Vita Zahnfabrik H. Rauter GmbH & Co., KGv.Green Luxury Brands, Inc.

Trademark Trial and Appeal Board

Jun 19, 2015

No. 91203900 (T.T.A.B. Jun. 19, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: April 16, 2015 Mailed: June 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Vita Zahnfabrik H. Rauter GmbH & Co., KG

v.

Green Luxury Brands, Inc.
___

Opposition No. 91203900
to Application Serial No. 85089508
___

David A. Dillard of Christie, Parker & Hale, LLP for Vita Zahnfabrik H. Rauter
GmbH & Co., KG.

Barry G. Magidoff of Sutton Magidoff LLP for Green Luxury Brands, Inc.
______

Before Cataldo, Adlin and Goodman, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Green Luxury Brands, Inc. (“Applicant”) seeks registration of the mark
shown below

Opposition No. 91203900

2

for
Toothpaste; Mouthwash; Oral care products, namely,
teeth-whitening devices in the nature of strips
impregnated with whitening preparations; Tooth-
whitening preparations; Breath fresheners in liquid and
solid form in International Class 3;

Dental picks in International Class 10;

Toothbrushes; Dental floss in International Class 21; and

chewing gum in International Class 30.1

In its notice of opposition, Vita Zahnfabrik H. Rauter GmbH & Co., KG (“Opposer”)
alleges prior use and registration of VITA and a number of additional marks
containing VITA for “dental products and services in the dental industry,” and that
use of Applicant’s mark would be likely to cause confusion with Opposer’s marks. In
its answer, Applicant denies the salient allegations in the notice of opposition.
Applicant also asserts, as an affirmative defense, that to date it has only sold
certain goods identified in the application, and that if it “were to restrict the goods
in the application to these, it becomes very clear that they are sold in general retail
channels to a different set of customers, than the professionals to whom the goods of
Opposer are sold.” Answer ¶ 38.2

1 Application Serial No. 85089508, filed July 21, 2010 based on an intent to use the mark in
commerce under Section 1(b) of the Trademark Act. The application includes this
description of the mark: “The mark consists of the word ‘VITACARE’ inside a rectangular
border, with a background containing round shapes resembling fruit.”
2 Applicant also asserts a number of additional “affirmative defenses” which are in fact
merely amplifications of its denials.
Opposition No. 91203900

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The Record
The record consists of the pleadings, the file of the involved application, and
the following:
Opposer’s Notice of Reliance (“Opposer’s NOR,” TTABVue
Dkt. # 17) on its pleaded registrations.

Applicant’s Notice of Reliance (“Applicant’s NOR,”
TTABVue Dkt. # 18) on its involved application and
Opposer’s responses to some of Applicant’s written
discovery requests.

Applicant’s testimony deposition of Carl Ulrich
Saeuberlich, its President, and the exhibits thereto
(“Saeuberlich Tr.,” TTABVue Dkt. # 19).

Opposer’s testimony deposition of Paul Andrew Klein,
marketing director of Vident, which Opposer owns and
which serves as Opposer’s exclusive North American
distributor, and the exhibits thereto (“Klein Tr.,”
TTABVue Dkt. # 24).

Opposer’s testimony deposition of Fred Anthony Ketcho,
Vident’s chief executive officer, and the exhibits thereto
(“Ketcho Tr.,” TTABVue Dkt. # 24).3

Status of Claims and Defenses, and Related Briefing

Applicant’s pending motions to amend its identification of goods (filed May 8,
2014) and to strike Opposer’s Reply Brief on the case (filed June 2, 2014) raise
questions concerning the scope and status of the issues before us. Specifically,
Opposer argues in its Reply Brief that its marks are famous, and that it owns a
“family” of VITA marks. Applicant argues in its motion to strike that at least those

3 Both parties introduced their testimony depositions under notices of reliance, in
Opposer’s case the Supplemental Notice of Reliance filed March 25, 2014 (TTABVue Dkt. #
24).
Opposition No. 91203900

