Iowa Department of Public Health

Trademark Trial and Appeal Board

Aug 31, 2011

No. 77678968 (T.T.A.B. Aug. 31, 2011)

Mailed: August 31, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Iowa Department of Public Health
________

Serial Nos. 77677083; 77677812; and 776789681
_______

Kent A. Herink of Davis Brown Koehn Shors and Roberts PC
for Iowa Department of Public Health.

Mayur Vaghani, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, the Iowa Department of Public Health, seeks
registration on the Principal Register of the standard

1 On March 15, 2011, the Board granted the examining attorney’s
motion to consolidate the appeals of the refusals in the above-
listed applications.

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 77677083; 77677812; 77678968
2
character mark I-SMILE2, the mark 3 and the mark
4, all for services identified as “educational
services, namely, conducting educational programs in the
area of dental care, particularly the importance of and

2 Application Serial No. 77677083, filed on February 24, 2009,
based on allegations of first use and first use in commerce on
March 1, 2006, under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a).

3 Application Serial No. 77677812, filed on February 25, 2009,
based on allegations of first use and use in commerce on February
2, 2007, under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a). The application includes the following color claim:
“The color(s) red, light blue, white, pink, orange, blue, green,
dark blue, light gray, dark gray, brown, black, lavender, purple
and green is/are claimed as a feature of the mark.” In addition,
the application includes the following description of the mark:
“The mark consists of the term ‘I-Smile’ in red and white, a
toothbrush in red and white, toothpaste in blue, a shape of the
state of Iowa outlined in dark blue and yellow, a child dressed
in a pink shirt and blue pants jumping with knees straight and
legs to the side arms spread and holding a banana, a child
wearing black glasses dressed in a yellow shirt and blue pants
jumping with knees bent, a child dressed in light blue shirt and
blue pants in a wheelchair and holding a toothbrush and
toothpaste, and a child dressed in a purple shirt and green pants
doing a flip.”

4 Application Serial No. 77678968, filed on February 26, 2009,
based on allegations of first use and first use in commerce on
February 2, 2007, under Section 1(a) of the Trademark Act, 15
U.S.C. §1051(a). The application includes the following color
claim: “The color(s) red, grey and blue is/are claimed as a
feature of the mark.” In addition, the application includes the
following description of the mark: “The mark consists of the
term ‘I-Smile’ in red outlined in gray and positioned above the
handle of a toothbrush having a red handle, gray bristles and
blue toothpaste.”

Serial Nos. 77677083; 77677812; 77678968
3
encouraging early and regular dental care” in International
Class 41.
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 in connection with the
identified services, so resembles the registered marks I
SMILE in standard characters for “dentistry services,
cosmetic dentistry” in International Class 44,5 and
for “dentistry services” in International
44,6 as to be likely to cause confusion, mistake or
deception. I-Smile Management Group, L.L.C. is the listed
owner for both of the cited registrations.
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 the

