SmithKline Beecham Corp.v.Tocad Co., Ltd.

Trademark Trial and Appeal Board

Sep 18, 1998

No. 92023622 (T.T.A.B. Sep. 18, 1998)

Hearing: Paper No. 44
December 9, 1997 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
SmithKline Beecham Corporation
v.
Tocad Co., Ltd.
_____
Cancellation No. 23,622
_____
Roberta Jacobs-Meadway of Panitch Schwarze Jacobs & Nadel,
P.C. and Gary D. Krugman of Sughrue, Mion, Zinn, MacPeak &
Seas for SmithKline Beecham Corporation.
Michael O. Warnecke of Mayer, Brown & Platt for Tocad Co.,
Ltd.
_____
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
SmithKline Beecham Corporation has filed a petition to
cancel the registration of the mark AQUA FLOSS for a “water
jet oral hygiene device for cleaning and irrigating gums and
spaces between teeth.”1
As grounds for cancellation, plaintiff alleges that,
through its related companies and predecessors, it has for
many years developed, manufactured and sold pharmaceutical
Cancellation No. 23,622
2
and dental care products; that since at least as early as
August 1972 plaintiff has used the marks AQUA FRESH and
AQUAFRESH for toothpaste and other oral hygiene care
products; that it is the owner of registrations for the
following marks: AQUA FRESH2; AQUAFRESH3; and AQUA-FRESH4
for toothpaste; and AQUA-FRESH FLEX for toothbrushes5; that
the above marks constitute a family of AQUA FRESH marks; and
that defendant’s mark, when applied to the goods identified
in its registration, so resembles plaintiff’s previously
used and registered marks for its products as to be likely
to cause confusion.
Defendant, in its answer, has denied the salient
allegations of the petition to cancel.6
The record includes, inter alia, the pleadings; the
file of the involved registration; trial testimony taken by
both parties; plaintiff’s notice of reliance on its pleaded
registrations as well as a number of its other
registrations;7 plaintiff’s notice of reliance on third-

