Periotech, LLC

Trademark Trial and Appeal BoardSep 2, 2021

88623714 (T.T.A.B. Sep. 2, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: September 2, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Periotech, LLC _____ Serial No. 88623714 _____ Sherry Flax of Saul Ewing Arnstein & Lehr LLP, for Periotech, LLC. Lance Cummins, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Cataldo, Shaw and Lebow, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Periotech, LLC (“Applicant”) seeks registration on the Principal Register of the mark ORALIGHT THERAPY (in standard characters) for goods identified as “Dental instruments for use in treating oral pain, periodontal ligament health, reduction of increased blood flow in the mouth, and teeth whitening; Medical devices for use in treating oral pain, periodontal ligament health, reduction of increased blood flow in Serial No. 88623714 - 2 - the mouth, and teeth whitening; Orthodontic machines and instruments ,” in International Class 10.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the identified goods. When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal resumed. Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Evidentiary matters The Examining Attorney objects to a third party registration attached to Applicant’s appeal brief on the ground that the evidence was not introduced prior to the appeal. The Examining Attorney’s objection to the registration is sustained. The record in an application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). An exhibit attached to a brief that was not made of record during examination is untimely, and generally will not be considered. Id. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Accordingly, we do not consider the new material attached for the first time with Applicant’s brief. 1 Application Serial No. 88623714 was filed on September 19, 2019 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. Serial No. 88623714 - 3 - II. Mere Descriptiveness – Applicable Law Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, . . . when used on or in connection with the goods of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely descriptive” within the meaning of Section 2(e)(1) “if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). A term “need not immediately convey an idea of each and every specific feature of the goods in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)). “Descriptiveness must be evaluated ‘in relation to the particular goods or services for which registration is sought, the context in which the mark is used, and the possible significance the term would have to the average consumer because of the manner of its use or intended use,’” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 82 USPQ2d at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys Water Sports, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). “In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them.” Id. Serial No. 88623714 - 4 - at 1515 (citing DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)). When two or more merely descriptive terms are combined, the determination of whether the combined mark is also merely descriptive turns on whether the combination of terms evokes a non-descriptive commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001). Moreover, the mere combination of descriptive words to form a telescoped mark does not automatically create a new non-descriptive word or phrase. See e.g., In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (finding FIRSTIER to be a telescoped word combining First and Tier, and therefore merely descriptive of applicant’s banking services); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (NANDRIVE is generic for electronic integrated circuits, including flash memory drives); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE merely descriptive of banking and trust services); In re BankAmerica Corp., 229 USPQ 852 (TTAB 1986) (PERSONALINE is merely descriptive of consumer loan services in which a personal line of credit is provided); Serial No. 88623714 - 5 - In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE merely descriptive of wire rope); and In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely descriptive of thinly sliced beef). III. Arguments and Evidence The Examining Attorney argues that in Applicant’s mark, “both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.”2 According to dictionary definitions introduced by the Examining Attorney, ORAL is defined as “relating to the mouth,”3 LIGHT is defined as “radiant energy” or “the radiance or illumination from a particular source,”4 and THERAPY is defined as “treatment intended to relieve or heal a disorder.”5 The Examining attorney also introduced internet evidence to support the finding that “oral light therapy, involves medical and dental treatments using devices that use light to treat various disorders[.]”6 The following online articles and web page excerpts are most relevant:7  University of Buffalo, No Painkillers, No Pain, featuring an article discussing the use of “oral light therapy” for treatment of oral pain. 2 Examining Attorney’s Br., 11 TTABVUE 6. 