, as used in
connection with Applicant's identified services, it is likely to cause confusion or
mistake or to deceive. The phrase RODEO DENTAL STUDIOS is disclaimed in the
cited registration.
The Applicant appealed the final refusal. We affirm the refusal to register.
I. Evidentiary Issue
In its Appeal Brief, Applicant cites to an Office Action dated March 1, 2010,
which was part of the registration file of the cited registration. The registration file
was not made of record during the prosecution.
During the examination of a pending application,
examining attorneys make Section 2(d) determinations
based on the information contained in the four corners of
the electronic printout of a prior pending application or
registration pulled from the Office's electronic database
and not on the complete contents of the prior pending
application or registration files. Thus, in citing a

2 Registration No. 3855933 issued October 5, 2010.
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registration which forms a bar under Section 2(d),
examining attorneys attach to the Office Action only a
printout from the Office's electronic database of the cited
registration and not the contents of the registration file,
and it is only this printout that forms part of the record. If
an applicant wishes to rely on matter within the
filewrapper of that cited registration, it must timely make
it of record during the prosecution of its application. In
other words, the filewrapper of a cited registration is not
made of record by virtue of the examining attorney
attaching to the Office Action the printout detailing the
particulars of the issued registration.
In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Because the
Examining Attorney did not address this evidence in the Examining Attorney’s
brief, the Examining Attorney cannot be said to have agreed to consideration of this
evidence. Accordingly, the March 1, 2010 Office Action issued during prosecution of
the cited registration is not properly of record, and Applicant’s arguments with
regard thereto will be given no consideration.3
II. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth 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 Co., 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

3 We have, however, considered the disclaimer of the term “RODEO DENTAL STUDIOS,”
since the disclaimer is included in the electronic print-out of the cited registration.
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USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity of Dissimilarity and Nature of the Services.
We start by considering the second du Pont factor of the similarity or
dissimilarity of the services. Our evaluation of the services is based on the services
as identified in the registration and application. In re Dixie Restaurants Inc., 41
USPQ2d at 1534. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s services are identified as “orthodontic, oral surgery and endodontic
services” and the services in the cited registration are identified as “cosmetic
dentistry.” To distinguish the services, Applicant argues that
The Cited Mark is for services in the cosmetic industry
while the Applicant’s Mark is for orthodontic, oral surgery
and endodontic services. Additionally, Applicant’s
business specialized in pediatric orthopedic services,
while the cited marks [sic] business has no such
specialization.
Appeal Brief, p. 7, 4 TTABVUE at 9. Applicant’s argument is unavailing since the
recitation of services in the Cited registration is not restricted to the “cosmetics
industry.” Moreover, Applicant has not defined the “cosmetics industry” nor
provided evidence that cosmetic dentistry is a part of such industry. Further, the
relevance of Applicant’s assertion that it specializes in pediatric orthopedic services
is irrelevant since Applicant’s recitation of services does not limit Applicant’s
customers to children or to any orthopedic services, other than orthodontics.
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While Applicant has not defined the relevant services, the Examining Attorney
did submit definitions of each of the listed services:4
“Cosmetic Dentistry” consists of “a variety of dental
treatments aimed at improving the appearance of the
teeth. The purpose of cosmetic dentistry is to improve the
appearance of teeth using bleaching, bonding, veneers,
reshaping, orthodontics or implants”;
“Orthodontic” pertains “to the orthopedic correction of
abnormal dental relationships, including related
abnormalities in facial structures”;
“Oral Surgery” is the branch of dentistry concerned with
the surgical and adjunctive treatment of diseases,
injuries, and deformities of the oral and maxillofacial
region”; and
“Endodontic” pertains to or emanates from “the pulp
cavity of the tooth.”
Thus, as identified, the services in the cited registration, “cosmetic dentistry”
include Applicant’s “orthodontic” services. As such, the services are identical in part
and thus overlap.
Moreover, the record supports a finding that these services are closely related.
The Examining Attorney submitted copies of fifteen third-party registrations each
of which includes both Applicant's services and the services in the cited registration,
and serves to suggest that the services are of a kind that may emanate from a single
source. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB 2012); In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). See, for example,

4 Exhibit to Office Action dated October 15, 2013 from The Free Dictionary by Farlex,
(http//medical-dictionary.thefreedictionary.com).