4

portions of the brief should be stricken because Opposer did not plead that its VITA
marks are famous or that they comprise a family.
Applicant’s motion to strike is denied with respect to Opposer’s argument
that its marks are famous, because Opposer need only plead likelihood of confusion,
not the individual factors, such as fame, used to assess the claim. See Rocket
Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071 (TTAB 2011).
Applicant’s motion is granted, however, with respect to Opposer’s unpleaded claim
that it owns a family of VITA marks. Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (“Petitioner’s
reference to a family of marks in its brief will not be considered because this claim
was neither pleaded nor tried by the parties.”). Opposer did not introduce evidence
intended or sufficient to prove ownership of a family of marks, and even if it did,
Applicant was not “fairly apprised” during trial of Opposer’s intent to rely on the
“family of marks” doctrine and it would therefore be unfair to find that the issue
was tried by implied consent. TBMP § 507.03(b) (2014).
Applicant did not file its motion to amend its identification of goods until after
the close of trial. The motion is therefore untimely, and will also be given no
consideration. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351,
1353-54 (TTAB 2007), abrogated on other grounds, Citigroup Inc. v. Capital City
Bank Group, Inc., 637 F.2d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Personnel Data
Sys., Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1864-65 (TTAB
1991).
Opposition No. 91203900

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Standing and Priority
Opposer’s pleaded registrations for VITA and other VITA-formative marks,
made of record through Opposer’s NOR, establish its standing. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). And
because Applicant has not counterclaimed for cancellation of any of the
registrations, priority is not at issue in this proceeding with respect to the goods and
services identified in Opposer’s pleaded registrations. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 222 F.3d at 943, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which the
parties introduced evidence, and treat the remaining factors as neutral.
Fame/Strength
Opposition No. 91203900

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When an opposer’s mark is famous, that fact “plays a ‘dominant role in the
process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide
latitude of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). It is settled that a strong mark
“casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
In the absence of direct evidence of fame, “fame of a mark may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose, 293 F.3d at 1367, 63 USPQ2d at
1305. Other relevant factors include “length of use of the mark, market share,
brand awareness, licensing activities, and variety of goods bearing the mark.”
Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1720 (Fed. Cir. 2012).
Here, while Opposer has designated most of its evidence of fame/strength as
“confidential,” and we therefore only discuss it generally, suffice it to say that
Opposer has been quite successful in selling products sold under its pleaded VITA
marks and has advertised them extensively. Furthermore, Opposer has been selling
dental products in the United States under VITA or VITA-formative marks for
almost 100 years. However, “[w]e have no context for opposer’s advertising and
sales figures,” or its other evidence of fame, “such as how the figures for the [VITA
Opposition No. 91203900

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products] compare with that for other brands of” dental products. Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012); see
also, Bose, 63 USPQ2d at 1309 (“some context in which to place raw statistics is
reasonable”). Moreover, to the extent that Opposer has offered additional evidence
of fame, besides its sales and advertising figures, it is underwhelming.
Accordingly, Opposer has not “clearly proven” that VITA is a “famous” mark.
However, Applicant has provided no evidence that Opposer’s VITA marks are
commercially or conceptually weak,4 and Opposer’s evidence is sufficient to
establish that VITA is a fairly strong mark which is entitled to a concomitantly
broad scope of protection. This factor weighs in favor of a finding of likelihood of
confusion, albeit only slightly.
The Marks
Opposer relies on 20 registrations of VITA-formative marks, including the
following:
Mark Reg. No. Issue Date Goods/Services
259601 Aug. 6, 1929 Artificial teeth
VITAFOL (typed) 728602 March 13, 1962 … metals for use in
dental surgery and
dentistry, varnishes
and lacquers for use
in dental surgery and
dentistry …
VITAPAN (typed) 873134 July 15, 1969 Artificial teeth,
dental-ceramical
substances

4 To the extent that consumers understand that VITA means “life,” there is no evidence
that the term is anything other than inherently distinctive for Opposer’s products and
services.
Opposition No. 91203900

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VITACHROM
(typed)
967659 Sept. 4, 1973 Tooth staining kits,
consisting essentially
of stains, brushes, and
diluting agents (or
any essential items);
and tooth stains sold
separately
VITABLOCS 1706468 Aug. 11, 1992 Teeth filling
substances, namely
ceramic teeth filling
substances, ceramic
plates for use in
dentistry and dental
surgery
VITA AKZENT
(typed)
2408322 Nov. 14, 2000 Dental colorants for
individually adjusting
the colors of dental
prostheses made of
dental ceramics
VITA SYSTEM 3D-
MASTER (typed)
2868572 Aug. 3, 2004 … color scales for
determining the colors
of dental restorative
materials and
artificial teeth to
match natural tooth
colors

