Valley Dental, Inc.

Trademark Trial and Appeal Board

Dec 29, 1998

No. 74651835 (T.T.A.B. Dec. 29, 1998)

Paper No. 11
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Valley Dental, Inc.
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Serial No. 74/651,835
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Paul Grandinetti of Levy, Zito & Grandinetti for Valley
Dental, Inc.
Dominic J. Salemi, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
The above-identified application was filed on March 27,
1995, seeking registration on the Principal Register of the
mark “CENTRAL SALLY” as a service mark for “promoting dental
services and dental health,” in Class 42. Applicant claimed
first use and first use in interstate commerce since January
4, 1988, and stated that the mark is used “by printing it on
signs, brochures, booklets, letterhead, labels, bulk mail,
novelty items, and custom printed products[,] by
broadcasting on radio and television, and by other ways
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2
customary in the trade.” The application included as
specimens photocopies of the sheet shown below.
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3
The Examining Attorney found the specimens to be
unacceptable as evidence of service mark use of the term
sought to be registered “because they contain no reference
to a service.” The Examining Attorney cited Trademark Rule
2.58 and required specimens which showed the term sought to
be registered used to identify the services set forth in the
application. Additionally, amendment to the recitation of
services was required because the original recitation was
found to be indefinite.
Applicant responded by amending the recitation of
services to restate them as “promoting dental services and
dental health through informative promotions,” and offered
the following explanation of how the mark is used in
connection with applicant’s services: “The applicant
promotes its dental services and dental health through
informative promotional material that is oriented to
children. The promotions are signs, brochures, and
advertisements and include characters in stories and/or
cartoons that promote good dental practices.”
Submitted with this explanation were eighteen
declarations from applicant’s customers. In each, the
declarant avers that he or she is familiar with applicant’s
advertisements for its services of promoting dental health
and dental services, as well as a number of the marks
applicant seeks to register. Each declarant further asserts
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4
that he or she has come to associate the services provided
by applicant with the specified marks, including the mark
“CENTRAL SALLY.”
On April 25, 1996, the Examining Attorney made the
requirement for substitute specimens final with the second
Office Action. Applicant was again advised that the
specimens of record were “unacceptable as evidence of actual
service mark use because they contain no reference to a
service.” Trademark Rule 2.58 was again cited as the basis
for the requirement for substitute specimens. Again the
Examining Attorney required amendment to the recitation of
services because the existing one was found to be
indefinite. He suggested adoption of “promoting dental
services and dental health through personal visits by a
costumed character.”
On October 25, 1996, applicant submitted an amendment
to the recitation of services. The application was amended
to specify the services as “promoting dental health to
children through the use of cartoon characters displayed
upon promotional materials including balloons, pins,
erasers, puppets, pencils, stickers, magnets, certificates,
and club membership cards.” Also included were substitute
specimens, supported by a proper declaration as to use at
least as early as the filing date of the application. The
specimens are promotional items which applicant states are
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5
given to children as part of the service of promoting dental
health. One specimen is a membership card for the “Tooth
Tots Club,” and features a cartoon character shaped like a
tooth which bears the label “CENTRAL SALLY.” The card also
prominently features applicant’s name, “VALLEY DENTAL,” and
“Tooth Tots Club,” as well as the images of five tooth-
shaped cartoon characters, including the one labeled with
the name sought to be registered.
On October 25, 1996, the Examining Attorney again made
final the requirement for acceptable specimens and again
made final the requirement for a more definite recitation of
services. This Office Action apparently crossed in the mail
with applicant’s submissions of the same date. On December
11, 1996, the Examining Attorney issued yet another final
action, this time characterizing the action for the first
time as a “FINAL refusal made pursuant to Sections 1,(sic)
and 2 of the Trademark Act.”
Applicant timely filed a notice of appeal and an
appeal brief. Following the correction of an erroneous
holding of abandonment of the application, the Board
instituted the appeal, and then forwarded the application to
the Examining Attorney for his appeal brief, which was
submitted on January 20, 1998. No oral hearing was
requested.
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Based on careful consideration of the record in this
application, as well as the pertinent legal authorities, we
hold that the requirements for different specimens and an
amendment to the recitation of services are unnecessary.
This application is in condition for publication. The
specimens applicant has submitted are acceptable evidence of
applicant’s use of the term it seeks to register as a
service mark for the services set forth in the application,
as amended, and that amended recitation of services is not
unacceptably indefinite.
We note for the record that we are disregarding the
language in the Examining Attorney’s brief relating to the
previously unmentioned “refusal to register the character
name ‘CENTRAL SALLY’ under Sections 2, 3, and 45 of the
Trademark Act on the ground that the aforesaid character
name does not function as a trademark.” We are interpreting
his words concerning those sections and the language we
quoted from the third final action as simply another
perspective on the issue that was raised by the Examining
Attorney in every Office Action and his brief, and which was
argued by applicant in every response and in its appeal