5 Registration No. 3107348 issued June 20, 2006.

6 Registration No. 3138212 issued September 5, 2006.

Serial Nos. 77677083; 77677812; 77678968
4
marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We begin by considering the similarities and
dissimilarities between applicant’s marks and registrant’s
marks in terms of their appearance, sound, connotation and
overall commercial impression. It is well settled that
marks must be considered in their entireties, not dissected
or split into component parts and each part compared with
other parts. It is the impression created by the involved
marks, each considered as a whole, that is important. See
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992). However, “[t]hat a
particular feature is descriptive [or otherwise lacking in
distinctiveness] ... with respect to the involved goods or
services is one commonly accepted rationale for giving less
weight to a portion of a mark...” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In each appeal, applicant “concedes that there are
similarities between the present mark ‘I-SMILE’ and ‘I
SMILE’.” Br. p. 2. Applicant notes that it was not aware
of the cited registrations at the time it adopted its marks
and makes no further statement regarding this factor.
Serial Nos. 77677083; 77677812; 77678968
5
Applicant’s standard character mark I-SMILE in
application Serial No. 77677083 is legally identical to
registrant’s standard character mark I SMILE in Reg. No.
3107348. The presence or absence of a hyphen is not a
significant difference. See Goodyear Tire & Rubber Co. v.
Dayco. Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (“[T]he
mark ‘FAST-FINDER’ with a hyphen (which mark is in legal
contemplation substantially identical to the mark ‘FAST-
FINDER’ without a hyphen...”). As to registrant’s stylized
mark in Reg. No. 3138212, we find that the heart
design serving as the dot in the “i” is not sufficient to
distinguish the marks. In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Further, because applicant seeks
registration in standard characters, its mark is not
limited to any particular depiction. The rights associated
with a mark in standard characters reside in the wording
and not in any particular display. In re RSI Systems, LLC,
88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Products
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP
1207.01(c)(iii) (7th ed. rev. 2010). Thus, the minimal
stylization in registrant’s mark cannot serve to
distinguish the marks, inasmuch as we must consider
applicant’s mark “regardless of font style, size, or
Serial Nos. 77677083; 77677812; 77678968
6
color.” Citigroup Inc. v. Capital City Bank Group Inc., 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
Applicant’s other marks in Application Serial Nos.
77677812 and 77678968 contain various design elements and
claim color as a feature of the marks; however, viewing the
marks in their entireties we conclude that ultimately the
dominant element in applicant’s marks is the literal
element I SMILE. It is this element by which consumers
will refer to the services and the various design elements
of a toothbrush and children simply underscore the subject
matter of the educational services, namely early dental
care. Further, as noted above, the literal element I-SMILE
is essentially identical to registrant’s standard character
and stylized marks. As to connotation, all of the marks
share the literal meaning “I smile.” In the case of
applicant’s mark in Application Serial No. 77677812,
because of the background design of the state of Iowa, the
“I” might also evoke the word Iowa. Nevertheless, this is
not sufficient to distinguish the marks in that those
consumer’s familiar with applicant’s design mark I SMILE,
might also ascribe the same “Iowa” connotation to
registrant’s I SMILE marks.7

7 As discussed below, absent limitations in the application and
registration we must consider these marks being used nationwide
Serial Nos. 77677083; 77677812; 77678968
7
Thus, viewing the marks in their entireties,
applicant’s marks are either legally identical or very
similar in sound, appearance, connotation and commercial
impression to each of the registrant’s marks.
Applicant argues that “I SMILE” is weak in this field
and should be given only a limited scope of protection. In
support of its position, applicant submitted printouts from
the websites of three third-parties showing uses of “I
SMILE” in connection with dentistry services. Evidence of
third-party use falls under the sixth du Pont factor, the
“number and nature of similar marks in use on similar
goods.” Such evidence may be “relevant to show that a mark
is relatively weak and entitled to only a narrow scope of
protection.” Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005). Applicant’s evidence
is not particularly useful for determining whether the
relevant public has been so exposed to a term that it
should be accorded minimal protection and is far short of
the “more than 575 entities whose names contain the term
BROADWAY and which offer restaurant services and/or related
services or goods.” In re Broadway Chicken Inc., 38 USPQ2d