2909972 Dec. 14, 2004 Dental spectral
analysis apparatus
and instruments for
measuring optical
properties of teeth
and other dental
objects and materials
VITA
BLEACHEDGUIDE
3D-MASTER
3789528 May 18, 2010 Color scales for
determining the colors
of teeth
VITA PM 4058723 Nov. 22, 2011 Dental restorative
materials, namely,
shaded porcelain
materials

Opposition No. 91203900

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In addition, and perhaps more importantly, Opposer has established prior
common law use of VITA alone. For example, the covers of its 2007, 2008, 2009,
2010, 2011 and 2011-2012 catalogs bear the VITA mark alone, the 2010, 2011 and
2011-2012 catalogs also include the phrase “Vident A VITA Company,” and all of
these catalogs contain listings for Opposer’s shade guides5 and other products sold
under Opposer’s VITA-formative marks. Klein Tr. 12-15 and Exs. 25-30. The 2010
and 2011 catalogs include the slogan VITA SHADE, VITA MADE. Id. Exs. 26, 27.
Opposer’s use of VITA alone is further illustrated in these promotional materials:

5 “A shade guide is a – it’s a device by which you can measure the shade of a natural tooth.
So if you were to lose a tooth, and you needed a replacement tooth, a crown, a filling, a
bridge, a denture, this shade guide would be used to select the appropriate shade to either
match the other natural teeth you still have or to – in the case of someone that needs full
dentures, to match their skin tone, facial shape, and so forth.” Klein Tr. 21-22.
Opposition No. 91203900

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Id. Exs. 30, 35, 37, 47.
The mark VITA, which Opposer uses for its shade guides and other products,
is similar to Applicant’s VITACARE & Design mark, in that both share and
Applicant’s mark begins with VITA. Consumers are likely to focus on the first part
of Applicant’s mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”); see also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word).
Opposition No. 91203900

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Furthermore, Applicant uses VITA with the word CARE, which is at best
suggestive of Applicant’s dental care products, and therefore of less significance in
our likelihood of confusion determination. See Saeuberlich Tr. 10, 18 (“care” in
VITACARE intended to convey “healthiness” of the products’ ingredients and
Applicant intends to expand use of mark “into other categories, including
potentially skin care or hair care”); Cunningham, 55 USPQ2d at 1846 (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark
may be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In
re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
In fact, where, as here, a party uses a previously-used mark in its entirety,
and merely adds to it additional wording, especially suggestive or descriptive
wording, confusing similarity is often found. See e.g. Coca-Cola Bottling Co. v. Jos.
E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL
and BENGAL LANCER & Design for related goods are confusingly similar);
International Paper Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA
1972) (DATA for “writing, typewriter and printing paper” confusingly similar to
DATA-SPEED for “paper sold in bulk rolls or bulk reams for conversion only into
business forms”); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB
PALMS MVP for casino services confusingly similar to MVP for casino services
offered to preferred customers identified by special identification cards); In re Rexel
Opposition No. 91203900

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Inc., 223 USPQ 830, 832 (TTAB 1984) (“we are firmly of the opinion that purchasers
who encounter applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s
‘GOLIATH’ large diameter woodcased pencils are likely to believe … that both
products emanate from or are in some way associated with the same source”);
Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155 (TTAB
1982) (EBONY for cosmetics confusingly similar to EBONY DRUM for hairdressing
and conditioner).
While Applicant’s mark includes a background design, it is the wording
VITACARE which is most responsible for the mark’s commercial impression. See In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if
one of the marks comprises both a word and a design, then the word is normally
accorded greater weight because it would be used by purchasers to request the
goods or services” and “because applicant’s mark shares with registrant’s mark that
element responsible for creating its overall commercial impression, the marks are
confusingly similar”); see also, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012).
Applicant’s argument that Opposer’s VITA-formative marks will be
pronounced differently than Applicant’s VITACARE mark is not well-taken. While
Applicant intends for the VITA element of its mark to convey that its products other
than toothbrushes contain “vitamins,” Saeuberlich Tr. 9, and Opposer concedes that
VITA is Latin for “life,” see Opposer’s Trial Brief at 11, there is no evidence that
consumers would be aware of these meanings, much less that they would pronounce
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the letter “i” in the identically-spelled term VITA differently in Opposer’s marks
than in Applicant’s mark. In any event, “there is no correct pronunciation of a
trademark, and consumers may pronounce a mark differently than intended by the
brand owner.” In re Viterra, 101 USPQ2d at 1912.
Similarly, we are not persuaded by Applicant’s argument that the marks
convey different meanings, because there is no evidence that consumers are aware
of the marks’ different possible meanings or intended meanings. In fact, in
Opposer’s promotional materials depicted above there is no mention of “life” or the
VITA marks’ intended meaning, just as there is no mention of “vitamins” in
connection with Applicant’s toothbrushes, and to the extent consumers are aware
that VITA in Applicant’s mark means “vitamins,” they may assume that VITA in
Opposer’s marks means the same thing.
In short, we find that when considered in their entireties, Opposer’s mark
VITA and Applicant’s mark VITACARE & Design are more similar than dissimilar.
Furthermore, notwithstanding that Opposer failed to plead or prove ownership of a
“family” of VITA marks, the fact remains that it uses not only VITA, but also a
variety of additional marks which begin with VITA, increasing the likelihood that
consumers will perceive Applicant’s VITACARE & Design mark as another
variation of VITA or Opposer’s other VITA marks, such as VITA AKZENT or VITA
SYSTEM 3D-MASTER. See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696,
1700 (TTAB 1987) (“The fact that Humana has itself used variations of its house
mark by adding matter to it, e.g. HUMANA CARE and HUMANA CARE PLUS,
Opposition No. 91203900

