American Eagle Instruments, Inc.

Trademark Trial and Appeal Board

Sep 5, 2003

No. 78050941 (T.T.A.B. Sep. 5, 2003)

Mailed: 9/5/03
Paper No. 18
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Eagle Instruments, Inc.
________
Serial No. 78/050,941
______
Vicki Frazier, Esq. of American Eagle Instruments, Inc.
Dezmona J. Mizelle, Trademark Examining Attorney, Law
Office 110 (Chris Pedersen, Managing Attorney).
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
American Eagle Instruments, Inc. (applicant), a
Montana corporation, has appealed from the final refusal of
the Trademark Examining Attorney to register the mark TALON
TOUGH (“TOUGH” disclaimed) for “dental instruments, namely
curettes, scalers, explorers, angle forms, pluggers,
carvers, chisels, excavators, burnishers, and margin
trimmers having stainless steel tips for diagnostic,
periodontal, hygiene, composite, operative, and endodontic
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78/050,941
2
use.”1 The Examining Attorney has refused registration
under Section 2(d) of the Act, 15 USC §1052(d), on the
basis of Registration No. 1,873,018, issued January 10,
1995 (Section 8 affidavit accepted, Section 15 affidavit
acknowledged), for the mark TALON for “interocclusal dental
appliances; namely, nightguards, antibruxism appliances,
TMJ splints, myofascial pain dysfunction splints, and sleep
disorder appliances,” in Class 10, and “plastic molding
compounds; namely a polymer composition for use in the
manufacture of molded plastic articles,” in Class 1.
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
We affirm.
The Examining Attorney argues that applicant’s mark
TALON TOUGH for its dental instruments so resembles the
registered mark TALON for dental appliances and plastic
molding compounds that confusion is likely. In comparing
the marks, the Examining Attorney argues that one part of a
mark may be more significant in creating a commercial
impression--in this case the inherently distinctive word
“TALON” in applicant’s mark rather than the descriptive and
disclaimed word “TOUGH.” With respect to the goods, the
1 Application Serial No. 78/050,941, filed March 1, 2001, based upon
allegations of use since March 10, 1992.
Serial No. 78/050,941
3
Examining Attorney contends that applicant’s dental
instruments are sufficiently related to registrant’s dental
appliances and other goods that confusion as to source is
likely. These goods are related, according to the
Examining Attorney, because they are used in the same field
(dentistry) and are sold to and used by the same class of
purchasers (dentists and dental hygienists). The Examining
Attorney states that applicant’s dental instruments may be
used during dental examinations and procedures while
registrant’s goods are used as a result of dental
examinations and diagnoses. Finally, the Examining
Attorney asks us to resolve any doubt in favor of
registrant.
The Examining Attorney has made of record third-party
registrations allegedly showing that goods similar to
applicant’s and registrant’s may emanate from the same
source and be sold under the same trademark. The Examining
Attorney contends that purchasers of applicant’s goods may,
therefore, expect that both dental instruments and related
dental products such as appliances will come from the same
source if sold under similar marks.
It is applicant’s position, on the other hand, that
the marks TALON and TALON TOUGH create different commercial
impressions and that, moreover, registrant’s mark is
Serial No. 78/050,941
4
suggestive because it suggests that registrant’s product
expands and contracts with one’s mouth or jaw, and is weak
because of the existence of third-party marks. In this
regard, applicant points to third-party registrations for
the mark TALON for curved needle drivers, for a device for
immobilizing a patient’s head during medical procedures and
for balloon catheters. While applicant admits that both
registrant’s dental appliances and applicant’s dental
instruments are used in the dental field and are bought and
used by the same classes of purchasers (dentists and dental
hygienists), applicant maintains that the goods are
nevertheless different and noncompetitive and have
different uses and different end users (dentists and dental
hygienists v. patients). In this regard, applicant states
that a dentist would measure for and order registrant’s
goods, and that the registrant would have direct contact
with the professional in order to make the dental
appliances.
Furthermore, applicant argues that dentists and dental
hygienists are sophisticated and discriminating buyers who
would know the source of the dental instruments they are
purchasing and would not be confused as to their source.
Applicant maintains that these purchasers carefully select
the product they use for their particular needs.
