Gillette Canada Inc.v.Mas Marketing, Inc.

Trademark Trial and Appeal Board

May 31, 2000

No. 91099522 (T.T.A.B. May. 31, 2000)

Paper No. 40
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 31, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Gillette Canada Inc., d.b.a Oral-B Laboratories
v.
Mas Marketing, Inc.
_____
Opposition No. 99,522
to application Serial No. 74/589,153
filed on October 21, 1994
_____
Marie V. Driscoll and Robert A. Becker of Fross Zelnick
Lehrman & Zissu, P.C. and Judith D. Cohen of The Gillette
Company for Gillette Canada Inc., d.b.a. Oral-B Laboratories
Michael J. Garvin of Hahn Loeser & Parks LLP for Mas
Marketing, Inc.
______
Before Seeherman, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Gillette Canada Inc., d.b.a. Oral-B Laboratories, has
opposed the application of Mas Marketing, Inc. to register
ORAL COMPARE as a trademark for toothbrushes.1 As grounds

1 Application Serial No. 74/589,153, filed October 21, 1994,
asserting first use and first use in commerce on October 5, 1994.
Opposition No. 99,522
2
for opposition, opposer alleges that it is the prior user of
first, the trade name and mark ORAL B and, since 1977, of
the trade name and mark ORAL-B, for toothbrushes, denture
brushes and other dental cleaning items; that its ORAL-B
brand toothbrushes have attained the number one share
position in the United States and its trademark is a very
well known indication of source; that it owns seven
registrations for ORAL-B marks for, inter alia,
toothbrushes; that applicant uses the word “compare” in its
mark descriptively to evoke comparison of its product with
toothbrushes sold under the mark ORAL-B and other marks,
such that ORAL is the dominant part of applicant’s mark; and
that applicant’s mark so resembles opposer’s trademark and
trade name as to be likely, when used in connection with
applicant’s products, to cause confusion and mistake and to
deceive.
In its answer applicant has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; the stipulated testimony, with
exhibits, of Jonathan Kalan;2 the testimony deposition, with

2 This testimony merely authenticates the 28 exhibits which were
submitted with it, consisting of various market research reports.
Each of these reports numbers in the hundreds of pages, with
summaries of particular points scattered throughout the reports.
We would point out that the submission of evidence in this
manner, without any testimony highlighting those specific
portions of the report that opposer deemed relevant to the
proceeding, is very burdensome to the Board.
Opposition No. 99,522
3
exhibits, of opposer’s witness Alan A. Michaels and of
applicant’s witness Robert F. Glaser; and the depositions
upon written questions, taken by applicant, of
representatives of Chesebrough-Pond’s USA (Beth Posner
Rothman), KMART (Jerry Tschura), Wonder Laboratories-
Tennessee (Harry Hester), Carewell Industries (Ralph
D’Angelo) and Oralgiene USA (Steven Kofsky). In addition,
opposer has submitted, under a notice of reliance, status
and title copies of its pleaded registrations, as follows:
Mark Goods
Toothbrushes3
Dental floss dispensers and
dental floss4
Toothbrushes5
ORAL-B
Topical fluoride gels for
application to the teeth,
medicated mouthrinse
preparations6

3 Registration No. 547,130, issued August 26, 1951; Section 8
affidavit accepted; Section 15 affidavit received; renewed twice.
4 Registration No. 1,106,587, issued November 21, 1978; Section
8 affidavit accepted; Section 15 affidavit received; renewed.
5 Registration No. 1,197,304, issued June 8, 1982; Section 8
affidavit accepted; Section 15 affidavit received.
6 Registration No.1,501,858, issued August 30, 1988; Section 8
affidavit accepted; Section 15 affidavit received.
Opposition No. 99,522
4
ORAL-B
Dental floss and trays for
topical application of
fluoride compositions and
other preparations to the
teeth7
ORAL-B Toothpaste and dental
prophylaxis preparation8
Dentifrice; dental
prophylaxis preparations—
namely, non-medicated
mouthwash; medicated mouth
rinse preparation, topical
fluoride gels for application
to the teeth, dental amalgam;
dental floss, disposable
trays for topical application
of dental medications;
toothbrushes, denture
brushes, interdental brushes9
Applicant has submitted, under a notice of reliance,
various advertisements for the “Mentadent Oral Care
Brush”;10 copies of various third-party registrations for
marks containing the word ORAL, e.g., ORAL PURE for, inter
alia, toothbrushes; and dictionary definitions of the word
“oral.”
The parties have fully briefed the case; an oral
hearing was not requested.

