GoSMILE, Inc.

Trademark Trial and Appeal Board

Jan 20, 2006

No. 76518244 (T.T.A.B. Jan. 20, 2006)

Hearing: Mailed:
September 20, 2005 January 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GoSMILE, INC.
________

Serial No. 76518244
_______

H. Jay Spiegel of H. Jay Spiegel & Associates for GoSMILE,
INC.

Henry S. Zak, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney)
_______

Before Hairston, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On May 29, 2003, GoSMILE, INC. (applicant) filed an
intent-to-use application to register GOSMILE PM in
standard-character form on the Principal Register for goods
identified as “toothpaste marketed and sold in high end
retail department stores as well as in spas, salons,
resorts, doctors' offices, dentists' offices, and high end
hotels” in International Class 3. Applicant disclaimed
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76518244
2
“PM” in response to the examining attorney’s requirement to
do so.1
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
based on a likelihood of confusion with Reg. No. 2574192 on
the Principal Register for the mark P.M. in standard–
character form for goods identified as “toothpaste and
tooth gel” in International Class 3. The registration
claims both first use anywhere and first use in commerce in
September 1999. The registration issued on May 28, 2002,
and is currently active.
Applicant responded to the refusal; the examining
attorney made the refusal final; and applicant filed this
appeal. The Board held an oral hearing in the case at
applicant’s request on September 20, 2005. We affirm.
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office . . . as to be likely,
when used on or in connection with the goods of the
applicant, to cause confusion . . .” Id. To determine
whether there is a likelihood of confusion, we must

1 Applicant also claimed ownership of Reg. No. 2566285 for
GOSMILE for “tooth whitening system comprised of peroxide gels”
which was assigned to applicant in a document recorded at Reel
2892, Frame 0509.

Ser No. 76518244
3
consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicant
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The Goods and Channels of Trade
Applicant does not argue that its goods differ from
those of the registrant. Both the application and
registration include “toothpaste.” On that basis alone we
conclude that the goods are, at least in part, identical.
The registration also includes “tooth gel” which is not
only closely related but functionally identical to
applicant’s goods.
Applicant also acknowledges explicitly that the trade-
channels limitations set forth in its application fail to
distinguish applicant’s trade channels from those of the
registrant because the registration does not specify any
trade-channel limitations. Applicant states, “. . . as a
matter of law, the Board must assume that the goods in the
registration move in all channels of trade that would be
normal for such goods and that the goods would be purchased
by all potential purchasers for such goods. In re Elbaum,
Ser No. 76518244
4
211 USPQ 639, 640 (TTAB 1981).” See CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). The
unrestricted trade channels for the “toothpaste and tooth
gel” identified in the registration logically encompass the
more specific trade channels set forth in the application.
Therefore, we also conclude that the channels of trade for
the goods of applicant and registrant are identical, at
least in part.
In fact, applicant argues that the only du Pont factor
we must consider is the similarity of the marks stating,
“. . . in one respect Applicant and the Examining Attorney
are in agreement – DuPont factor no. 1 [similarity of the
marks] is dispositive of the issue of likelihood of
confusion.” However, before moving to the discussion of
the marks, we emphasize the importance of our conclusion
that the goods and channels of trade for applicant and
registrant are identical, as the examining attorney did.
The conclusion is critically important in its own right and
in our consideration of the marks. The Court of Appeals
for the Federal Circuit has observed that the degree of
similarity between the marks necessary to support the
conclusion of likely confusion declines when the goods are
identical. Century 21 Real Estate Corp. v. Century Life of
Ser No. 76518244
5
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
The Marks
To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Applicant summarizes its argument regarding the marks,
as follows:
(1) The dominant feature of Applicant’s mark is
GOSMILE;
(2) The feature in common between the two marks in
question has been disclaimed in the Appellant’s mark
as descriptive. “P.M.” is an extremely weak mark;
(3) The first portion of a composite mark is often
that which catches the consumer’s eye;
(4) While the Board considers the mark as a whole in
determining the issue of likelihood of confusion, the
Board is permitted to give greater weight to the
dominant portion of a mark in likelihood of confusion
analysis.