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increases the likelihood that HUMANOMICS would be perceived as another
variation. We do not consider the above to be a ‘family of marks’ result ….”); Varian
Associates, Inc. v. Leybold-Heraeus Gesellschaft mit Beschrankter Haftung, 219
USPQ 829, 833 (TTAB 1983).
Goods, Channels of Trade and Classes of Purchasers
Turning to the parties’ goods and channels of trade, it is settled that they
need not be identical or even competitive in order to support a finding of likelihood
of confusion. It is enough that the goods are related in some manner or that the
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used, to a mistaken belief that Applicant’s and Opposer’s goods originate
from or are in some way associated with the same source or that there is an
association between the sources of the goods. Hilson Research, Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201
USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would confuse
the goods, but rather whether there is a likelihood of confusion as to the source of
the goods. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). It is settled that we
must consider the goods as identified in Applicant’s involved application and the
goods identified in Opposer’s registrations, or for which it has established prior use.
Opposition No. 91203900

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See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Here, Applicant’s “tooth whitening preparations” and devices are clearly
related to Opposer’s “dental colorants” and “color scales for determining the colors”
of teeth, dental restorative materials and artificial teeth. Indeed, these products are
all focused on attaining desirable dental coloring. And the products could be used
together, and therefore be complementary and thus related, because a patient
seeking to whiten his or her teeth with Applicant’s tooth whitening preparations
could use Opposer’s color scales to monitor the progress of the process. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
1584, 1597-98 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679
(TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB
2009). And while Applicant argues that the differences between its “tooth-
whitening” products and Opposer’s color scales are sufficient to avoid confusion,
Opposer has introduced (confidential) evidence that it may expand its product line
“into bleaching products, including over-the-counter bleaching kits.” Opposer’s Trial
Brief at 12-13; Ketcho Tr. 13-19, 26-27. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (finding likelihood of
confusion between MONOPOLY for clothing and MONOPOLY for a real estate
Opposition No. 91203900

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board game, when evidence revealed “that requests have been received by [board
game owner] for licenses to utilize its mark MONOPOLY on T-shirts”).
While Applicant stresses, and we accept, that Opposer’s products are
intended for sophisticated dental professionals while Applicant’s are intended for
general consumers, that is not sufficient to prevent confusion in this case. In fact,
Applicant’s goods are not limited to any particular channel of trade or class of
consumer, and we must therefore presume that they could be offered not only to
general consumers, but also to dental professionals for use in their dental offices.
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (“An application with ‘no restriction on trade channels’
cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a
particular class of purchasers.’”); Citigroup Inc., 98 USPQ2d at 1261; In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).6 As a result, it is not only Applicant’s “teeth-whitening”
preparations and devices which we must presume could be used by or offered to
dentists in their offices, or the dentists’ patients or employees, but also Applicant’s
“toothpaste,” “mouthwash,” “dental picks” and/or “dental floss” which could be used
by or offered to dental professionals in an office setting.
In any event, the Frequently Asked Questions page of Applicant’s website
(“vitacareworld.com”) includes this question and answer:

6 Furthermore, the identifications of color scales and related products in several of
Opposer’s registrations also contain no limitations with respect to channels of trade or
classes of consumers.
Opposition No. 91203900

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6. Do you offer special pricing to dentists/dental
professionals?

