Benedent Corporation

Trademark Trial and Appeal BoardAug 15, 2012

No. 85025721 (T.T.A.B. Aug. 15, 2012)

Mailed: August 15, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Benedent Corporation ________ Serial No. 85025721 _______ Kathleen A. Pasulka for Benedent Corporation. Anne Farrell, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Seeherman, Holtzman and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Benedent Corporation filed, on May 1, 2010, an intent-to- use based application to register the mark 3D-CLEAN (in standard characters) for goods ultimately identified as “electric toothbrushes” (in International Class 21).1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, 1 We note that at certain points in its brief, applicant incorrectly states that its mark contains a hyphen between the number 3 and the letter D, i.e. 3-D, when, in fact, the mark is 3D-CLEAN. THIS OPINION IS NOT A PRECEDENT OF THE TTAB 2 so resembles the previously registered mark 3D WHITE (in standard characters, WHITE disclaimed) for “manual toothbrushes” in International Class 21,2 as to be likely to cause confusion. When the refusal was made final, applicant concurrently filed a request for reconsideration, which the examining attorney denied, and an appeal of the final refusal. Both applicant and the examining attorney filed briefs. As discussed below, 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 Drilling 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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); and In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). We turn first to the relatedness of the goods, which, in this case, are toothbrushes. Although applicant’s toothbrushes 2 Registration No. 3829110, issued August 3, 2010. The registration also includes goods in Class 3, but the refusal to register is limited to the goods in Class 21. 3 are electric and registrant’s are manual, they are of the same nature and used for the same purposes. Further, the examining attorney submitted internet evidence of a third-party website touting that entity's electric and manual toothbrushes, showing that both types of toothbrushes are made by a single source and sold under the same trademark.3 The examining attorney also submitted several use-based, third-party registrations, which cover both types of goods.4 This evidence “serve[s] to suggest that such goods or services are of a type which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Applicant, in its brief, does not argue otherwise. Based on the record, we conclude that these goods are closely related, and by their very nature, are consumer items sold to the general public, such that the classes of consumers would be the same. These purchasers cannot be considered sophisticated, and manual toothbrushes, at least, are inexpensive, frequently replaced items that are not likely to be purchased with a great deal of care. Consequently, we resolve 3 http://www.oralb.com/products/electric-toothbrush/ and http://www.oralb.com/products/oral-b-manual-toothbrushes.aspx, attached to the April 11, 2011 final Office action. 4 For example, Registration Nos. 179323, 3297117, 4036716, 4046039 and 3277925, attached to the November 21, 2011 denial of applicant’s request for reconsideration. 4 the du Pont factors of the similarity of the goods, the channels of trade and the conditions of purchase against applicant. As noted above, applicant does not appear to disagree with these points; at least it has not argued them its brief. Rather, it has concentrated its comments on the first du Pont factor, the similarity of the marks. We therefore turn our attention to this factor, which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691-92 (Fed. Cir. 2005). The test, under this factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks, as they are used on the parties’ goods, so resemble one another as to be likely to cause confusion. Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1130 (TTAB 1995) (citing Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem. 972 F.2d 1353 (Fed. Cir. 1992)). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See In re Association of the United States Army, 85 USPQ2d 1264, 1269 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). 5 There are significant similarities between applicant’s mark 3D-CLEAN and the cited mark 3D WHITE: both marks begin with the same term, 3D, and both marks end with a five letter/one syllable term, CLEAN or WHITE, conveying similar, complementary meanings in regard to the goods. The similarities in the meanings and commercial impressions of the marks, in fact, far outweigh any differences due to their final elements, or the inclusion or omission of a hyphen.5 Because of the overall similarities of the marks, consumers are likely to view the two 3D-formative marks as variations of a single mark, with both marks indicating a single source for the goods. That is, consumers who are familiar with 3D WHITE for manual toothbrushes are likely to assume, upon seeing 3D-CLEAN for electric toothbrushes, that the same source adopted the different suffixes to differentiate its types of toothbrushes, rather than treat the marks as identifying separate sources for the toothbrushes. Neither applicant nor the examining attorney has discussed any other du Pont factors. To the extent that any are relevant, we treat them as being neutral. In summary, when we consider the marks in their entireties, we conclude that they are similar. See In re Chatam 5 The hyphen in applicant’s mark does not significantly alter the commercial impression of the marks. See, e.g., In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) and cases cited therein. See also In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006). 6 International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004). The goods are also closely related, and would be sold to the same classes of purchasers. Under these circumstances, we conclude that applicant’s use of its mark for its identified goods is likely to cause confusion with the cited registration. Decision: The refusal to register is affirmed.