American Dentalcraft

Trademark Trial and Appeal Board

Sep 15, 2020

88339623 (T.T.A.B. Sep. 15, 2020)

This Opinion Is Not a
Precedent of the TTAB

Mailed: September 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Dentalcraft
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Serial No. 88339623
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Mark C. Johnson of Johnson|Dalal
for American Dentalcraft.

Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Lynch, Coggins, and Johnson,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
American Dentalcraft (“Applicant”) seeks registration on the Principal Register of
the mark AMERICAN DENTALCRAFT in standard characters, with AMERICAN
disclaimed, for “Dental mouth guard impression kits comprising mouth impression
trays and putty; Mouth guard holders in the nature of cases specially adapted for
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dental mouth guards” in International Class 10.1 Applicant submitted the following
specimen of use with its application:

The Examining Attorney has refused registration of the proposed mark as
primarily geographically descriptive under Trademark Act Section 2(e)(2), 15 U.S.C.

1 Application Serial No. 88339623 was filed March 14, 2019 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an allegation of first use and use of the mark
in commerce at least as early as October 1, 2018.
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§ 1052(e)(2). After the final Office Action, Applicant requested reconsideration and
appealed. The Examining Attorney denied reconsideration, and the appeal now has
been fully briefed.
II. Primarily Geographically Descriptive Refusal
A mark is primarily geographically descriptive if: (1) the primary significance of
the mark is the name of a place that is generally known; (2) the goods originate in the
place identified in the mark; and (3) the relevant purchasers would associate the
identified goods with the place named, i.e., the public would believe that the goods
come from the place named. See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889,
891 (CCPA 1982); see also In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d
1445, 1448-49 (Fed. Cir. 2015); In re Societe Generale des Eaux Minerales de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re JT Tobacconists, 59
USPQ2d 1080, 1081 (TTAB 2001). The goods-place association can be presumed when
the goods do in fact emanate from the place named in the mark. In re Hollywood
Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014) (“If the goods or services do in
fact emanate from the place named in the mark, the goods or services/place
association can be presumed”); In re JT Tobacconists, 59 USPQ2d at 1082 (“[W]here
there is no genuine issue that the geographical significance of a term is its primary
significance, and where the geographical place named by the term is neither obscure
nor remote, a public association of the goods or services with the place may ordinarily
be presumed from the fact that the applicant ’s goods or services come from the
geographical place named in the mark.”).
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We must determine the primary significance of the mark as a whole, but typically,
“‘the presence of generic or highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to detract from the primary
geographical significance of the mark as a whole.’” Hollywood Lawyers Online, 110
USPQ2d at 1853-54 (citation omitted). Trademark Act Section 2(e)(2) still applies if
merely descriptive matter is included and the mark as a whole retains its primarily
geographic significance. See, e.g., In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986) (affirming Section 2(e)(2) refusal of CAMBRIDGE DIGITAL,
noting, “we do not believe that the addition of the highly descriptive word DIGITAL
and the design detract from the primary geographic significance of the mark”); see
also In re South Park Cigar Inc., 82 USPQ2d 1507, 1514 (TTAB 2007) (in assessing
Section 2(e)(3) refusal of YBOR GOLD, holding that “GOLD is highly suggestive and
laudatory, simply connoting the high quality of the goods, and that it thus does not
detract from the geographic significance of YBOR or negate the primarily geographic
significance of the mark as a whole”); In re Wada, 52 USPQ2d 1539, 1540-41 (Fed.
Cir. 1999) (in Section 2(e)(3) analysis as to NEW YORK WAYS GALLERY for leather
goods, affirming Board’s finding that “primary geographic significance is not lost by
the addition of WAYS GALLERY to NEW YORK”).
Thus, while we consider Applicant’s mark as a whole, it is nonetheless appropriate
“to consider the significance of each element within the composite mark in the course
of evaluating the mark as a whole.” Save Venice New York, 59 USPQ2d at 1782.
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A. AMERICAN
Applicant states that AMERICAN is “admittedly geographically descriptive,”2 and
has disclaimed it. We agree that “the primary significance of AMERICAN is
geographic, the adjective form of AMERICA, a place generally known to the American
public.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1404 (TTAB 2018)
(citing In re Monograms Am., Inc., 51 USPQ2d 1317, 1320 (TTAB 1999) (affirming
Section 2(e)(2) refusal of MONOGRAMS AMERICA where “applicant has produced
no evidence of other potential connotations for the term AMERICA standing alone ”)).
B. DENTALCRAFT
The crux of the dispute in this case centers on the DENTALCRAFT portion of
Applicant’s mark, and whether in the context of the mark as a whole, it is only
suggestive of the goods, but not descriptive. Applicant maintains that the
suggestiveness of DENTALCRAFT renders “the overall commercial impression [of
AMERICAN DENTALCRAFT] … no longer primarily geographic.”3
Applicant has identified its goods as “dental mouth guard impression kits” and
does not contest that the DENTAL portion is descriptive of them. However, as to
CRAFT, Applicant asserts that “‘[c]raft’ has multiple definitions that could be
associated with dental mouth guard impression kits and does not immediately convey