If you (sic) interested in receiving special pricing as a
dentist or dental professionals please contact us at
info@vitacareworld.com (mailto:info@vitaworld.com).”

Saeuberlich Tr. 55-56 and Ex. 15. And Applicant concedes that it markets its
toothpaste, mouthwash and toothbrushes by touting their health and whitening, i.e.
dental, benefits. Id. 13 and Ex. 1 (“That goes from one being innovative as the first
vitamin infused oral system to explaining how that translates into relevance for the
consumer, which is the gum health benefits that derive from the vitamin infusion,
plus we use silica as a cleansing agent, allowing a whitening claim.”). And further
illustrating the actual or potential overlap in how the parties’ products are
marketed and used, Opposer introduced evidence that at times its customers,
sophisticated dental professionals, work with their patients who use Opposer’s color
scale products in their homes to monitor the coloring process and its progress, just
as Applicant’s products are used at home by general consumers.7 Klein Tr. 52-57
and Exs. 23, 24; see also, Ketcho Tr. 13-19.

7 Even if we were to grant Applicant’s motion to amend its identification of goods, we would
still find that the remaining goods in International Classes 3 and 21, as proposed to be
limited, are sufficiently related to Opposer’s goods for confusion to occur. In fact, while
Applicant’s amendment would have limited its breath fresheners to being “sold through
general consumer retail outlets to the general consumer,” that limitation would not apply to
the “toothpaste” and “mouthwash” in International Class 3, each of which are followed by a
semicolon and therefore not subject to the limitation. In re Midwest Gaming &
Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB 2013). Therefore, the toothpaste and
mouthwash could be used by or offered to dental professionals in dental offices. Moreover,
while Applicant’s “toothbrushes” in International Class 21 would be subject to the
limitation, we do not need evidence to recognize that toothbrushes are commonly used by at
least a large segment of the population, which includes dental professionals, many of whom
are familiar with Opposer’s VITA-formative marks used on dental products, and may by
education or background be more likely to use toothbrushes than ordinary consumers.
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The situation is different, however, with respect to Applicant’s “chewing
gum.” Unlike toothbrushes, dental picks and Applicant’s other products, “chewing
gum” is not a dental care product, and Opposer has introduced no evidence that
chewing gum originates from the same sources or is offered in the same channels of
trade as dental care products.
In short, the relatedness of the parties’ goods, their channels of trade and
classes of consumers weigh in favor of a finding of likelihood of confusion with
respect to Applicant’s goods in International Classes 3, 10 and 21, and against a
finding of likelihood of confusion with respect to Applicant’s goods in International
Class 30.
Sophistication of Purchasers
We accept Applicant’s argument that purchasers of Opposer’s goods are
sophisticated and will be careful in their purchasing decisions. However, purchasers
of Applicant’s ordinary and relatively inexpensive consumer goods in general
consumer retail outlets, including those dental professionals who may be
purchasing Applicant’s goods for their own home use, would not be expected to
exercise heightened care. In any event, even assuming that this factor weighs
against a finding of likelihood of confusion, it is outweighed by the similarities

These dental professionals could assume that Applicant’s toothbrushes sold in general
consumer retail outlets under Applicant’s VITACARE & Design mark originate from
Opposer, which will be familiar to at least some of those professional toothbrush users, who
may assume that Opposer expanded its offering of dental care products to “general
consumers.”

Opposition No. 91203900

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between the parties’ marks, the relatedness of their goods in International Classes
3, 10 and 21, and the potentially overlapping classes of consumers.
Conclusion
The parties’ marks are more similar than dissimilar, Applicant’s goods in
International Classes 3, 10 and 21 are related or potentially complementary to
Opposer’s goods, their channels of trade and classes of purchasers overlap in part
and Opposer’s marks are somewhat strong. These factors all outweigh the
sophistication of Opposer’s customers such that confusion is likely with respect
Applicant’s goods in International Classes 3, 10 and 21. However, because there is
no evidence that Applicant’s goods in International Class 30 are related to
Opposer’s goods, or that their channels of trade and classes of purchasers overlap,
these factors outweigh the similarity of the marks and the strength of Opposer’s
marks, and confusion is unlikely with respect to Applicant’s goods in International
Class 30.

Decision: The opposition is sustained and registration of Applicant’s mark is
refused with respect to Applicant’s goods in International Classes 3, 10 and 21
under Section 2(d) of the Trademark Act. The opposition is dismissed with respect
to Applicant’s goods in International Class 30.