7 Registration No. 1,502,069, issued August 30, 1988; Section 8
affidavit accepted; Section 15 affidavit received.
8 Registration No. 1,502,752, issued September 6, 1988; Section
8 affidavit accepted; Section 15 affidavit received.
9 Registration No. 1,608,762, issued August 7, 1990; Section 8
affidavit accepted; Section 15 affidavit received.
10 Although applicant refers to most of these advertisements as
being for the “Mentadent Oral Brush,” the phrase actually used
contains the word “Care.”
Opposition No. 99,522
5
The record shows that Oral-B Laboratories is a division
of Gillette Canada, the opposer herein, and that it
manufactures and sells various types of oral health and oral
care products. Hereafter, we will use the terms “opposer”
and “Oral-B Laboratories” interchangeably. Opposer’s
witness Alan Michaels testified that to his personal
knowledge ORAL-B has been used since 1971 as a trademark for
opposer’s products, including toothbrushes.11 In connection
with toothbrushes, opposer generally uses ORAL-B with
another trademark, such as ORAL-B INDICATOR, ORAL-B
ADVANTAGE, ORAL-B GRIPPER.
At retail, opposer sells its ORAL-B toothbrushes in all
types of food stores, drugstores and mass merchandisers. It
has 100% distribution of its toothbrushes in drugstores and
mass merchandisers, and 97% in the food trade, i.e., ORAL-B
toothbrushes are sold in the stores that do 97% of the
volume of toothbrushes in the food trade.12 The brushes are

11 Most of the evidence regarding opposer’s use of its ORAL-B
trademark, and sales and advertising of its products, comes from
Mr. Michael’s testimony. In its brief, applicant has raised
concerns about some of Mr. Michael’s testimony, specifically
relating to his opinions as to likelihood of confusion in view of
what applicant characterizes as inconsistencies and evasiveness
in terms of Mr. Michael’s knowledge of third-party uses of the
term “oral.” We are satisfied that the factual information
indicated in our opinion is accurate (and, indeed, applicant does
not take issue with it). As for Mr. Michael’s opinions as to
likelihood of confusion, they have minimal value, since it is our
role to determine, as a legal conclusion, whether confusion is
likely.
12 Although much of the information regarding opposer’s sales and
advertising was submitted under seal, opposer recited this
information in its brief, which was not marked confidential.
Opposition No. 99,522
6
sold in every state in the country, and range in price from
about $1.60 to $3.00.
Opposer also sells and distributes its ORAL-B
toothbrushes to the dental profession, and dentists and
hygienists in turn distribute the brushes to patients at no
charge. From 50,000 to 52,000 dental offices, out of
100,000 offices in the United States, buy ORAL-B brushes.
Opposer’s ORAL-B toothbrushes rank Number 1 in retail
sales, with a 27% market share. Sales are also ranked
Number 1 for dental offices, with a 35% market share. In
1996 sales of ORAL-B toothbrushes amounted to $160 million,
the bulk of which represented retail sales.
Opposer advertises its ORAL-B toothbrushes in the free
standing inserts found in Sunday newspapers, through cable
and broadcast television commercials, in print ads directed
to consumers and, for dental professionals, in trade