1 Registration No. 1,660,337 issued October 8, 1990; Section 8
affidavit accepted.
2 Registration No. 1,006,820 issued March 18, 1975; renewed.
3 Registration No. 1,006,821 issued March 18, 1975; renewed.
4 Registration No. 1,097,151 issued July 25, 1978; Sections 8 &
15 affidavit filed.
5 Registration No. 1,662,981 issued October 29, 1991; Sections 8
& 15 affidavit filed.
6 Defendant, in its answer, also asserted the affirmative defense
of laches. However, at the oral hearing on this case,
defendant’s counsel stated that defendant was not pursuing this
defense and, thus, we have not considered it.
7 We note that plaintiff has not relied on these other
registrations in its likelihood of confusion claim.
Cancellation No. 23,622
3
party registrations to show the relatedness of the parties’
goods; plaintiff’s notice of reliance on defendant’s
responses to requests for admissions; defendant’s notice of
reliance on plaintiff’s responses to requests for
admissions; plaintiff’s notice of reliance on excerpts from
the NEXIS data base and the Internet to show the strength of
plaintiff’s AQUA FRESH mark; defendant’s notice of reliance
on third-party registrations to show the weakness of marks
which include the term AQUA; and the parties’ stipulation to
admit into evidence copies of correspondence between the
parties’ counsel. In addition to the trial testimony, the
record includes numerous exhibits introduced in connection
therewith.
According to the record, plaintiff first sold
toothpaste under the mark AQUA FRESH in 1972. However, it
was not until 1979 that plaintiff began to heavily promote
its AQUA FRESH toothpaste and to enjoy significant sales
under the AQUA FRESH brand. In addition to its basic AQUA
FRESH flouride toothpaste, plaintiff has developed and now
offers several other toothpastes designed for specific
purposes, i.e., AQUA FRESH TRIPLE PROTECTION, AQUAFRESH
SENSITIVE, AQUAFRESH WHITENING and AQUA-FRESH FOR KIDS.
Also, plaintiff offers toothbrushes under the marks
AQUAFRESH FLEX, AQUA-FRESH FLEX, AQUAFRESH FLEX DIRECT and
AQUAFRESH FLEX OUTRAGEOUS COLORS. According to plaintiff’s
Cancellation No. 23,622
4
witness, each of the above marks was selected to take
advantage of the fame and reputation of the AQUA FRESH mark.
Plaintiff’s toothpastes and toothbrushes are sold in
ninety-five percent of the grocery stores, drug stores and
mass merchandisers in the United States. Plaintiff’s
toothpastes and toothbrushes retail for between $1.00 and
$6.00. Its sales of toothpastes have risen from 70 million
units in 1979 to 124 million units in 1995, and AQUA FRESH
is and has been for many years the nation’s third leading
brand of toothpaste.
Since 1979 plaintiff has spent tens of millions of
dollars in advertising and promoting its products.8 It has
nationally advertised its products through a variety of
media, including television, newspapers and magazines. In
addition, plaintiff has promoted its products through the
use of coupons, inserts in publications, in-store displays
and by sponsorship of a race car. By virtue of the
extensive advertising, promotion and sale of AQUA FRESH
toothpaste, plaintiff’s AQUA FRESH mark is well known. This
fact is confirmed by two market research studies, one of
which was conducted by the Landis Research Group in April-
May 1994. According to this study, eighty percent of the
respondents had heard of AQUA FRESH toothpaste; fifty-seven
percent remembered seeing advertising in the past year for
Cancellation No. 23,622
5
AQUA FRESH toothpaste and forty-three percent had used AQUA
FRESH toothpaste. The second study was conducted by the
Icon research organization in February 1996 and demonstrated
an aided awareness of AQUA FRESH brand toothpaste of ninety-
five percent and an unaided awareness of forty-six percent.
Defendant’s primary business is as a manufacturer of
photographic and video accessories. In 1989 defendant was
approached by Ricoh Elemex, a Japanese corporation, about
distributing an oral irrigator within the United States. An
oral irrigator is a battery-operated appliance that
generates a stream of water through a nozzle to remove
particles from the surfaces of the teeth and gums. Prior to
beginning sales of the oral irrigator, defendant obtained
approval from the Food and Drug Administration and a product
endorsement from the American Dental Association. Defendant
considered several possible trademarks to identify its oral
irrigator and, after settling on AQUA FLOSS, began sales of
the product under this mark at least as early as June 1,
1990. Defendant priced the oral irrigator at a suggested
retail price of $39.95. According to defendant’s witness,
during the period of 1990 to 1995 defendant’s oral irrigator
was nationally distributed through direct mail catalogs,
catalog showroom stores, drug store chains, department
stores and warehouse club merchandisers. Defendant has

8 Plaintiff’s sales and advertising figures have been made of
Cancellation No. 23,622
6
advertised the oral irrigator on television and in print
advertisements and promoted the product at trade shows.
From 1990 to 1995 defendant spent between $300,000 -
$500,000 on the advertisement and promotion of the AQUA
FLOSS oral irrigator. Defendant has employed several
independent sales representatives to nationally promote and
sell the AQUA FLOSS oral irrigator. Most recently, the oral
irrigator has been sold primarily through direct mail
catalog merchandisers due to cost efficiencies. Also,
defendant has been unable to maintain an inventory of oral
irrigators due to a manufacturing problem. However,
defendant’s witness testified that in 1996 defendant shipped
300-400 units to customers and it fully intends to continue
sales of the oral irrigator.
Turning first to the issue of priority, the record
clearly establishes plaintiff’s continuous use of the mark
AQUA FRESH (and the variations AQUA-FRESH and AQUAFRESH) for
toothpaste. Thus, plaintiff has established its priority
with respect to these marks. We note that plaintiff has
claimed ownership of a family of marks characterized by AQUA
FRESH. However, in the context of this petition for
cancellation, such a claim is not understood. Plaintiff
owns the mark AQUA FRESH (and the variations AQUA-FRESH and
AQUAFRESH) and that mark is well-known. That is the mark