2 7 TTABVUE 5 (Applicant’s Brief).
3 Id. at 6 (Applicant’s Brief, quoting from In re Am. Home Improvement Prods., Inc., 1998 WL
895883 (TTAB 1998 non-precedential); see also 7 TTABVUE 4 (Applicant’s Reply Brief,
stating, “[b]ecause Applicant’s ‘AMERICA’-formative composite mark contains the suggestive
term DENTALCRAFT, Applicant’s Mark is registrable on the Principal Register because the
primary significance of the mark is not geographic.”)
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any purpose or function thereof.”4 As support, Applicant submitted third-party
website screenshots reflecting:
 An article on the Colgate website encouraging parents to do “a few dental crafts
at home with [their] child [to] make them feel excited” about a first dental
visit.5
 The Dental Craft Corporation website referring to the business as “An
Advanced Crown & Bridge Dental Laboratory.”6
 The Dental Crafters website with menu options including “Crown & Bridge,”
“Implants,” “Dentures & Partials,” and “Sleep Appliances.”7
 Truncated Google search results for “dental craft” showing two lines each of
the top nine results.8
 The Merriam-Webster online dictionary entry for the noun form of “craft,”
defining it as: “ Noun 1: skill in planning, making or executing: DEXTERITY…;
2a: an occupation or trade requiring manual dexterity or artistic skill…; 2b:
crafts plural: articles made by craftspeople…; 3: skill in deceiving to gain an
end…’ 4: the members of a trade or trade association; 5: plural usually craft –

4 Id. at 7.
5 TSDR January 14, 2020, Request for Reconsideration at 40 (colgate.com).
6 Id. at 41 (dentalcraftcorp.com).
7 Id. at 42 (dentalcrafters.net).
8 Id. at 44-45 (google.com). Google search results such as these have minimal to no probative
in our analysis since they are too truncated to provide context. See In re Bayer AG, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE search results that provided very
little context of the use of ASPIRINA deemed to be “of little value in assessing the consumer
public perception of the ASPIRINA mark.”); In re Tea and Sympathy, Inc., 88 USPQ2d 1062,
1064 n.3 (TTAB 2008) (truncated GOOGLE search results entitled to little probative weight).
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a: a boat especially of small size, b: AIRCRAFT, c: SPACECRAFT. Verb to
make or produce with care, skill, or ingenuity.”9
According to Applicant, “consumers would need a lot more than just the Mark itself
to arrive at the conclusion that Applicant’s Goods are dental mouth guard impression
kits,” because the mark “merely suggests the general industry.”10
The Examining Attorney correctly notes that descriptiveness is assessed in
relation to Applicant’s goods, and not in the abstract. See DuoPross Meditech Corp. v.
Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
She relies on the Merriam-Webster definitions of CRAFT as “skill in planning,
making, or executing” and “an occupation or trade requiring manual dexterity or
artistic skill,”11 and contends that the CRAFT portion of Applicant’s mark merely
describes that the mouth guards are “custom made goods requiring skilled
technicians.”12 The Examining Attorney also points to the statements excerpted
below in Applicant’s website specimen that its goods are “handcrafted in the USA”
and “crafted to the highest standards you deserve.”13

9 Id. at 47 (Merriam-Webster.com).
10 7 TTABVUE 9 (Applicant’s Brief).
11 Supra, note 9; see also May 30, 2019 Office Action at 2 (Merriam-webster.com).
12 9 TTABVUE 7 (Examining Attorney’s Brief).
13 9 TTABVUE 6 (Examining Attorney’s Brief quoting Applicant’s specimen , emphasis
added).
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The Examining Attorney also introduced screenshots, some of which are excerpted
below, from Applicant’s website that state, “we Craft Your Custom MouthGuard in
Our Lab” and explain how the consumer’s dental impression helps Applicant “craft
a perfect mouth guard.”14