Accordingly, we see no reason not to refer to this information in
our opinion. Further, as a general comment, it appears to us
that much of the material that has been filed under seal is not
actually confidential information. For example, whenever any
confidential material appears on a page of the transcript of Mr.
Michael’s testimony, the entire page has been filed under seal,
even though non-confidential material also appears on that page.
It is the better practice, when submitting a page of a transcript
under seal, to also submit for the public record the page with
only the specific confidential portions redacted. Similarly,
opposer has filed under seal exhibits 13 and 14, which include
certain promotional materials including “consumer offers that
have been placed either at retail or advertised through Sunday
supplements.” Michaels, p. 53. Because Board proceedings are
open to the public, parties should take care in designating only
materials which truly contain confidential information as
confidential.
Opposition No. 99,522
7
magazines, through direct mail and at dental conventions.
Mr. Michaels testified that, in the five-year period
preceding his testimony in January 1997, opposer had spent
$47 million on mass media advertising, and in 1996 spent $12
million on television and print advertising. Television
commercials for ORAL-B brushes have aired on the “Today” and
“Tonight” shows, as well as soap operas. Opposer also has
done sporadic radio advertising.
Applicant markets oral care products, including
toothbrushes and accessories. It sells them primarily to
the secondary marketplace, e.g., off-price stores, dollar
stores, and close-out retailers. It began using the mark
ORAL COMPARE on toothbrushes in October 1994, and has made
continuous sales since that time of approximately 5 million
brushes per year, at an average retail price of $1.00 or
below.
The mark is used on four different styles of
toothbrushes, and the original packaging of those brushes
each includes a label with the notation, as appropriate,
“Compare to Aquafresh Flex,” “Compare to Crest Complete,”
“Compare to Colgate Plus” and “Compare to Oral-B.” These
labels, in which COMPARE TO is shown on one line, above the
third-party trademarks which appear in somewhat smaller
letters, appear in the middle part of the packing, on the
blister pack portion (as opposed to the mark ORAL COMPARE,
Opposition No. 99,522
8
which appears on the cardboard base of the packaging, above
the part where the plastic blister is affixed, and above the
top of the toothbrush). This packaging was subsequently
changed and the “Compare To” label does not appear on new
packaging.
Mr. Glaser, applicant’s president, testified that the
message of the trademark is that consumers should make a
price comparison with other toothbrushes.
Priority is not in issue in view of opposer’s pleaded
registrations, which are of record. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, the evidence shows that opposer
began using its various ORAL-B marks for toothbrushes prior
to applicant’s first use.
We turn next to a consideration of the issue of
likelihood of confusion. Our determination 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).
Having reviewed all of the evidence in light of the duPont
factors, we find that confusion is likely.
The parties’ goods are identical: toothbrushes. As
such, they must be deemed to be sold in the same channels of
trade, and to the same classes of consumers. Applicant
points out that its goods are sold in the secondary
Opposition No. 99,522
9
marketplace, and that the vendors of its products are
different from opposer’s. However, because there is no
limitation as to the channels of trade in either applicant’s
application or opposer’s registrations, we must assume that
the parties’ goods are sold in the same channels of trade,
which would include grocery stores and drugstores. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, NA,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (the question
of likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or services
recited in applicant’s application vis-à-vis the goods
and/or services recited in an opposer’s registration, rather
than what the evidence shows the goods and/or services to
be).
Moreover, the evidence shows that toothbrushes are
impulse purchases, and that the parties’ toothbrushes are
inexpensive. As a result, their purchase would not be the
subject of a great deal of thought or analysis.
Further, Mr. Michaels has testified that toothbrushes
are often offered for sale on racks, with different brands
displayed next to each other. He also stated that it is
difficult to keep the brands of brushes in their correct
segments because consumers tend to pick up a brush and then
put it back on a different peg.
Opposition No. 99,522
10
Opposer has demonstrated that its ORAL-B mark is
famous, as shown by the sales and advertising figures
recited above. Nor does applicant contest this fame. Fame,
of course, plays a dominant role in cases featuring a famous
or strong mark. Famous or strong marks enjoy a wide
latitude of legal protection. As the Court said in Kenner
Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992), “the Lanham Act’s tolerance
for similarity between competing marks varies inversely with
the fame of the prior mark.”
With these points in mind, we turn to a consideration
of the parties’ marks, keeping in mind as well 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).
Both parties have argued that one element of the marks
should be given greater weight than the remaining element,
although they differ as to which element should be
considered dominant. Applicant asserts, essentially, that
the term ORAL is suggestive, and that the other elements—the
“-B” in opposer’s mark, and the word “COMPARE” in
applicant’s mark, are sufficient to distinguish the marks.
Opposition No. 99,522
11
There is no question that ORAL has a suggestive
significance for dental hygiene products such as
toothbrushes. The dictionary definitions13 and the third-
party registrations for marks containing the term ORAL,14
submitted by applicant, demonstrate this. Even opposer’s
witness, Alan Michaels, has described opposer as a
manufacturer and seller of “oral health and oral care
products.” Michaels, p. 6.
Opposer, on the other hand, argues that COMPARE in
applicant’s mark is used descriptively, and it is the word
ORAL which must be viewed as the dominant element in
applicant’s mark. We agree that, as used in ORAL COMPARE,
COMPARE is not an arbitrary term, but has a suggestive
connotation. As applicant’s president testified, the
message of its mark is “the obvious,” which he contends is
“to make a comparison and it’s usually a comparison of
price.” Glaser, p. 22.
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