Serial No. 78/050,941
5
Applicant’s attorney also states that there have been no
instances of actual confusion since applicant’s first use
in 1992.
With respect to the third-party registrations, which
the Examining Attorney has made of record, applicant points
out that none of registrant’s goods are specifically listed
in those registrations. Applicant also asks us to take
judicial notice of such definitions as “occlussal” (“of or
relating to the grinding or biting surface of a tooth or
occlusion of the teeth”) and “bruxism” (“the habit of
unconscious gritting or grinding of the teeth esp. in
situations of stress or during sleep”).2
In response, the Examining Attorney argues that, of
the third-party registered marks, only three are in the
medical field and just one (registrant’s) is in the dental
field. Also, the fact that a purchaser may be
sophisticated or knowledgeable in a particular field does
not mean that the purchaser is immune to confusion as to
source or that he or she will not confuse similar
trademarks, according to the Examining Attorney.
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative facts in
2 We shall do so. See University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Serial No. 78/050,941
6
evidence that are relevant to the factors bearing on the
likelihood-of-confusion issue. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations are the marks and the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by [Section] 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Furthermore, likelihood of confusion may be found when
the goods are not the same or even competitive, it being
sufficient if they are related in some way or that the
circumstances under which they are marketed are such that
persons encountering the goods would assume a relationship
or common source because of the similarity of the marks.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984); In re Opus One Inc., 60
USPQ2d 1812, 1814-15 (TTAB 2001); and McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). As the Court
of Appeals for the Federal Circuit stated in the case of
Recot, Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1895,
1898 (Fed. Cir. 2000):
Serial No. 78/050,941
7
[E]ven if the goods in question are
different from, and thus not related
to, one another in kind, the same goods
can be related in the mind of the
consuming public as to the origin of
the goods. It is this sense of
relatedness that matters in the
likelihood of confusion analysis.
See also, Bose Corporation v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309-1310 (Fed. Cir.
2002)(“Hence the products as described in the pertinent
registrations are not the same. But they are related as
required by DuPont.”); and Hewlett-Packard Company v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that confusion is
likely. First, concerning the marks, the first word in
applicant’s mark TALON TOUGH is the more arbitrary and
dominant portion and is identical to the registered mark.
This is “a matter of some importance since often it is the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” Presto
Serial No. 78/050,941
8
Products v. Nice Pak Products, 9 USPQ2d 1825, 1827 (TTAB
1988).
Contrary to applicant’s argument that the registered
mark TALON is suggestive of registrant’s goods, at the very
most this word, which signifies the claw of a bird of prey,
is only vaguely suggestive of registrant’s nightguards,
antibruxism appliances, TMJ splints, and sleep disorder and
other appliances. And, even if the registered mark were
considered suggestive and weak in terms of its trademark
significance, it is well established that a weak mark is
entitled to protection against the registration of the same
or a substantially similar mark for identical and/or
closely related goods, and that confusion is to be avoided
as much between weak marks as between strong marks. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974); Plus Products v.
Physicians Formula Cosmetics, Inc., 198 USPQ 111, 114 (TTAB
1978); and In re Textron Inc., 180 USPQ 341 (TTAB 1973),
citing Eastern Industries, Inc. v. Waterous Co., 289 F.2d
952, 129 USPQ 422, 424 (CCPA 1961).
While we agree with applicant that the respective
goods are not identical or competitive, we do agree with
the Examining Attorney that they are related products sold
to the same classes of purchasers in the same field.
Serial No. 78/050,941
9
Although dentists and dental hygienists are not average
purchasers of the general public for these goods, this does
not mean that they would not confuse the source of dental
instruments and dental appliances when such goods are sold
under the very similar marks TALON and TALON TOUGH.
It is our opinion that a dentist familiar with
registrant’s TALON dental appliances such as nightguards,
TMJ splints, and other appliances, which he had distributed
to patients, who then encounters applicant’s TALON TOUGH
dental instruments such as angle forms, pluggers,
excavators, and margin trimmers is likely to believe, in
view of the similarity of these marks, that applicant’s
TALON TOUGH instruments are a line or an extension of
registrant’s TALON dental appliances, or vice versa. In
this regard, the Examining Attorney has made of record some
evidence that both dental instruments, on the one hand, and
dental appliances similar to registrant’s, on the other,
may come from the same source.3 For example, one third-
party registration (Reg. No. 543,962, issued June 19, 1951,
third renewal) lists such goods as drills, burnishers,
carvers, chisels and excavators, on the one hand, and
plastic fillings, on the other. Plastic fillings could
3 We have disregarded those third-party registrations which are
based on Section 44 of the Act and not on use in commerce.