record under seal.
Cancellation No. 23,622
7
that must be compared with defendant’s mark AQUA FLOSS.
Accordingly, we need not decide whether plaintiff has
established a family of AQUA FRESH marks.”9
We turn then to the issue of likelihood of confusion.
Upon consideration of the relevant factors set forth in In
re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood
of confusion exists, it is our view that confusion as to
source or sponsorship is not likely to occur. We
acknowledge, in this regard, that while many factors favor
plaintiff and, thus, a finding that confusion is likely,
such factors are simply outweighed by the significant
differences in the overall commercial impressions of the
parties’ respective marks.
There is no question that plaintiff’s toothpastes and
and respondent’s oral irrigators are sold through some of
the same channels of trade to the same classes of customers.
In addition, the substantial sales and advertising by
plaintiff of its AQUA FRESH toothpaste, and the many years
it has continuously used such mark, establish the
considerable renown of the mark which, generally speaking,

9 If plaintiff were arguing that it had a family of AQUA marks
(AQUA followed by different word marks), however, this would be
relevant to the question of likelihood of confusion. That is, to
the extent the purchasing public identified the prefix AQUA for
oral care products with plaintiff, that would make more likely
the confusion with defendant’s AQUA FLOSS oral irrigator because
the public may tend to believe that that product comes from
plaintiff.
Cancellation No. 23,622
8
would entitle it to a substantial degree of protection
against similar marks.10
Nevertheless, in this case, the mark AQUA FRESH and the
related marks AQUA-FRESH and AQUAFRESH on the one hand, and
the mark AQUA FLOSS, on the other, engender such different
overall commercial impressions that there is no likelihood
of confusion. We recognize that each of the marks includes
the word AQUA followed by a short one-syllable word
beginning with the letter “f”, i.e., FRESH and FLOSS.
However, “fresh” and “floss” have very different meanings.
That is, “fresh” indicates an attribute as in “freshens
breath” and “floss” indicates a function as in the action of
defendant’s oral irrigator. Plaintiff’s AQUA FRESH, AQUA-
FRESH and AQUAFRESH marks, on the one hand, connote
freshness and defendant’s AQUA FLOSS mark, on the other,
connotes flossing with water. Thus, the marks in their
entireties engender very different connotations and
commercial impressions. Under such circumstances, the mere
inclusion of the word “aqua” in the parties’ marks is an

10 We should point out that the third-party registrations offered
by defendant with respect to the alleged weakness of marks which
include the word “aqua” in no way diminished the scope of
protection to be accorded plaintiff’s AQUA FRESH mark. Only
three of the registrations covered oral care products, and there
was no evidence that the marks listed in the registrations are in
use. More importantly, the substantial sales and advertising by
plaintiff of its AQUA FRESH toothpaste is more than sufficient to
overcome any alleged weakness in the mark due to the inclusion of
the word “aqua.”
Cancellation No. 23,622
9
insufficient basis on which to hold that the marks are in
conflict.
We should emphasize that, in arriving at our conclusion
that confusion as to source is not likely, we are not
relying on defendant’s argument concerning the absence of
evidence of instances of actual confusion. Our conclusion
that confusion is not likely is based, quite simply, on the
overall differences in the connotations and commercial
impression of these marks. This fact is more important to
the resolution of the issue of likelihood of confusion here
than the strength of the AQUA FRESH mark as applied to
toothpaste and the fact that the parties’ marks are applied
to goods which fall into the category of oral care products.
See e.g., Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Cancellation No. 23,622
10
Decision: The petition to cancel is denied.
R. L. Simms
R. F. Cissel
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board