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Reg. No. 3840060 for the mark VIZSTARA
Services: Cosmetic dentistry; Dentistry; Orthodontic
Services; Oral surgery and Dental implant services.

• Reg. No. 4278956 for the mark A BEAUTIFUL SMILE
STARTS HERE
Services: Cosmetic dentistry; Dental hygienist services; Dental
services, namely, performing restorative and cosmetic procedures;
Dental services, namely, treatment of patients with snoring, sleep
apnea and TMJ (temporomandibular joint) disorders; Dentistry;
Dentistry services, namely, administering portable intravenous
sedation; Neuromuscular dentistry; Oral surgery and dental
implant services; Orthodontic services; Providing a website
featuring information for dentists on the subject of treatments and
procedures related to dentistry; Providing a website featuring
information for patients in the field of dental health; Providing
news and information in the field of dentistry; Sports dentistry.

• Reg. No. 3930595 for the mark YOUR SMILE YOUR
HEALTH
Services: Dentist services, in the field of cosmetic,
esthetic, laser, periodontal, endodontic, neuro-
muscular, surgical, natural, holistic, and alternative
dentistry; and

• Reg. No. 4083704 for the mark MAKE A SMILE &
design
Services: Cosmetic dentistry; Dental hygienist
services; Dental services, namely, performing
restorative and cosmetic procedures; Dental services,
namely, treatment of patients with snoring, sleep
apnea, and TMJ (temporomandibular joint) disorders;
Dentist services; Dentistry; Oral surgery and dental
implant services; Orthodontic services; Pediatric
health care services; Providing a website featuring
information for patients in the field of dental health.
Exhibits to Office Action dated April 6, 2013.
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In addition, the Examining Attorney has provided more compelling evidence
in the form of excerpts from third-party websites which list services set forth in both
the application and the cited registration, examples of which include:
Center Point Dental Group
(www.centerpointdentalgroup.com) – services include
laser dentistry (used for endodontics and periodontics),
oral cancer screening, oral hygiene care, dental cleaning,
sealants, bonding, fillings, crowns and bridges, root canal
treatment, dental implants, cosmetic dentistry, and
orthodontics; and