and offered in all ordinary channels of trade to all classes of
consumers for these services. See infra.
Serial Nos. 77677083; 77677812; 77678968
8
1559, 1562 (TTAB 1996). In view thereof, this factor does
not weigh in favor of applicant.
With regard to the factor of the relatedness of the
services, the issue is not whether the services will be
confused with each other, but rather whether the public
will be confused as to their source. Safety-Kleen Corp. v.
Dresser Indus. Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA
1975). It is sufficient to find services to be related
where the circumstances surrounding their marketing are
such that they would be encountered by the same potential
purchasers under circumstances that would give rise to the
mistaken belief that they originate from the same source.
On-line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000). Finally, we must
make our determination based on the services as they are
identified in the application and registrations and not
based on evidence of their actual use. Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1987) (“[T]he question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
Serial Nos. 77677083; 77677812; 77678968
9
class of purchasers to which sales of the goods [or
services] are directed”). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
As noted above, the identification of services in the
registrations are respectively “cosmetic dentistry,
dentistry services” and “dentistry services” and the
identification of services in each application is
“educational services, namely, conducting educational
programs in the area of dental care, particularly the
importance of and encouraging early and regular dental
care.” It is the examining attorney’s position that
consumers would view the respective services as related
because the dentistry services are the subject matter of
applicant’s services and “applicant’s identification of
services is broad enough to include all types of education
programs including educational programs associated with
dentistry services.” Br. p. 9.
In support of this position, the examining attorney
submitted third-party registrations that include both
dentistry services and educational services in the field of
dental care. Below are a few examples:
Reg. No. 3089240 for “educational services,
namely, conducting seminars in the field of
Serial Nos. 77677083; 77677812; 77678968
10
training in the dental field” and “providing
dental care services”;

Reg. No. 3429994 for “educational services,
namely, conducting seminars, workshops, classes
and conferences in the field of dentistry” and
“dental care, namely, dentistry”;

Reg. No. 3724986 for “educational services,
namely, conducting courses and seminars in the
field of dentistry” and “dentistry services”;

Reg. No. 3274714 for “dental education services”
and “dentist’s services”; and

Reg. No. 3244565 for “early childhood education
programs in the field of early childhood dental
health” and “dentist services.”

In addition, the examining attorney submitted several
third-party websites that show dental offices offering both
dentistry services and educational services about dental
care. See, e.g., Alexandria Dental Care
(www.northernvirginadentist.com); and Dentistry 4 Kids
(www.dentist4kids). The services provided by the
Children’s Dental Health Association of San Diego are
described as follows:
Our School-Based dental access program was
established in 1996. Dentists travel to local
low-income schools where they provide education,
dental exams, and sealants to thousands of
children on site each year. Together with the
school nurses and parents, they link children in
need of treatment to our Dental Center where they
have access to the care they desperately need.

Children’s Dental Health Association of San Diego
(www.childrendentalhealth.org).

Serial Nos. 77677083; 77677812; 77678968
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Applicant argues that “[t]he purchasing public would
never mistakenly assume that a public service educational
program offered by a state agency originated with, is
sponsored by, or is in some way associated with a dentistry
service ... [and that it] offers its educational services
through a public interest educational program in the form
of written materials provided, for example, to schools and
day care providers, and on internet web sites [whereas]
registrant provides its services in dental offices.” Br.
p. 3. However, it is the subject matter of applicant’s
educational services, namely, dental care, and the absence
of any limitations as to channels of trade in applicant’s
and registrant’s identification of services that create a
relatedness in services and overlap in channels of trade.
The evidence of record shows the relationship between
the dental care educational services and the provision of
dental care. The third-party registrations submitted by
the examining attorney serve to suggest that applicant’s
educational services in the field of dentistry and
registrant’s dentistry services are of a kind that may
emanate from a single source. In re Infinity Broad. Corp.,
60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). This
Serial Nos. 77677083; 77677812; 77678968
12
evidence is further supported by the website excerpts
showing third parties providing both services.
We find the record as a whole establishes that
registrant’s dentistry services are related and travel in
the same channels of trade as applicant’s services, such
that when used in connection with a similar mark, confusion
would be likely. In particular, we note the association
that provides its educational and dental services in
schools, which is one of the venues where applicant
provides its services. There is nothing in the record to
support a finding that a state agency providing education
on dental care would not also offer or assist in the
procurement of dental services for those in need. In fact,
applicant’s specimen of use, a printout from its website,
indicates such a relationship, as shown below.
Components of I-Smile include improving the
dental support system for families, improving the
dental Medicaid program, implementing recruitment
and retention strategies for underserved areas,
and integrating dental services into rural and
critical access hospitals. I-Smile is based upon
a conceptual dental home, allowing a team
approach to manage oral disease. Primary
prevention and care coordination are the focus of
the project, centered in Iowa’s existing public
health network.

