Valley Dental, Inc.

Trademark Trial and Appeal Board

Feb 17, 1998

No. 74651845 (T.T.A.B. Feb. 17, 1998)

Paper No. 12
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 2/17/98
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. 74/651,845
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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 “TOOTH TOTS CLUB” 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.
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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 “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, that recitation of services was
found to be indefinite because the “method” by which
applicant promotes dental health and dental services was not
specified. Amendment to the recitation was required, and
the Examining Attorney suggested that applicant amend to
state that the promotion was rendered “through personal
visits by a costumed character.”
Applicant responded by amending the application to
restate the services as “promoting dental services and
dental health through informative promotions,” in Class 42.
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 twenty-three
declarations from applicant’s customers. In each, the
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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
that he or she has come to associate the services provided
by applicant with various specified marks, including the
mark “TOOTH TOTS CLUB.”
Following the reinstatement of the application after it
had been improperly held abandoned when applicant’s response
was not timely associated with the application file, 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, and again he suggested
adoption of the following wording: “promoting dental
services and dental health through personal visits by a
costumed character.”
On December 20, 1996, applicant appealed. Submitted
concurrently with the notice of appeal was an amendment to
the recitation of services. The application was amended to
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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. The first page is titled “the Adventures of Myrtle
Molar and the Tooth Tots!” It shows the same group of
tooth-shaped cartoon characters which are pictured on the
original specimens, along with a larger version of the one
labeled “MYRTLE MOLAR” depicted holding a membership card
for the ”Tooth Tots Club.” The next page informs the reader
that the Tooth Tots Club is “for kids age 2-12.” One
caption reads “Hey Kids! Join the Tooth Tots Club Today.
You’ll get FREE Gifts, FREE Games, and unlimited FUN!” The
third page of the brochure shows the group of tooth
characters as “The Tooth Tots,” and they are appealing to
readers to “Join me and my friends in the Tooth Tots Club”;
“Bring in this Coupon”; “Get Your Membership Card Today’;
“Get Your Free Fun Pack!” A coupon is provided which
entitles the bearer to a free exam and free club membership.
The final page appears to be the cover of the mailer for the
“Tooth Tots Club.” It features the words “Tooth Tots Club,”
as well as the images of the five tooth-shaped cartoon
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characters which are shown in the original specimens. Each
page of the promotional brochure prominently features
applicant’s name, “VALLEY DENTAL.”
The Board instituted the appeal, but suspended action
on it and remanded the application file to the Examining
Attorney for consideration of the amendment, the new
specimens, and the arguments which accompanied them.
The record does not reflect action by the Examining
Attorney on the remanded application, however. Applicant
filed its brief on February 18, 1997. The Examining
Attorney’s undated brief in response 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
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
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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 from the Examining Attorney’s brief to the
previously unmentioned “refusal made pursuant to Sections 2,
3 and 45 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
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 health
to children.” We fail to see anything “indefinite” about
this recitation. The service, the activity performed for
the benefit of others, is plainly stated as the promotion of
dental health. Applicant goes on to state that the service
is rendered to children, although that aspect of the service
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is not as significant as the promotional activity itself.
“Promoting dental health to children,” or even just
“promoting dental health,” is a definite statement
identifying the service applicant provides. 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 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 the way applicant does it, through the use of
cartoon characters in a variety of printed materials given
to children, would not be.
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
of “TOOTH TOTS CLUB” 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 children’s dental services
in particular. In any event, the Examining Attorney has
never refused registration on the basis that what applicant
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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 “TOOTH TOTS CLUB” as a service mark for
applicant’s service 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 to children. The mere fact
that the specimens of record do not specifically state that
applicant offers “TOOTH TOTS CLUB children’s dental health
promotional services,” 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
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
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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.
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 health. The cartoon
characters inviting children to join the “TOOTH TOTS CLUB,
the membership card bearing the mark, and the other
illustrations referring to the group of tooth-shaped cartoon
characters as the ”TOOTH TOTS CLUB” all show the term sought
to be registered 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
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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 bearing
the “TOOTH TOTS CLUB” mark are used as part of its program
to promote dental health. The direct association in the
mind of a child receiving these materials between “TOOTH
TOTS CLUB” and the advantages of having healthy teeth by
getting dental care 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.
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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