Gillette Canada Co.v.Everapex Products, Inc.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 91111740 (T.T.A.B. Sep. 20, 2001)

9/20/01 Paper No. 17
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Gillette Canada Company d/b/a Oral-B Laboratories
v.
Everapex Products, Inc.
_______

Opposition No. 111,740
to Application No. 75/324,250
filed on July 14, 1997
_______

Marie V. Driscoll and Michael Chiappetta of Fross,
Zelnick, Lehrman & Zissu for Gillette Canada Company
d/b/a Oral-B Laboratories.

David A. Greenlee, Esq. for Everapex Products, Inc.
_______

Before Hairston, Walters and Bottorff, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Gillette Canada Company d/b/a Oral-B Laboratories
filed its opposition to the application of Everapex
Products, Inc. to register the mark ORAL TECH for “dental
mirrors and dental picks,” in International Class 10, and
“manual, power-operated, and interdental toothbrushes,
dental floss, and dental floss picks,” in International
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,740
2
Class 21.1 The application includes a disclaimer of ORAL
apart from the mark as a whole.
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered marks,
ORAL-B, both in stylized and unstylized forms, for a
variety of preventive dentistry products as to be likely
to cause confusion, under Section 2(d) of the Trademark
Act.
Applicant, in its answer, denied the salient
allegations of the claim.
The record consists of the pleadings; the file of
the involved application; certified status and title
copies of opposer’s seven registrations, noted below; and
the testimony deposition by opposer of Alan A. Michaels,
a vice president of opposer, with accompanying exhibits.
Only opposer submitted evidence and testimony and filed a
brief on the case. A hearing was not requested.
Through the testimony of Alan A. Michaels, the vice
president of professional group North America for the
Oral-B division of opposer, opposer has established that
the trade name and trademark, ORAL-B, has been used by

1 Application Serial No. 75/324,250, filed July 14, 1997, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
Opposition No. 111,740
3
opposer to identify its company and its products since at
least 1948; and that opposer’s primary dental product
categories are manual toothbrushes, dental floss and
power-assisted or electric toothbrushes. Mr. Michaels
testified that opposer sells its products to the general
consumer through all retail channels of trade for such
products; and that it also sells its products to dental
professionals directly, through its professional sales
force, and through dental dealers who are wholesalers to
the dental profession. Mr. Michaels stated that
opposer’s total sales of its dental products for the
three-year period 1997-1999 were $830 million, averaging
$275 million per year; and that its advertising costs for
the same period were $240 million, averaging $80 million
per year. Opposer’s advertising includes print
publications and publication inserts, direct mail, radio
and television, and trade shows and professional
conventions. The mark ORAL-B is used in all advertising,
product packaging and on the products themselves.
Opposer sub-brands its products so that different models
of its various products include additional marks, e.g.,
ORAL-B ADVANTAGE, ORAL-B SATINFLOSS, ORAL-B INDICATOR,
and ORAL-B RADICAL CONTROL. Mr. Michaels stated that
Opposition No. 111,740
4
opposer has the number one market share in each of its
product categories.
Opposer has made the following registrations of
record:
No. 547,1302 for the mark ORAL B in stylized
script for toothbrushes;

No. 1,106,5873 for the mark ORAL-B in stylized
form for dental floss dispensers and dental
floss;

No. 1,197,3044 for the mark ORAL-B in stylized
script for toothbrushes;

No. 1,501,8585 for the mark ORAL-B for topical
flouride gels for application to the teeth,
medicated mouthrinse preparations;

No. 1,502,0696 for the mark ORAL-B for dental
floss and trays for topical application of
flouride compositions and other
preparations to the teeth;

2 Registration No. 547,130, issued August 28, 1951, in International
Class 29. [2nd renewal for a period of 10 years from August 28, 1991;
Sections 8 and 15 affidavits accepted and acknowledged, respectively.]

3 Registration No. 1,106,587, issued November 28, 1978, in International
Class 10. [Renewed for a period of 10 years from November 21, 1998;
Sections 8 and 15 affidavits accepted and acknowledged, respectively.]