3 Lexico.com, December 23, 2019 Office Action, TSDR pp. 2-4. 4 Dictionary.com, January 14, 2021 Request for Reconsideration, TSDR pp. 2-4. 5 Lexico.com, December 23, 2019 Office Action, TSDR pp. 5-7. 6 Examining Attorney’s Br., 11 TTABVUE 6. 7 December 23, 2019 Office Action, TSDR pp. 8-12, 18-36; July 14, 2020 Final Office Action, TSDR pp. 5-24; February 3, 2021, Reconsideration Letter, TSDR pp. 2-22, 25-29. Serial No. 88623714 - 6 -  The DPL® Oral Care web page, offering an “oral care light therapy system” for “healthier gums, relief of oral pain, and fresher breath.”  Https://app.dimensions.ai, an online patent database identifying U.S. Patent No. US-9730780-B2, titled “Intra-Oral Light-Therapy Apparatuses and Methods For Their Use,” claiming an apparatus and method of use for, in part, “maintaining or improving oral tissue health.”  MIT Enterprise Forum Greece, featuring an article discussing a Boston- based company’s “intra-oral light therapy device.”  WebMD.com, featuring an article discussing uses of “red light therapy” for treatment of dental pain.  Healio.com, featuring an article titled Light therapy could prevent cancer treatment-related oral mucositis, discussing the benefits of “light therapy” for oral mucositis (inflammation of the mouth).  Michael R. Hamblin, Photobiomodulation or low-level laser therapy, Dec. 1, 2017, an article discussing various studies relating to medical and dental use of “low-level light therapy,” also known as photobiomodulation therapy.  Elizabeth Gudrais, Harvard Magazine, Light Blitzes Plaque, January- February 2006, an article discussing the use of a blue light dental device for “light therapy” to reduce oral inflammation.  Oralhealthgroup.com, featuring an article by Gerry Ross and Alana Ross titled Low Level Laser Therapy: An Untapped Resource in the Dental Industry, Dec. 1, 2009, discussing oral “light therapy” used in the medical Serial No. 88623714 - 7 - and dental industries for—among other uses—treatment of oral pain and inflammation, and orthodontics.  PhotonicTherapyInstitute.com, featuring (1) an article titled Light Therapy Overview discussing the benefits of “low level light therapy” and (2) offering a “Blue Dental Light Kit” claiming to assist with “oral health issues.”  BioSpace.com featuring an article titled Life Sciences Startup PhotOral Licenses Patented Oral Blue-Light Technology From Forsyth Institute, Dec. 16, 2011. The article discusses the development of “blue light therapy products” for the “oral care market” using patented “oral light technology.”  LexisNexis, featuring an article titled Milestone Scientific Inc. Announces Exclusive Licensing Agreement for Consumer Tooth Whitening System, Oct. 25, 2004, discussing an “intra-oral light” for tooth whitening.  OrthodonticPracticeUS.com, featuring an article titled Accelerated orthodontics using photobiomodulation, discussing use of “light therapy” for orthodontic use.  Hatcher & Frey Orthodontics, discussing their “Ember Light Therapy Device,” used for orthodontic treatment. For its part, Applicant introduced a dictionary definition showing alternative meanings of the term “light.”8 Applicant argues that: ORALIGHT is a unitary and distinctive term that is not otherwise in use in the dental or orthodontic fields. The term is subject to interpretation and, without more 8 January 14, 2021 request for reconsideration, TSDR pp. 2-4. Serial No. 88623714 - 8 - information, could be ascribed different meaning by the relevant consumers, who are dental and orthodontic professionals. The Examining Attorney makes the assumption that the term must be interpreted as “ORAL LIGHT,” but it could be interpreted as “ORA LIGHT,” with ORA referring to oracle, aura, aural, and so on. LIGHT could refer to lightweight, light in color, or lit.9 Applicant also introduced a printout from the USPTO’s Trademark Electronic Search System (TESS) identifying Reg. No. 4237835 for the mark OralEnlight for use on an intra-oral dental light system. Applicant argues that because the USPTO has registered OralEnlight the USPTO “does not consider the terms ORAL LIGHT and ORAL ENLIGHT to be merely descriptive.”10 IV. Analysis Applicant’s mark is ORALIGHT THERAPY for use in connection with dental instruments, medical devices, and orthodontic devices, all for treating the mouth and teeth. Applicant’s identification of goods is broadly-worded and therefore encompasses devices that use intra-oral light to provide therapy, as discussed in the articles above. Applicant does not argue otherwise. The Examining Attorney’s evidence establishes that the terms ORAL, LIGHT and THERAPY are each descriptive when used in connection with light-based therapeutic dental instruments and orthodontic devices. Applicant has telescoped the words “ORAL” and “LIGHT” to create the single word “ORALIGHT” and added the word 9 Applicant Br., p. 2, 9 TTABVUE 3. 