IN RE KETTENBACH GMBH CO. KG, 79060115 (TTAB 4-15-2011)
Serial No. 79060115United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: April 15, 2011Page 1
Scott W. Kelley of Kelly Lowry Kelley, LLP for Kettenbach GmbH Co. KG
Kimberly Boulware Perry, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney).
Before Quinn, Kuhlke and Bergsman, Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register of the standard character mark IDENTIUM based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. 1141(f), for goods and services ultimately identified as:
Chemical goods for the purposes of dentistry and dental technique, in particular tooth filling materials, impression materials and plating masses, dental materials, namely, materials for dental fillings and for sealing purposes, andPage 2
materials for making dental impressions, dental adhesives, dental porcelain; disinfectants for hygiene purposes, namely, disinfectants for the skin; medicated compresses; tampons for medical purposes as absorbing material; amalgams of gold for dental purposes; dental cement; bonding agent for tooth prostheses; porcelain for tooth prostheses; tooth lacquers in the nature of conductive lacquers, in International Class 5;
Dental and dental technique instruments and devices, namely, picks, burrs, mirrors, and surgical pliers, in particular crown ring pliers and dental band moulding pliers, dental contour pliers and moulding spoons; artificial teeth, tooth implants and tooth prostheses; electrotechnical divides for dental purposes, namely, dental drills, artificial jaws; tooth pins; instruments and devices for tooth regulations, namely, clasps, clamps, lingual bars, cast clasps and roach clasps; dental crowns and dental bridges of full ceramics and metal-ceramics, in International Class 10;
Custom fabrication of teeth in the nature of dental prosthetics; services of a dental laboratory, namely, custom fabrication of mouth guards, namely, modelling and producing of mouth guards; services in connection with dental orthopedics, surgical orthodontics, corrective orthodontics and preventive orthodontics, namely, custom fabrication of tooth regulating divides; custom fabrication of dental veneers and dental inlays, custom fabrication of tooth implants and artificial tooth roots, in International Class 40; and
Services of a dental laboratory; services of a dental laboratory in connection with sliding and telescoping works for manufacturing prostheses and telescopic crowns and conical crowns and double crowns, maxillary prostheses and mandibular prostheses; services in connection with dental prosthetics, namely, fitting of dental prosthetics; carrying out of casting modelling work for manufacturing tooth prostheses of any type, in International Class 44.Page 3
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used with its identified goods and services, so resembles the registered mark
for “cover screws for dental purposes; implants of artificial materials for dental and orthopaedic purposes; pins for dental purposes; screws for dental purposes; wires for dental purposes; bone clamps; artificial bones; bone screws; implant abutments; synthetic bone graft materials; stents”[fn1] as to be likely to cause confusion, mistake or deception.
The appeal is fully briefed. We affirm the refusal to register.
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 thePage 4
marks and the similarities between the subject goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
With regard to the marks, IDENTIUM and DENTIUM (and design), we find them to be highly similar in sound, appearance, connotation and overall commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. First, in view of applicant’s typed form, we must consider all presentations, including the registrant’s stylization. Squirtco v. Tomy Corp.,697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir 1983); In re RSI Systems, LLC 88 USPQ2d 1445 (TTAB 2008). Thus, the only design aspect of registrant’s mark that is different, is the framing line along the side and top, which is too insignificant to distinguish the marks. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). However, we do not find, as the examining attorney argues, that the design element resembles an “I” and, as such, contributes to similarity of the marks.Page 5
Applicant argues that the addition of the “I” to its mark is sufficient to distinguish the marks. Specifically, applicant argues:
The word “dentium” is descriptive in the field of dentistry. The word “dentium” is derived from the root word “dentin” and has an immediately recognizable meaning, a meaning completely absent in the spelling of Applicant’s IDENTIUM. For example, “dentium” is used in dentistry to denote a type of dentistry degree, e.g. Baccalaureus Chirurgiae Dentium, Magister Scientiae Dentium or Magister Chirurgiae Dentium, as shown in the excerpt from the University of the Western Cape Handbook. In this context, the difference in the beginning of the word IDENTIUM is extremely important because consumers will immediately associate DENTIUM with its commonly known meaning and use in the field of dentistry. Consumers otherwise have no reason to split Applicant’s mark into individual components, for example identifying the context of “dentium” apart from the beginning letter “I”. When properly considering the mark in its entirety, IDENTIUM fails to convey any such meaning or reference to dentistry degrees or other dental terms. . . .