14 February 6, 2020 Office Action at 3, 7 (americandentalcraft.com, emphasis added).
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In the context of Applicant’s dental mouth guard impression kits and mouth guard
holders, consumers would view the DENTALCRAFT portion of Applicant’s mark as
merely describing that Applicant’s dental goods are custom-made – or crafted. We
find relevant the following definitions of record for CRAFT: “an occupation or trade
requiring manual dexterity or artistic skill // the carpenter’s craft… ,” “skill in
planning, making or executing: dexterity,” and “to make or produce with care, skill,
or ingenuity.”15 Applicant’s own promotional materials clearly support this
descriptive meaning of DENTALCRAFT. Applicant’s repeated references to “craft,”
“crafted,” and “handcrafted” in explaining and promoting its dental mouth guard
impression kits and holders demonstrate the descriptiveness of the wording. See In

15 TSDR January 14, 2020, Request for Reconsideration at. While Applicant suggests that
the “wide variety of definitions” undercuts the ability of the term to immediately convey a
feature of its services, “[t]hat a term may have other meanings in different contexts is not
controlling.” In re Franklin Cnty. Hist. Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012); see also
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
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re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (explanatory
text on the applicant’s website made it clear that the applied-for mark FIRST
TUESDAY described that the applicant’s lottery games appeared on the first Tuesday
of each month); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
(in a descriptiveness case: “Evidence of the context in which a mark is used in labels,
packages, or advertising materials directed to the goods is probative of the reaction
of prospective consumers to the mark.”); In re Omniome, Inc., 2020 USPQ2d 3222, *4
(TTAB 2020) (descriptiveness evidence may come from an applicant’s own use).
Applicant also submitted third-party registrations of various marks it asserts are
analogous to its mark and support registrability, such as WANDERCRAFT,
MINTCRAFT, STEELCRAFT, METCRAFT, FASHIONCRAFT, FIZZCRAFT,
POSTURECRAFT, FILMCRAFT, THOUGHTCRAFT ARCHITECTS, PROCRAFT,
and .16 However, we do not find the registered marks analogous
because none of these registrations are for identical or even similar goods, and instead
involve goods or services far afield from Applicant’s goods. Therefore, the
registrations are not probative to “show that a particular term [CRAFT] has
descriptive significance [or lacks it] as applied to certain goods or services”. Cf. In re
Box Sols. Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (quoting Institut Nat’l Des
Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992)). Regardless, “a desire for consistency with the decisions of prior
examining attorneys must yield to proper determinations under the Trademark Act

16 TSDR January 14, 2020, Request for Reconsideration at 10-38.
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and rules.” Am. Furniture Warehouse, 126 USPQ2d at 1407 (citing In re Omega SA,
494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) and In re Cordua Rests., 823
F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)).
Applicant also contends that because it “is aware of no other companies that use
the mark ‘AMERICAN DENTALCRAFT’ or even just ‘DENTAL CRAFT’ for
Applicant’s Goods, or any other mouthguard-related products,” its proposed mark
“should be deemed, at the very least, suggestive.”17 However, simply because an
applicant is the first and only user of a term “does not render that term distinctive, if
it otherwise meets the [descriptiveness] standard.” In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1514 (TTAB 2016) (citing KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance
someone obtaining “a complete monopoly on use of a descriptive term simply by
grabbing it first”)). We also note that at least one of the third-party uses Applicant
submitted, the Dental Crafters website, refers to its “sleep appliances,” 18 and
Applicant’s specimen indicates that its goods are “night guards” that are “built to
safeguard your sleep.” Thus, we find this to be an example of third-party use of a
similar term in connection with same type of goods as Applicant’s.
Considering all the evidence of record, we agree with the Examining Attorney that
DENTALCRAFT merely describes a feature of Applicant’s custom-crafted dental
mouthguards, such that as a whole, the wording AMERICAN DENTALCRAFT

17 7 TTABVUE 11 (Applicant’s Brief).
18 TSDR January 14, 2020, Request for Reconsideration at 42 (dentalcrafters.net).
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qualifies as primarily geographically descriptive. See Wada, 52 USPQ2d at 1540
(affirming Board’s finding that in the mark NEW YORK WAYS GALLERY “the
addition of the words WAYS GALLERY to NEW YORK did not detract from the
primary geographic significance of the mark”); In re Wine Soc’y of Am., Inc., 12
USPQ2d 1139, 1141-42 (TTAB 1989) (THE WINE SOCIETY OF AMERICA deemed
primarily geographically descriptive where THE WINE SOCIETY immediately
conveys to the public the nature of applicant’s organization and OF AMERICA merely
indicates the geographic origin of the wine society’s services and activities).
III. Conclusion
AMERICAN DENTALCRAFT is primarily geographically descriptive of
Applicant’s dental mouth guard impression kits and mouth guard holders.
Decision: The refusal to register Applicant’s mark is affirmed.