The essence of the examining attorney’s argument is,
as follows, “. . . the addition of the applicant’s house
mark to two otherwise identical marks will not obviate
likelihood of confusion under the provisions of Section
2(d) of the Trademark Act. Furthermore, the addition of
GOSMILE does not substantially alter the meaning or
Ser No. 76518244
6
commercial impression of the letters PM shared in each
mark.”
We begin by discussing the “meaning or commercial
impression of the letters PM.” As indicated above, the
examining attorney required applicant to disclaim “PM” and
applicant complied. In its brief applicant quotes from the
examining attorney’s explanation of the requirement to
disclaim “PM“: “The wording is merely descriptive because
it identifies the period of use of the toothpaste – in the
evening and afternoon hours or in the PM.” Applicant then
concludes, “Thus, the descriptive subject matter ‘PM’ has
been disclaimed by the Appellant.” Later in the brief
applicant states further, “There is no finding in this
appeal that Church & Dwight’s [registrant] mark P.M. has
acquired secondary meaning. . . . there is no evidence that
the mark has been used substantially exclusively and
continuously in commerce, for at least five years, as
required by the Lanham Act for a showing of acquired
distinctiveness.”
These arguments serve as the foundation for
applicant’s core argument that the cited mark, “P.M.,” is
weak. However, applicant has neither offered evidence
indicating that PM is merely descriptive for toothpaste or
tooth gel, nor has applicant offered any explanation of its
Ser No. 76518244
7
own as to why PM would be perceived as merely descriptive
of these goods. Instead applicant relies on the
explanation in the office action. While the examining
attorney offered an explanation for the disclaimer
requirement, he did not offer any evidence to support the
requirement. Accordingly, there is no evidence of record
indicating that PM is merely descriptive of toothpaste or
tooth gel. In the absence of such evidence there is no
basis to conclude that the examining attorney’s
“explanation” accurately reflects the consumer perception
of PM in connection with toothpaste or tooth gel.
Furthermore, contrary to applicant’s argument, the
mere fact that the examining attorney required a disclaimer
and applicant provided one by no means establishes that PM
is merely descriptive for toothpaste and tooth gel. As the
Court of Appeals for the Federal Circuit cautioned,
The technicality of a disclaimer in National’s
application has no legal effect on the issue of
likelihood of confusion. The public is unaware of
what words have been disclaimed during the prosecution
of the trademark application at the PTO. It appears
that National voluntarily disclaimed these words, as a
tactical strategy, believing it would assist in
avoiding a holding of likelihood of confusion with the
cited mark. However, such action cannot affect the
scope of protection to which another’s mark is
entitled.

In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). This caution is particularly compelling
Ser No. 76518244
8
in a case such as this where there is no evidence that the
disclaimed term is merely descriptive of the goods in
question. Id. at 752. Cf. In re Dixie Restaurants, Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
More importantly, the cited registration for the mark
P.M. by itself in standard-character form is on the
Principal Register. As such the registered mark, P.M.,
must be accorded all of the presumptions under Trademark
Act Section 7(b), 15 U.S.C. § 1057(b), including the
presumption of its validity and of the registrant’s
exclusive right to use the registered mark. Id.
Applicant’s arguments that the mark is merely descriptive
is an impermissible collateral attack on the validity of
the cited registration. In re Dixie Restaurants, Inc., 41
USPQ2d at 1534. Likewise, applicant’s argument that the
registrant should be required to show acquired
distinctiveness is misplaced. That suggestion too implies
that the cited registration is not valid. Therefore, we
reject applicant's argument that “P.M.” is merely
descriptive, and therefore, weak.
Applicant also attempted to establish that “P.M.” is
weak through the use of Patent and Trademark Office (“PTO”)
records. With its appeal brief applicant for the first
time provided a list of PTO applications and registrations
Ser No. 76518244
9
for marks which included “PM” with “PM” disclaimed. The
examining attorney objected to this evidence in his brief
and otherwise did not treat it as being of record. In
response to the objection, applicant provided certified
copies of certain of these records. We reject this
evidence as untimely and have not considered it.2 Trademark
Rule 2.142(d) requires that evidence be submitted before
appeal. See also In re Psygnosis Ltd., 51 USPQ2d 1594,
1596 (TTAB 1999). Applicant could have submitted the
evidence in its response to the initial refusal or with a
request for reconsideration after the final refusal but
failed to do so.3 Again, we conclude on this record that
the mark in the cited registration is neither merely
descriptive, nor highly suggestive, nor otherwise weak, but
distinctive as applied to toothpaste and tooth gel.

2 Applicant’s submission of new evidence with its brief was both
late and not in proper form. The subsequent submission of
certified copies of PTO records addresses the form issue but does
not and cannot cure the lateness issue.

3 Even though we reject the evidence as untimely we also note
that, even if we had considered it, we would reach the same
conclusions here. Many of the records relate to pending
applications and would not be considered in any event. Glamorene
Prods. Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n. 5
(TTAB 1979). Furthermore, none of the registrations submitted
cover toothpaste or tooth gel, and consequently, would have
little probative value on the strength or weakness of PM as
applied to these goods.