Dental hygienists, serving as I-Smile oral health
coordinators, are beginning to implement the
project within Iowa’s 23 Title V child health
agencies. These coordinators are developing
partnerships, establishing referral systems,
Serial Nos. 77677083; 77677812; 77678968
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providing training and education for healthcare
professionals, ensuring completion of oral
screenings and risk assessments, working within
their agencies to develop oral health protocols,
ensuring oral health care coordination and
providing gap-filling preventative services.

www.idph.state.ia.us
Further, the potential consumers overlap in that
applicant’s and registrant’s services are directed to
consumers seeking or in need of dental care. Applicant
argues that the consumers would be “more careful and
sophisticated in making a decision about where to
‘purchase’ when the decision involves health care.” Br. p.
3. Certainly, procurement of these types of services
involves careful decision-making. However, in this case,
the potential purchasers include the general public and the
facts here are distinguished from circumstances where the
goods or services are complex and extremely expensive,
e.g., scientific or medical equipment, and the overlapping
potential purchasers are limited to very knowledgeable
purchasers in the particular field. In short, there is
nothing in the record to support a finding that the
services and purchasing process are of such a nature that
purchasers would exercise unusual care or otherwise would
distinguish similar marks for related services. See, e.g.,
Electronic Design & Sales, Inc. v. Electronic Data Sys.
Serial Nos. 77677083; 77677812; 77678968
14
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992)
(record confirms that opposer’s services are expensive and
are purchased only by experienced corporate officials after
significant study and contractual negotiation and that the
evaluation process used in selecting applicant’s products
requires significant knowledge and scrutiny). Thus, we
find that the level of care taken by the average, let alone
least sophisticated, consumer of the identified services
does not serve to avoid likely confusion. Moreover, as is
frequently stated, even if consumers are knowledgeable in a
particular field that does not necessarily mean that they
are immune from source confusion. In re Decombe, 9 USPQ2d
1812 (TTAB 1988). Thus, to the extent this factor weighs
in applicant’s favor it is not sufficient to outweigh the
other du Pont factors.
Applicant points to four years of coexistence with no
known instances of actual confusion, but provides no
evidence of any meaningful opportunities for confusion to
occur. First, the inquiry here is likelihood of confusion,
not actual confusion. HRL Associates Inc. v. Weiss
Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989) aff’d, 14
USPQ2d 1840 (Fed. Cir. 1990). The Court of Appeals for the
Federal Circuit has observed, “A showing of actual
confusion would of course be highly probative, if not
Serial Nos. 77677083; 77677812; 77678968
15
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte context.” In re
Majestic Distilling Co., Inc., 65 USPQ2d at 1205. Thus,
regardless of the evidence, an ex parte proceeding is ill
equipped for a fair determination inasmuch as the
registrant does not have an opportunity to defend its
registration.
Finally, applicant argues that the extent of potential
confusion is de minimis because “applicant’s services are
limited to the State of Iowa and the owner of the cited
registrations is in Tucson, Arizona.” Br. p. 4. There are
no geographic restrictions in the application or
registrations and we must conduct our analysis based on
nationwide use and protection.8
In conclusion, we find that because the marks are
similar, the services are related, and the channels of
trade and consumers overlap, confusion is likely between
applicant’s I SMILE marks and registrant’s I-SMILE marks.

8 We note that geographic limitations may only be considered in
the context of a concurrent use application and proceeding. See
TMEP §1207.04 and TBMP Chapter 1100 (3rd ed. 2011).

Serial Nos. 77677083; 77677812; 77678968
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To the extent there is any doubt, we resolve it, as we
must, in registrant’s favor. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusals to register under Section
2(d) of the Trademark Act are affirmed in each
application.