10 Id. at 4, 9 TTABVUE 5. Serial No. 88623714 - 9 - “THERAPY.” We agree with the Examining Attorney’s contention that consumers will perceive the term ORALIGHT as simply the telescoped combination of the words “ORAL” and “LIGHT.” Upon encountering the mark in connection with Applicant’s light-based therapeutic dental instruments and orthodontic devices, there is no doubt that consumers will immediately understand ORALIGHT as comprising the two words. We further point out that when spoken, there is little or no aural distinction between ORALIGHT and ORAL LIGHT. Taken as a whole, ORALIGHT THERAPY immediately and directly conveys information about Applicant’s goods. That is, the goods use light to treat disorders relating to the mouth. Each component retains its merely descriptive significance in relation to the goods and the mark as a whole is merely descriptive. Oppedahl & Larson, 71 USPQ2d at 1372. The web site excerpts showing various permutations of the relevant terms, e.g., “oral light therapy,” “oral care light therapy system,” “intra-oral light-therapy,” and simply “light therapy,” confirm the descriptiveness of the combined terms when used in connection with light-based therapeutic dental instruments and orthodontic devices. No degree of imagination, thought or perception is needed to understand that the goods will provide oral light therapy. Applicant’s unsupported argument that “[t]he term [ORALIGHT] is subject to interpretation and, without more information, could be ascribed different meaning by the relevant consumers, who are dental and orthodontic professionals,”11 is 11 Applicant’s Br., p. 2, 7 TTABVUE 3. Serial No. 88623714 - 10 - unavailing. Mere descriptiveness is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor, 200 USPQ at 218. Thus, it is not necessary that “more information” be provided to the prospective consumer in order to determine mere descriptiveness. Simply put, consumers who know what the goods are would understand that ORALIGHT THERAPY merely describes the light-based therapeutic devices. Further, Applicant’s “assertions are unsupported by sworn statements or other evidence, and ‘attorney argument is no substitute for evidence.’” In re OEP Enters., Inc., 2019 USPQ2d 309323, *14 (TTAB 2019) (quoting Cai v. Diamond Hong, Inc., 901 F.3d 1367 , 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (internal quotation omitted)). Applicant’s argument that its mark is entitled to registration because the USPTO has registered OralEnlight for similar goods is unpersuasive as well. We have no evidence regarding the use of the term “ENLIGHT” in connection with the identified goods. In the absence of any persuasive evidence regarding the equivalence of the words “LIGHT” and “ENLIGHT,” we fail to see how the registration of a different mark entitles Applicant to registration of its mark. In any event, each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Applicant also argues that [C]onsumers of Applicant’s goods are dental professionals who purchase Applicant’s costly medical devices in a Serial No. 88623714 - 11 - personal setting – a meeting arranged between the parties to discuss the goods. There is absolutely no possibility, much less likelihood, that these consumers will be confused or mistaken as to the source of the goods.12 This argument too is unavailing. The major reasons for not protecting merely descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. See In re Abcor, 200 USPQ at 217. Whether consumers would be confused as to the source of the goods is not the test for mere descriptiveness. Rather, the test is whether the mark conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. N.C. Lottery, 123 USPQ2d at 1709. For the foregoing reasons, we conclude that when used on or in connection with Applicant’s dental instruments, medical devices, and orthodontic machines and instruments, the proposed mark, ORALIGHT THERAPY, is merely descriptive of the goods. Decision: The refusal to register Applicant’s mark ORALIGHT THERAPY under Section 2(e)(1) of the Trademark Act is affirmed. 12 Id. at 3, 7 TTABVUE 4.