Valley Dental, Inc.

Trademark Trial and Appeal Board

Feb 6, 1998

No. 74651841 (T.T.A.B. Feb. 6, 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.
________
Serial No. 74/651,841
_______
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 “SAMMY CENTRAL” 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 other ways
Ser No. 74/651,841
2
customary in the trade.” The application included as
specimens photocopies of the sheet shown below.
Ser No. 74/651,841
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
Ser No. 74/651,841
4
that he or she has come to associate the services provided
by applicant with the specified marks, including the mark
“SAMMY CENTRAL.”
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 health to children.”
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 pages
from a promotional brochure which applicant states is given
to children as part of the service of promoting dental
health. One page shows a tooth-shaped cartoon character
labeled “MYRTLE MOLAR” holding a membership card for the
Ser No. 74/651,841
5
“Tooth Tots Club,” which is identified as being “for kids
age 2-12.” Other tooth characters are shown on the second
page of the brochure. Six are shown on the third page,
entreating the reader to join the club, get a free “fun
pack,” and a free examination. Each page of the promotional
brochure prominently features applicant’s name, “VALLEY
DENTAL.” The final page appears to be the cover of the
mailer for the “Tooth Tots Club.” It features the words
“VALLEY DENTAL” and “Tooth Tots Club,” as well as the images
of the five tooth-shaped cartoon characters which are shown
in the original specimens, including the one labeled with
the mark sought to be registered.
On February 13, 1997, the Board instituted the appeal,
and then suspended action on it and remanded the application
to the Examining Attorney for consideration of the amendment
and the substitute specimens.
The record does not reflect action on the remanded
application by the Examining Attorney, however. Applicant
filed its brief on February 18, 1997. The Examining
Attorney’s undated responsive brief was subsequently entered
into the record, and applicant filed a reply brief, but did
not request an oral hearing. Because the Examining
Attorney’s brief appears to take into account the amended
recitation of services and the additional specimens, we are
considering this appeal now as if the Examining Attorney had
Ser No. 74/651,841
6
timely responded to the Board’s remand order by
reconsidering the application and then maintaining the
requirements for new specimens and an amended recitation of
services.
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 ‘SAMMY CENTRAL’ 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 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
Ser No. 74/651,841
7
be registered used 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 specified as “promoting dental
health to children.” 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.
In summary, the existing recitation of services is
specific and definite enough. We note for the record that
Ser No. 74/651,841
8
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 “SAMMY CENTRAL” 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
specimens or facsimiles of a mark as used must be submitted
along with the application, drawing and fee. The Court of
Ser No. 74/651,841
9
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 (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 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
dental health to them. The cartoon character labeled “SAMMY
CENTRAL” appears in ways obviously intended to create in a
Ser No. 74/651,841
10
child’s mind a friendly and inviting image for having dental
health maintained through the use of dental professionals
like applicant. The “Tooth Tots Club” mailer shows the
“SAMMY CENTRAL” character smiling as he waves at the reader.
“VALLEY DENTAL” is printed on each page of the brochure, in
which children are encouraged to join the club in order to
receive “Free Gifts, Free Games, and unlimited FUN!”
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 “SAMMY
CENTRAL” 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 kinds of
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
Ser No. 74/651,841
11
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 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
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges
Trademark Trial & Appeal Board