Serial No. 78/050,941
10
well be made from the polymer compositions listed in
registrant’s registration. Another registration (Reg. No.
1,376,831, issued January 7, 1986, partial Section 8
affidavit accepted) lists such dental equipment as angles
and scalers, on the one hand, and retainers, wedges and
tooth protectors, on the other, similar to registrant’s
nightguards, antibruxism and sleep disorder appliances.
We agree with applicant that dentists and dental
hygienists are not ordinary members of the purchasing
public. However, “even careful purchasers are not immune
from source confusion.” In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999). See also In re Hester
Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) [“While we
do not doubt that these institutional purchasing agents are
for the most part sophisticated buyers, even sophisticated
purchasers are not immune from confusion as to source
where, as here, substantially identical marks are applied
to related products”].
And, if we had any doubt concerning this issue, that
doubt, in accordance with precedent, must be resolved in
favor of registrant. In this regard, it is the duty of the
Board to afford rights to registrants without constantly
subjecting them to the financial and other burdens of
opposition proceedings. See In re Dixie Restaurants, Inc.,
Serial No. 78/050,941
11
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In re
Majestic Distilling Company, supra.
Although applicant’s attorney has represented that
there have been no instances of actual confusion, such
unsubstantiated statement is entitled to little weight.
Majestic Distilling Co., supra, 65 USPQ2d at 1205 (“With
regard to the seventh DuPont factor, we agree with the
Board that Majestic’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”). Moreover, we have no information of record
concerning the nature and extent of applicant’s and
registrant’s sales and advertising or whether the
respective goods are even sold in the same geographic
areas. That is to say, the absence of evidence of actual
confusion is offset by the absence of evidence that there
has been a substantial opportunity for actual confusion to
have occurred (i.e., evidence of an overlap in the
respective actual trade channels). In these circumstances,
we cannot conclude that the apparent absence of actual
confusion is entitled to significant legal weight in the
likelihood-of-confusion analysis. See Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).4
4 The dissent makes a point of indicating that applicant’s goods
are different from registrant’s because they are made of metal
Serial No. 78/050,941
12
Decision: The refusal of registration is affirmed.
and would therefore “be fabricated in a different place, e.g., a
factory, and in a different manner” from registrant’s appliances.
There is simply nothing in the record concerning these
statements, and, in any event, we are mindful of what the Court
noted in Majestic Distilling, supra, at 1204 (in a case involving
entirely different goods (sold to the general public) from those
involved herein, but nevertheless relevant to the extent that
dentists and hygienists may not be aware of or concerned with an
allegedly different manufacturing process):
The PTO responds, and we agree, that malt liquor
and tequila are similar by virtue of the fact
that both are alcoholic beverages that are
marketed in many of the same channels of trade to
many of the same consumers. Although the PTO
apparently found no evidence of any manufacturer
who both brews malt liquor and distills tequila,
Majestic has not shown that the PTO’s lack of
evidence in that regard is relevant. Unless
consumers are aware of the fact, if it is one,
that no brewer also manufactures distilled
spirits, that fact is not dispositive. The
DuPont factors require us to consider only “trade
channels,” which may be, but are by no means
necessarily, synonymous with manufacturing
channels. In this case, Majestic has not
demonstrated that consumers distinguish alcoholic
beverages by manufacturer rather than brand name.
We also note that various goods in some of the third-party
registrations are also apparently made of differing
substances. Here, as in Majestic, all the goods are
admittedly sold in the same channels of trade to the same
classes of purchasers.
The dissent has also engaged in much judicial notice
concerning the practice of dentistry and the knowledge of
dentists and dental hygienists, matter which is simply not
in the record (for example, “Dentists are sophisticated
about the dental industry, and about the manufacturing and
selling practices within that industry”). This case should
be decided on the record and any reasonable inferences that
can be drawn from it.