brief, i.e., whether the specimens show the mark sought to
be registered being used to identify the services set forth
in the application, as amended.
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At the outset of our discussion of the merits of this
appeal, we should address the issue of the requirement for a
more definite recitation of applicant’s services. As
amended, the services are specified as “promoting dental
health to children through the use of cartoon characters
displayed upon promotional materials including balloons,
pins, erasers, puppets, pencils, stickers, magnets,
certificates, and club membership identification cards.”
We fail to see anything indefinite about this wording. The
service, i.e., the activity performed for the benefit of
others, is plainly stated as promoting dental health.
Applicant goes on to state that this service is rendered to
children, although that aspect of the service is not as
significant as the promotional activity itself. “Promoting
dental health to children,” or even just “promoting dental
health,” is a definite statement specifically identifying
the service applicant renders. It is unnecessary to specify
the means by which this is accomplished.
In any event, we can see no legal, logical, or
evidentiary basis for the Examining Attorney’s repeated
suggestion that applicant promotes dental health “through
personal visits by a costumed character.” It eludes us why
promotion through a costumed character would be acceptable,
but promotion through the use of cartoon characters
apparently would not be.
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In summary, the existing recitation of services is
specific and definite enough. We note for the record that
if applicant were only promoting its own services under the
mark, registration as a service mark for these promotional
services would not be proper because it is not a service to
promote one’s own services. This is apparently not the
case, however. Applicant promotes dental health to children
in general, rather than its own services in particular. In
any event, the Examining Attorney has never refused
registration on the basis that what applicant does under the
mark is not a service because applicant is only promoting
its own services.
As indicated above, we find that the specimens do show
that applicant uses “CENTRAL SALLY” as a service mark for
applicant’s services of promoting dental health to children.
The Examining Attorney argues that the specimens of record
are unacceptable because they do not specifically mention
the promotion of dental health. The mere fact that the
specimens of record do not specifically state that applicant
offers “SAMMY CENTRAL brand services of promoting dental
health to children,” however, does not disqualify the
specimens.
Section 1 of the Lanham Act provides for the
registration of marks used in commerce to identify services,
and paragraph (A)(1)(C) of that section requires that
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specimens or facsimiles of a mark as used must be submitted
along with the application, drawing and fee. The Court of
Customs and Patent Appeals, in In re Universal Oil Products
Company, 476 F.2d 653, 177 USPQ 456 (CCPA 1973), discussed
the requirement of Section 45 of the Act that in order for a
mark to be registered as a service mark, it must be used in
the sale or advertising of services. In his opinion in that
case, Judge Rich, citing Ex Parte Phillips Petroleum Co.,
100 USPQ 25 (Comm. 1953), noted that the specimens in an
application must show a “direct association” between the
offer of services and the mark sought to be registered.
An example of how this standard can be met is provided
in the more recent case of In re Advertising & Marketing
Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir.
1987). There, the Court took into account the specimens of
record, as well as affidavits from purchasers of applicant’s
services stating that they considered the mark sought to be
registered to identify the services specified in the
application. The Court concluded that the specimens
submitted with the application showed the mark used to
identify the services named in the application.
The situation in the case now before us is clearly
analogous to that one. Here, the specimens show the mark
sought to be registered used in materials which applicant
provides to children as part of the service of promoting
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dental health to them. The cartoon character labeled
“CENTRAL SALLY” appears in ways obviously intended to create
in a child’s mind a friendly and inviting image for having
dental health maintained through the use of dental
professionals like applicant. Applicant has explained that
these materials are distributed to children in connection
with the service of promoting dental health. Moreover, in
addition to being performed for children at applicant’s
dental clinics, these services are provided without charge
at educational and other institutions. Applicant has shown
that the materials are used as part of its program to
promote dental health to children. The direct association
in the mind of a child receiving this informational material
between “CENTRAL SALLY” and the advantages of good dental
health is plainly established.
Further, just as in the Marketing Development Inc.
case, supra, not only are we presented with these
unambiguous examples of the use of the mark in the ways such
a mark would be used in connection with the specified
services, we also have statements from a number of the
purchasers of the services that they have come to associate
the services of applicant with the mark. While this would
not be persuasive evidence without specimens which show the
mark used in connection with the specified service, this
evidence confirms what the specimens establish, that
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applicant uses the mark in ways that create a direct
association in the minds of purchasers between the mark and
the services.
In summary, the recitation of services in this
application, as amended, is sufficiently definite, and the
specimens of record show the mark sought to be registered
used in connection with the rendering of the specified
services.
Accordingly, the requirements for additional specimens
and amendment to the recitation of services are reversed,
and the application will proceed to publication.
R. F. Cissel
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board