4 Registration No. 1,197,304, issued June 8, 1982, in International Class
21. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]

5 Registration No. 1,501,858, issued August 30, 1988, in International
Class 5. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]

6 Registration No. 1,502,069, issued August 30, 1988, in International
Class 10. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]

Opposition No. 111,740
5
No. 1,502,7527 for the mark ORAL-B for
toothpaste and dental prophylaxis; and

No. 1,608,7628 for the mark ORAL-B in stylized
form for dental prophylaxis preparations,
namely, non-medicated mouthwash; medicated
mouth rinse preparation, topical flouride
gels for application to the teeth, dental
amalgam; dental floss, disposable trays for
topical application of dental medications;
and toothbrushes, denture brushes,
interdental brushes.

There is no evidence in the record, except the
application file of the opposed mark, regarding
applicant.
Analysis
Inasmuch as certified copies of opposer’s
registrations are of record, there is no issue with
respect to opposer’s priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In

7 Registration No. 1,502,752, issued September 6, 1988, in International
Class 3. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]

8 Registration No. 1,608,762, issued August 7, 1990, in International
Classes 3, 5, 10 and 21, respectively. [Sections 8 and 15 affidavits
accepted and acknowledged, respectively.]

Opposition No. 111,740
6
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record
on these factors, we keep in mind that “[t]he 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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). See also In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
With respect to the goods of the parties, we observe
that there is a substantial overlap in the goods
identified in the application and in the pleaded
registration. Further, applicant’s additional identified
dental products are closely related to the dental
products identified in opposer’s registrations. Thus, we
conclude that the goods of the parties are either
identical or closely related.
Further, both opposer’s and applicant’s
identifications of goods are broadly worded, without any
limitations as to channels of trade or classes of
purchasers. We must presume that the goods of the
applicant and opposer are sold in all of the normal
channels of trade to all of the usual purchasers for
Opposition No. 111,740
7
goods of the type identified. See Canadian Imperial Bank
v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In other words, we conclude that the channels of
trade and class of purchasers of the parties’ goods are
the same.
Turning to the marks, we keep in mind that “when
marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Additionally, we find that opposer has demonstrated
that its ORAL-B mark is famous for dental products, as
shown by the sales and advertising figures submitted.
This is a significant factor because famous marks enjoy a
wide latitude of legal protection. “[T]he fame of a
trademark may affect the likelihood purchasers will be
confused inasmuch as less care may be taken in purchasing
a product under a famous name.” Specialty Brands v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 6765, 223
USPQ 1281, 1284 (Fed. Cir. 1984). In addition, the fame
of a mark magnifies the significance of the similarities
between the marks which are compared. Kenner Parker Toys
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
Opposition No. 111,740
8
USPQ2d 1453 (Fed. Cir. 1992), cert. denied, 113 S.Ct. 181
(1992).
Applicant’s and registrant’s marks both contain the
term ORAL as the initial term in each mark. There is no
question that ORAL has a suggestive significance for the
dental products involved in this case.9
In opposer’s marks, ORAL is followed by the letter
B, which appears to be arbitrary in connection with
opposer’s products. In applicant’s mark, ORAL is
followed by the term, TECH, which is not an arbitrary
term. TECH is likely to have a suggestive connotation
that refers either to “technology,” indicating that these
products for oral hygiene and care employ technology in
their design, or to “technician,” as in “dental
technician,” the person who is likely to use the products
identified by the mark.
In view of the suggestiveness of both parties’
marks, it is not helpful to engage in an analysis of
which element of each is the more suggestive. Rather,
the marks must be compared in their entireties, giving
weight to all of the elements.

9 We note that applicant has disclaimed the term ORAL in its mark.
While this indicates that applicant may believe the term is merely
descriptive, the disclaimer is not determinative of that question. In
fact, opposer’s marks contain no disclaimers, regardless of whether the
Opposition No. 111,740
9
Although there are obvious differences in the marks
because of the second elements of each, given the other
factors discussed above, we find that these differences
are not sufficient to avoid a likelihood of confusion.
In particular, in view of the fame of opposer’s ORAL-B
marks; the identical and closely related goods involved;
and the similarities between the parties’ marks,
consumers are likely to be confused as to source or
sponsorship by applicant’s ORAL TECH mark.
We do not suggest by this decision that opposer has
exclusive rights to the term ORAL for dental products,
and that any mark containing the element ORAL, used for
dental products, would be likely to cause confusion with
opposer’s marks. However, to the extent that we have any
doubts about our decision, we resolve those doubts in
favor of the prior user and registrant. W. R. Grace &
Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308
(TTAB 1976).
Decision: The opposition is sustained.

marks appear in stylized or typed form, or whether the marks include a
hyphen between ORAL and the subsequent B or not.