Given the limited resources of the Office, we believe
that a sufficient relationship between the respective goods
has been demonstrated.
Serial No. 78/050,941
13
Seeherman, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority’s decision to
affirm the refusal of registration. I believe that the
Office has failed to prove the relatedness of applicant’s
goods to those listed in the cited registration.
Aside from the fact that applicant’s goods and the
registrant’s are used by dentists and go in people’s
mouths, the only evidence to show relatedness are third-
party registrations made of record by the Examining
Attorney. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993), stands for the proposition that third-party
registrations which individually cover a number of
different items and which are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed goods and/or services are of a type
which may emanate from a single source.
In this case, the Examining Attorney has submitted
twelve third-party registrations in an effort to show that
goods such as those identified in applicant’s application
and the cited registration emanate from a single source.
However, a closer examination of these registrations
reveals that half are based, not on use in commerce, but on
Section 44 of the Trademark Act. Third-party registrations
which have issued under Section 44(e) of the Act, 15 U.S.C.
Serial No. 78/050,941
14
1126(e), without any use in commerce basis, have very
little persuasive value. Id. These registrations include
many classes, and cover a wide range of goods, from windows
to sunglasses to curettes to paint brushes (Registration
No. 2,495,400), and do not show that such goods are likely
to emanate from a single source and be sold under a single
mark.
There are six third-party registrations which are
based on use in commerce. However, a closer look at these
registrations shows that they seem to have been made of
record only because the identifications contain words which
are found in the applicant's identification and that of the
cited registration. For example, Registration No.
1,793,554 includes a dental instrument "to remove plaque
and food particles from the teeth and dental appliances."
Obviously, this does not show that the registrant uses the
mark on dental appliances of the type identified in the
cited registration. Similarly, the listing of the
"instruments and appliances for use in dentistry" in
Registration No. 1,509,907 does not include any of the
appliances identified in the cited registration; they are
items such as "cotton roll holders." Two of the
registrations (Nos. 1,167,128 and 1,196,155) which are
owned by Healthco, Inc., are clearly house marks, and cover
Serial No. 78/050,941
15
goods ranging from irrigation sets for irrigating foley
catheters to dental tray covers to orthopedic appliances to
enema sets; even with this broad list, the goods identified
in the cited registration do not appear.
The majority refers specifically to Registration Nos.
543,962 and 1,376,831 as evidence that “dental appliances
similar to registrant’s” may come form the same source as
dental instruments. As a general comment, I do not believe
that the Board should interpret Trostel so broadly as to
treat third-party registrations for goods which might be
similar to, but not the same as, the goods in the cited
registration and application as showing that the goods in
the cited registration and application may emanate from a
single source. Trostel makes it clear that the probative
value of the third-party registrations is limited (it
specifically notes that third-party registrations are not
evidence that the marks shown therein are in commercial
use). The fact that goods listed in a third-party
registration may be related to goods in the cited
registration or application does not show that the goods in
the cited registration and application are of a type which
may emanate from a single source.
With respect to Registration No. 543,962, the majority
states that the “plastic fillings” listed in this
Serial No. 78/050,941
16
registration “could well be made from the polymer
compositions listed in registrant’s registration.” The
identification in the cited registration, however, is for
“plastic molding compounds, namely a polymer composition
for use in the manufacture of molded plastic articles,” in
Class 1. Clearly, these molding compounds are used to make
the registrant’s nightguards, etc., rather than plastic
fillings. Even assuming that plastic molding compounds
could be used to fill cavities, if the registrant’s goods
could be used for this purpose they would fall in Class 10,
as do the goods in Registration No. 543,962, not in Class
1.5 To the extent that the majority suggests that the
“plastic fillings” identified in Registration No. 543,962
encompass already molded plastic (perhaps something in the
nature of a plug that fits into a cavity?), even if the
cited registrant’s polymer compositions could be used to
manufacture such a supposed article, the third-party
registration does not demonstrate that “plastic molding
compounds, namely a polymer composition for use in the
manufacture of molded plastic articles,” and plastic
5 In point of fact, Registration No. 543,962 issued in U.S.
class 44, prior to the adoption by the United States of the
International Classification system. U.S. Class 44 is the
equivalent of International Classes 5 and 10, as the registration
indicates. It most definitely would not include goods in
International Class 1.