Ser No. 76518244
10
Next we must consider whether the addition of GOSMILE
is sufficient to distinguish applicant’s mark from the
registered mark. First, we note the examining attorney’s
characterization of GOSMILE as a house mark or trade name.
Applicant has, in effect, acknowledged the accuracy of this
characterization. Applicant is identified as GoSMILE, Inc.
in this application, and applicant refers to “GOSMILE” as a
“version of its house mark” in its brief. There is no
actual evidence of record to show use of GOSMILE as a house
mark or trade name. Whether or not GOSMILE is a house mark
or trade name begs the question. The fundamental inquiry
is whether the full mark GOSMILE PM would be perceived as
identifying a different source than P.M. when used on the
same goods, or whether it is likely to cause confusion with
the registered P.M. mark.
GOSMILE and PM are not combined in a manner which in
any way alters the impression of PM alone. Stated
otherwise, in the case of applicant’s mark the whole is no
more than the sum of its parts. Consequently, the
commercial impression applicant’s mark projects is that of
a combination of two elements which are distinct and each
of which is distinctive. Therefore, we agree with the
examining attorney that applicant’s mark, consisting of
GOSMILE combined with the cited registered mark in its
Ser No. 76518244
11
entirety, is likely to cause confusion.4 Saks & Co. v. TFM
Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB 1987); In re
Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985); Key
West Fragrance & Cosmetic Factory, Inc. v. The Mennen Co.,
216 USPQ 168, 170 (TTAB 1982); In re Cosvetic Laboratories,
Inc., 202 USPQ 842, 845 (TTAB 1979). In fact, whether or
not GOSMILE is characterized as a house mark, the
combination of GOSMILE with PM here, as is often true with
combinations of house marks with other marks, may aggravate
rather than diminish the likelihood of confusion. See,
e.g., In re Christian Dior, S.A., 225 USPQ at 534.
Contrary to applicant’s argument, consumers are just as
likely and perhaps even more likely to view GOSMILE PM as
identifying another product from the owner of the P.M. mark
as they are to view it as a new product from the owner of
the GOSMILE mark.
Furthermore, the impact of applicant’s GOSMILE mark
combined with the registered mark on the commercial
impression is such that the placement of GOSMILE first in
applicant’s mark in no way diminishes the likelihood of

4 We recognize that the registered mark is P.M. and that
applicant’s mark is PM, without periods. For purposes of
evaluating likelihood of confusion, this is an inconsequential
difference because consumers typically retain a general rather
than a specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

Ser No. 76518244
12
confusion. Cf. Presto Prods. Inc. v. Nice-Pak Prods. Inc.,
9 USPQ2d 1895 (TTAB 1988).
There are, of course, differences between the marks in
appearance and sound. However, the similarities in
appearance, sound, connotation, and particularly the
similarity in commercial impression, resulting from the
addition of GOSMILE to the registered P.M. mark override
those differences.5 Saks & Co. v. TFM Indus. Inc., 5 USPQ2d
at 1764. Whether PM is the dominant element in applicant’s
mark is not the ultimate question. The ultimate question
is whether the combination of GOSMILE with PM alters the
registered mark in a way which will avoid confusion. We
conclude that it will not. Therefore, we conclude further
that the marks, when viewed in their entireties, are
similar.
Lastly, applicant has gone to great lengths to discuss
and distinguish cases cited by the examining attorney.
Suffice it to say that we have considered this discussion
carefully and found it unpersuasive. In the end we must
decide each likelihood-of-confusion case on its unique

5 In determining whether marks create similar or distinct
commercial impressions, any doubt must be resolved in favor of
registrant. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983).

Ser No. 76518244
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facts. See In re Cosvetic Laboratories, Inc., 202 USPQ at
843-44 and cases cited therein.
Conclusion
After considering all of applicant’s arguments and
evidence bearing on the du Pont factors, we conclude, on
this record, that there is a likelihood of confusion
between applicant’s mark and the cited registered mark. We
conclude so principally: (1) because the goods and
channels of trade for the goods of applicant and registrant
are, at least in part, identical, and (2) because the cited
mark consists of the distinctive letters P.M. alone and
applicant’s mark consists of GOSMILE PM, a combination
which fails to distinguish applicant’s mark from the cited
P.M. mark. Finally, to the extent that any of applicant’s
arguments raise any doubt regarding likelihood of confusion
we note that any doubt on this issue must be resolved in
favor of the prior registrant. In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.