Valley Dental, Inc.

Trademark Trial and Appeal Board

Feb 2, 1998

No. 74651834 (T.T.A.B. Feb. 2, 1998)

Paper No. 12
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 2, 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. 74/651,834
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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, Seeherman and Hanak, 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 “BERTHA BICUSPID” as a service mark for “promoting
dental services and dental health,” in Class 42. Applicant
claimed first use and 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
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other ways customary in the trade.” The application
included as specimens photocopies of the page shown below.
Ser No. 74/651,834
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The Examining Attorney found the specimens to be
unacceptable as evidence of service mark use of the term
sought to be registered because it contains “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, the original recitation of
services was found to be indefinite, so amendment to the
recitation was required.
Applicant responded by amending the application to
restate the services as “promoting dental services and
dental health through informative promotions.” Applicant
offered the following explanation of how the mark is used in
connection with its 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 thirty
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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that he or she has come to associate the services provided
by applicant with the specified marks, including the mark
“BERTHA BICUSPID.”
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 December 20, 1996, applicant appealed. Submitted
with the notice of appeal was an amendment to the recitation
of services. The application was amended to specify the
services as “promoting dental services and 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.”
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 copies of
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promotional items which applicant states are given to
children in schools and in other places 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
“BERTHA BICUSPID.” The card also prominently features
applicant’s name, “VALLEY DENTAL.” Another specimen is a
balloon on which are printed the words “VALLEY DENTAL” and
“Tooth Tots Club,” as well as the images of five tooth-
shaped cartoon characters, including the one labeled with
the mark sought to be registered. Still another of the
additional specimens submitted with the notice of appeal
bears similar images and wording, and includes the slogan
“We’ll Keep Your Family Smiling,” along with a toll free
telephone number. At the bottom of this promotional item
the name “VALLEY DENTAL” is shown below “FRESNO,” “CLOVIS”
and “STOCKTON,” which are locations of applicant’s dental
offices.
Responsive to applicant’s amendment to the recitation
of services and submission of the additional specimens, the
Examining Attorney stated that “[t]he FINAL refusal made
pursuant to Sections 1, and 2 of the Trademark Act is hereby
continued.” This statement was made notwithstanding the
fact that no such refusal had ever been made, much less made
final. The Examining Attorney went on to require again new
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specimens because the specimens of record “contain no
reference to a service,” and again required amendment to the
recitation of services, holding the amended version to be
indefinite.
Both applicant and the Examining Attorney filed briefs,
but no oral hearing was requested.
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 we quoted above from the Examining Attorney’s last
Office Action, as well as the references in his brief to the
previously unmentioned “refusal made pursuant to Sections 1
and 2 of the Trademark Act.” We are interpreting his words
concerning those sections of the Act as simply another way
of characterizing the issue which 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
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appeal brief, i.e., whether the specimens show the mark
sought to be registered used as a service mark to identify
the services set forth in the application, as amended.
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 stated as “promoting dental
services and 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.”
We fail to see anything “indefinite” about this recitation.
In fact, the listing of the particular promotional materials
on which the mark is used may not have been necessary. The
service, the activity performed for the benefit of others,
is plainly stated as the promotion of dental services and
health. The means by which such promotion is done are not
as significant as the activity of promoting. In any event,
we can see no legal, logical, or evidentiary basis for the
Examining Attorney’s repeated suggestion of an amendment
stating that applicant promotes dental services and dental
health “through personal visits by a costumed character.”
It eludes us why promotion through visits by a costumed
character would be acceptable, but promotion through the use
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of cartoon characters in a variety of printed materials
given to children is not.
In summary, the existing recitation of services is
acceptable. 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 services 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 “BERTHA BICUSPID” as a service mark for
applicant’s service of promoting dental services and 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 services and
dental health. The mere fact that the specimens of record
do not specifically state that applicant offers “BERTHA
BICUSPID brand dental services and dental health promotional
services to children,” however, does not disqualify the
specimens.
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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
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 to be
registered as a service mark, a mark 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 (Com’r. Pats. 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 the
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.
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The situation in the case now before us is clearly
analogous to that one. Here, the specimens, especially the
substitute ones, show the mark sought to be registered used
in materials which applicant provides to children as part of
the service of promoting dental services and dental health.
The cartoon character plainly labeled “BERTHA BICUSPID”
appears in ways obviously intended to create in a child’s
mind a friendly and inviting image for having professional
dental care. The front side of the “Tooth Tots Club”
membership card shows the character smiling as she brushes
herself with a toothbrush. “VALLEY DENTAL” is printed at
the bottom. On the reverse side, children are encouraged to
show the card in order to receive free “Tooth Tots Fun Packs
& other club ‘Goodies’” when they come in for their
appointments. Applicant has explained that these materials
are distributed to children in connection with the services
of promoting dental health. Moreover, these services are
provided without charge to educational and other
institutions, and the services are also performed at
applicant’s dental clinics for children. Thus, applicant
has shown that the materials are used as part of its program
to promote dental health and dental services. The direct
association in the mind of a child receiving these
materials between “BERTHA BICUSPID” and the advantages of
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getting dental care (i.e., the promotion of dental services
and dental health) is plainly established by the record.
Further, just as in the Advertising & Marketing
Development Inc. case, supra, not only are we presented with
these unambiguous examples of the use of the mark in the
kinds of ways such a mark would be used in connection with
the specified service, 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 services,
this evidence confirms what the specimens establish, that
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.
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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
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges
Trademark Trial & Appeal Board