Concerned Dental Care
(www.concerneddentalcare.com) – services include
dentistry, orthodontics, cosmetic denistry, and kids
denistry.
Exhibits to Office Action dated October 15, 2013. Thus, the recitations of services
themselves and the record evidence establishes both that Applicant’s services and
the services in the cited registration are identical-in-part and closely related, and
also that they are the type of services that may emanate from a single source.
B. The similarity or dissimilarity of established, likely-to-continue trade
channels.
The absence of any restrictions of the services in either the application or the
cited registration also governs our analysis of the third du Pont factors, the
channels of trade in which the services travel and the class of customer to whom the
services are provided.
“It is well established that absent restrictions in the application and
registration, [identical or related] goods and services are presumed to travel in the
same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d
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1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Since the services identified in both
the application and cited registration are overlapping dental services and there are
no restrictions as to their channels of trade, they will be provided to the same
consumers, namely, ordinary consumers requiring or seeking dental care.
C. The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing.
Applicant argues that consumers seeking dental care services are sophisticated
purchasers since “[l]ogically, deciding on a dentist that may have to perform some
form of oral surgery is a decision that the ordinary consumer will not take lightly.
The selection of a dental care provider is a personal and involved process, and
consumers will conduct much more than a mere cursory examination of the
available providers.” Appeal Brief, p. 12, 4 TTABVUE at 14. However, both
Applicant’s services and those of Registrant appear to be available to ordinary
consumers requiring dental services who may not exercise a heightened degree of
care.
Furthermore, even if consumers of the services are 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 goods [or 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 and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); citing Carlisle
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Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 1406, 168 USPQ
110, 112 (CCPA 1970).
Similarly, we find that the sophistication of the purchasers, while relevant and
even if in existence, is not a controlling factor in our determination.
D. Similarity or Dissimilarity of the Marks.
Next, we consider the first du Pont factor, the similarity or dissimilarity of
the marks and
, and compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), 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, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (citation omitted). Moreover, the in-part identical and closely
related nature of the services is important to our analysis since it has long been
held that “when marks would appear on virtually identical goods or services, as in
the case here, the degree of similarity necessary to support a conclusion of likely
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confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) and cased cited therein.
While we analyze the marks in their entireties, it is well settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature when evaluating the similarities of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Further, our analysis must be based on the recollection of the average
purchaser who normally retains a general, rather than specific, impression of
trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
When analyzing a composite mark comprised of both words and designs, we
generally find that the verbal portion of the mark is the dominant portion since it
is the one most likely to indicate the origin of the goods to
which it is affixed. This makes sense given that the literal
component of brand names likely will appear alone when
used in text and will be spoken when requested by
consumers. (“This is particularly true when a mark
appears in textual material, such as catalog descriptions,
in which it is often impossible or impractical to include
the design feature of the mark”).
In re Viterra Inc., 101 USPQ2d at 1911 (internal citations omitted).
Moreover, when analyzing the verbal portion of the marks, “[i]t is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (Likelihood of confusion found between KIDWIPES and KID
STUFF for pre-moistened disposable towelettes). See also Palm Bay Imports Inc., 73
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USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “Veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 23
USPQ2d at 1700 (upon encountering the marks, consumers will first notice the
identical lead word).
In this case, the first word of each mark is the word RODEO which is followed
by the word DENTAL. In Applicant’s mark, RODEO DENTAL is on a separate line
and in larger font than the term & ORTHODONTICS. Applicant’s mark is likely to
be recalled by consumers either as RODEO or RODEO DENTAL because of the
generic nature of ORTHODONTICS and because of the prominent position of
RODEO DENTAL in the mark. In the cited mark, RODEO DENTAL STUDIOS
appears all on the one line and in one type font. As such, consumers are likely to
remember this mark as RODEO or RODEO DENTAL STUDIOS.
The design feature in Applicant’s mark consists of two small characters that are
situated separately on each side of the term “RODEO DENTAL.” They consist of
stylized figures holding dental floss and a toothbrush. The figures are considerably
smaller in size than the wording in the mark and positioned on each side of the
mark, and hence are subordinate to the wording, which is centered in the mark and
used when referring to the services. The design in the cited registration is a
geometric design that is not particularly memorable. As such, it is also subordinate
to the wording.
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Applicant acknowledges that “the two (2) marks have some similarity in
appearance,”5 however, Applicant argues that the marks “taken as a whole, create a
unique commercial impression sufficient to support a finding of no likelihood of
confusion.6
Applicant bases its argument on the alleged weakness of the registered mark,
and the perceived difference in the meaning and pronunciation of the term RODEO.
Noting that the term RODEO is disclaimed in the registered mark, Applicant
argues that the term is geographically descriptive of the services in the cited
registration and connotes Rodeo Drive or Beverly Hills, which weakens the strength
of the registration. However, a weak term in the registered mark does not avoid a
finding of likelihood of confusion since
likelihood of confusion, mistake or deception is to be
avoided as much between weak marks as between strong
marks, King Candy Co. v. Eunice King's Kitchen, Inc., 182
USPQ 108, 109 (CCPA 1974) and that even weak marks
are entitled to protection against registration of similar
marks, especially identical ones, for related goods and
services, In re Textron, Inc., 180 USPQ 341 (TTAB 1973)
(common mark” E-Z”); In re William Hodges & Co., 190
USPQ 47 (CCPA 1976) (common mark “POST MASTER”).
In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). Further, the disclaimer
does not affect the perceived meaning or connotation of the mark. A disclaimer does
not remove the disclaimed matter from the mark. The mark must still be regarded
as a whole, including the disclaimed matter, in evaluating similarity to other
marks.” Trademark Manual of Examining Procedure (TMEP) § 1213.10 (Oct. 2014).