Based upon the addition of the letter “I”, which changes the root of the word, the applied-for IDENTIUM mark provides a significantly different commercial impression from the cited DENTIUM and Design mark.
That the root word “denti-” serves as the basis for a vast number of marks providing dental-related goods/services, clearly indicates that such a mark is not so inherently strong that it would be considered confusingly similar to another mark based upon the distinct root word “identi-.” Although such root words contain a similar letter string, such root words also begin with a different initial letter that serves to create a different appearance, sound, connotation and commercial impression.Page 6
Br. p. 9-10.
As noted by the examining attorney, applicant’s mark IDENTIUM incorporates the entirety of the literal portion of registrant’s mark DENTIUM. Taken in the context of the dental goods and services, we are not persuaded by applicant’s argument that the connotation of its mark relates more to the word “identify.” In the context of the goods and services, the meaning of “dental” associated with the root “DENTI” will stand out in applicant’s mark. Thus, we find that, despite the addition of the “I” to the beginning of applicant’s mark, the connotation and commercial impressions of applicant’s and registrant’s marks are the same. In view of the above, we find the marks, in their entireties to be very similar. Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Regarding applicant’s assertion that registrant’s mark is descriptive or diluted, the registration resides on the Principal Register without any disclaimer or showing of acquired distinctiveness. To argue that it is descriptive is an impermissible collateral attack.[fn2] Further, there isPage 7
no evidence to support applicant’s assertion that it is diluted. However, to the extent the mark DENTIUM can be considered suggestive of the goods based on the root “Denti,” as has often been stated even weak marks are afforded protection, in particular, where the marks are very similar and the goods and services closely related. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). See also In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) (even marks on the Supplemental Register are afforded protection).
The cases relied upon by applicant for the proposition that similarity is not found where marks that convey significantly different commercial impressions or the common element is merely descriptive, are quite different on their facts, primarily because each of the marks included more than just one letter to distinguish them from each other. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ not confusingly similar to THE RITZ KIDS); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) (BASS PRO SHOPS SPORTMAN’S WAREHOUSE (SPORTSMAN’S WAREHOUSE disclaimed) not confusingly similar to SPORTSMAN’S WAREHOUSE and design (SPORTSMAN’S WAREHOUSE disclaimed).Page 8
With regard to the relatedness of the goods and services, applicant’s “tooth implants” and “tooth pins” are identical to or encompassed by registrant’s “implants of artificial materials for dental or orthopaedic purposes” and “pins for dental purposes.” As to the remaining goods and services, the examining attorney submitted several third-party registrations that include, under the same mark, applicant’s goods and registrant’s goods. See In re Albert Trostel Sons Co., 29 USPQ2d 1783 (TTAB 1993). In addition, the examining attorney submitted excerpts from several websites wherein applicant’s services “are offered in connection with or alongside various dental goods.”
We find her submissions to be persuasive evidence that applicant’s and registrant’s goods and services are closely related. Moreover, applicant did not dispute the relatedness of the goods and services.
Further, inasmuch as there are no limitations as to channels of trade and the goods and services are identical or closely related, we must presume that the applicant’s and registrant’s channels of trade and classes of purchasers overlap. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,62 USPQ2d 0101 (Fed. Cir. 2002); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).Page 9
Applicant argues, without support, that the goods and services are targeted at consumers that are “sophisticated consumers that will be careful in their purchases.” Br. p. 11. Specifically, applicant asserts that the consumers are dental professionals and others providing similar services. In particular “many of the goods/services are personal and/or tailor made to a particular patient based upon measurements, impressions and/or molds of the patient’s mouth. . . . Given the expense typically associated with such goods/services, a dental professional will not be reckless or impulsive in making such purchases.” Br. p. 11.
We agree that the relevant overlapping consumers would be knowledgeable and exercise a higher degree of care in their purchasing of the relevant goods and services. However, this is not a circumstance where this factor would outweigh the other relevant du Pont factors. See Electronic Design Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992).
In conclusion, we find on this record that because the marks are very similar, the goods and services are related and the trade channels and classes of purchasers overlap, confusion is likely between applicant’s mark IDENTIUM and the mark DENTIUM and design in the cited registration.Page 10
Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.