Serial No. 78/050,941
17
fillings would be sold by the same source under a single
mark.
The majority also points to Registration No. 1,376,831
as listing “such dental equipment as angles and scalers, on
the one hand, and retainers, wedges and tooth protectors,
on the other….” The majority states that the latter goods
are similar to registrant’s nightguards, antibruxism and
sleep disorder appliances. However, there is no evidence
in the record to show that retainers, wedges and tooth
protectors are “similar to” the nightguards, antibruxism
appliances, sleep disorder appliances, etc. listed in the
cited registration.6 Certainly, they are not the same
goods.
Accordingly, the third-party registrations submitted
by the Examining Attorney do not prove that the goods
identified in applicant’s application and the cited
registration would emanate from the same source and be sold
under a single mark. As a result, the only “evidence” to
show that the goods are related is that they are all dental
devices that would be used in a patient’s mouth. However,
I do not believe that this is a sufficient basis on which
6 In fact, retainers, wedges and tooth protectors would be appliances
used during dental procedures or to maintain an arch.
Serial No. 78/050,941
18
to find the goods related, such that the use of similar
marks on both is likely to cause confusion.
Dentists and, to a limited extent, dental hygienists,
are the only purchasers/users of both applicant’s and the
registrant’s products.7 They are obviously sophisticated
purchasers, as the majority acknowledges. They will not
assume that, simply because goods are used in dentistry,
(or even used in the mouth), all such goods come from the
same source if they are sold under similar marks. In this
case, the goods identified in the application and the cited
registration are so different in nature and composition
that dentists would not expect them to emanate from the
same source. Specifically, the dental instruments
identified in applicant’s application are standard sized
items which are made with metal, and would be fabricated in
a different place, e.g., a factory, and in a different
manner, from those identified in the cited registration.
Goods such as nightguards and antibruxism appliances are
made of molded plastic, and are made to fit the particular
patient. As applicant indicates, a dentist would measure
7 Dental hygienists would use certain of the instruments
identified in applicant’s application as part of the dental
cleaning/prophylaxis procedure. By the very nature of their job,
they would not fit nightguards and the other interocclusal dental
appliances identified in the cited registration, but might come
in contact with such goods if they assist dentists in fitting
them.
Serial No. 78/050,941
19
for and order registrant’s goods, and the registrant would
have direct contact with the professional in order to make
the dental appliances. The makers of these nightguards and
other appliances would be more in the nature of a
laboratory than a factory that makes dental instruments.
Dentists are sophisticated about the dental industry,
and about the manufacturing and selling practices within
that industry, e.g., they would know the types of products
that are made by laboratories and those that are not. The
fact that, as the Examining Attorney states, applicant’s
dental instruments may be used during dental examinations
and procedures while registrant’s goods are used as a
result of dental examinations and diagnoses, is not
sufficient to establish that dentists would assume that
these various goods would emanate from the same source.
There is no evidence to show that this is a practice in
the dental industry. Indeed, the fact that the Examining
Attorney apparently conducted a thorough search of Office
records and was unable to produce any third-party
registrations listing both the goods identified in
applicant’s application and the cited registration
indicates that such goods do not emanate from a single
source. See In re Federated Department Stores, Inc., 3
USPQ2d 1541, fn. 2 (TTAB 1987) (we must assume that the
Serial No. 78/050,941
20
three excerpts selected provide the best support of the
Examining Attorney's refusal to register available from
that source).
The majority opinion makes the point (as does the
Examining Attorney) that even sophisticated purchasers are
not immune from source confusion. I do not dispute that
general proposition. Thus, in a situation such as that
quoted in the majority opinion, with substantially
identical marks applied to related products, even a
sophisticated purchaser is likely to assume that the
products emanate from the same source. Similarly, if
goods are the same, and there are only slight differences
between the marks, a sophisticated purchaser may not note
such differences. However, in this case, because the
purchasers are sophisticated about the practices of the
industry itself, they will not see applicant’s and the
registrant’s goods as related, and therefore are not
likely to believe that the goods emanate from the same
source, even though they are sold under similar marks.
I would reverse the refusal of registration.