5 Appeal Brief, p. 7, 4 TTABVUE at 9.
6 Id.
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See In re National Data Corp., 224 USPQ at 751; Specialty Brands, Inc. v. Coffee
Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984);
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390,
395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ
433 (CCPA 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r
Pats. 1991). Moreover, “the public is unaware of what words have been disclaimed
during prosecution of the trademark application at the PTO [United States Patent
& Trademark Office].” In re National Data Corp., 224 USPQ at 751.
The asserted geographic descriptiveness is also the basis for Applicant’s claim
that the marks have different meanings and connotations. Applicant asserts that
“[d]ue to its close proximity to the high-ending shopping district, the term ‘Rodeo’ in
the Cited Mark is meant to convey a sense of wealth and class upon the Rodeo
Dental Studios Offices,”7 while “Applicant’s Mark [which] … contains an image of a
tooth in a cowboy hat holding a lasso and a steer holding a large tooth brush” uses
“the term ‘Rodeo’ in the traditional Western sense. Appeal Brief, p.6, 4 TTABVUE
at 8. This argument presupposes that the mark RODEO DENTAL STUDIOS will
only be used in or near Rodeo Drive. This presumption is incorrect. The registration
is not restricted to any geographic location, including areas in the country where
rodeos are popular.
Further, we find unpersuasive Applicant’s observation that in certain cases,
even where the marks at issue are identical or nearly identical, the differences in

7 Appeal Brief, p.6, 4 TTABVUE at 8.
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connotation can outweigh any visual or phonetic similarity. Applicant relies on
Coach Services, Inc. v. Triumph Learning LLC, 101USPQ2d 1713 and Blue Man
Prods. v. Tarman, 75 USPQ2d 1811 (TTAB 2005). The facts in this case differ from
those in both Coach and Blue Man Prods. In the Coach case, the Court found that
the connotation of the mark COACH for luxury handbags was different from the
connotation of the mark COACH & design for educational products. Coach Services,
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. In the Blue Man Prods. case,
the Board found that the connotation of the mark BLUE MAN GROUP “is the
appearance of the performers” and that Applicant's BLUEMAN mark “has no such
connotation for cigarettes or tobacco.” Blue Man Prods. v. Tarman, 75 USPQ2d at
1820. These holdings were predicated on the differences in the goods and services
involved. In this case, Applicant’s services and the services in the cited registration
are identical in part and otherwise closely related. As such, the term RODEO
DENTAL has the same connotation and commercial impression when applied to the
services in both the application and the cited registration.
Applicant also argues that the marks are different in sound and meaning
because the word “RODEO” is pronounced differently in each mark. Applicant
claims that in its mark, the word is pronounced RO-dee-o and in the cited
registration the word is pronounced ro-DAY-o. This argument is not persuasive.
“There is no correct pronunciation of a trademark, and consumers may pronounce a
mark differently than intended by the brand owner.” In re Viterra Inc., 101 USPQ2d
at 1912. As pointed out earlier in the decision, when the registered mark is used in
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locations where rodeos are popular, it is unlikely that the mark would be
pronounced differently and have a difference in meaning.
As discussed, supra, when services are in-part identical, the degree of similarity
necessary to support a conclusion of likely confusion declines. In view thereof and
the foregoing conclusions, we find that the similarities in the marks outweigh the
dissimilarities.
Having considered all the evidence and argument on the relevant du Pont
factors, we conclude that Applicant’s mark is likely to cause confusion with mark
shown in the cited registration.
Decision: The refusal to register Applicant’s mark
is affirmed.