13 See The American Heritage Dictionary, 2d coll. ed. © 1991, in
which “Oral” is defined as “of or pertaining to the mouth: oral
hygiene”.
14 The third-party registrations covering toothbrushes are for
the marks ORAL PURE, ORALGIENE, MEDORAL and ORALDENT (expired
1998). Third-party registrations for other dental hygiene
products include ORALGARD and ORALGUARD for mouthwash and
ORALGARD for dentifrice (same registrant), ORALIEF for medicated
mouth rinse and ORA-CARE for medicated mouth wash.
Opposition No. 99,522
12
compared in their entireties, giving weight to all of the
elements.
Although there are obvious differences in the marks
because of the second elements of each, given the other
factors we have discussed above, we find that these
differences are not sufficient to avoid the likelihood of
confusion. In particular, because of the fame of opposer’s
ORAL-B mark; the identical goods involved; the impulsive
nature of the purchase of toothbrushes and the limited
thought that would go into such purchases; and the manner in
which toothbrushes are sold, with different brands located
side-by-side, and with the tendency for the brand segments
to be commingled, consumers are likely to be confused as to
source by applicant’s use of the ORAL COMPARE mark.
Consumers may, because of the similarity in structure
of the parties’ marks, misread applicant’s ORAL COMPARE
mark. Both marks begin with the word ORAL, followed by the
word COMPARE in applicant’s mark, and a hyphen and the
capital letter “B” in opposer’s mark. The impression
created by the hyphen and capital letter is that ORAL is the
first word of a two word mark.15

15 We are not persuaded by applicant’s argument that the marks
are different in appearance because the term ORAL-B in opposer’s
mark appears in white lettering on a blue cartouche, while
applicant’s mark is shown in block lettering on a colored field
over a black background. There are several problems with
applicant’s position, most notably that applicant has applied for
its mark as a typed drawing, and its rights in any registration
Opposition No. 99,522
13
Even if consumers note the differences between the
marks, they are likely to assume, because of the aforesaid
factors, that ORAL COMPARE is a variant of opposer’s ORAL-B
trademark, perhaps used for a less-expensive of related line
of ORAL-B brushes, rather than an indicator of a separate
source.16
In reaching our conclusion we have considered
applicant’s evidence of third-party use of “Oral” marks.
Third-party use of a particular term can be shown to
demonstrate that the public is so used to seeing the term
used in different trademarks that they distinguish the marks
by their other elements. However, in this case the evidence
of third-party use of “Oral” for toothbrushes is not
sufficient for us to conclude that purchasers would look to
the “-B” in opposer’s mark and to COMPARE in applicant’s
mark, and distinguish them thereby.
Of the three asserted third-party uses, the evidence
shows that K-Mart Stores had used the trademark ORAL PURE

that might issue are not limited to use of the mark in block
lettering on a colored field over a black background. Further,
opposer’s registrations are not solely for ORAL-B on a blue
cartouche background; aside from the fact that the registrations
which include the background design do not limit it to the color
blue, opposer also owns a registration for ORAL-B per se for
toothbrushes, in which the mark is depicted in a plain upper-and-
lower type format.
16 We have limited our finding of likelihood of confusion to
consumers. Dental professionals are not likely to be confused
because they do not buy toothbrushes in the same way as
consumers. That is, they order toothbrushes in bulk, so these
are not impulse or casual purchases, and they often deal directly
with opposer’s sales representatives or dealers.
Opposition No. 99,522
14
for toothbrushes beginning in November 1991, but that at the
time of Mr. Tschura’s deposition in July 1997, the company
had phased out its use of the mark, although some inventory
may have been available in some of its stores.
Chesebrough-Pond’s USA uses the phrase “Oral Care
Brush” in connection with its MENTADENT toothbrushes.
However, we conclude, after reviewing the advertisements and
packaging for the brushes, that the phrase would be
perceived as a description, rather than a trademark, for the
toothbrush.
The only evidence of on-going, relatively significant
trademark use of an “Oral” mark for toothbrushes is that of
ORALGIENE, and even that use is for a different category of
toothbrush than the toothbrushes on which the parties herein
use their marks. The record shows that Oralgiene USA has
been selling electric toothbrushes under the mark ORALGIENE
since 1992, and that, up until 1997, the time of the
witness’s deposition, approximately 85,000 brushes had been
sold nationally.
We note that applicant has also submitted evidence of
third-party use of ORABASE BABY for a teething gel, ORAJEL
for a toothache pain reliever, and ORALBALANCE for a saliva
substitute. Because of the differences in the goods, and
the term ORA, as opposed to ORAL, in the first two marks,
these third-party uses are not persuasive that consumers
Opposition No. 99,522
15
would distinguish between ORAL-B and ORAL COMPARE for use on
toothbrushes.17
We have also considered the lack of evidence of any
actual confusion. At the time testimony was taken, there
was contemporaneous use of the marks for only three years.
More importantly, evidence of actual confusion is
notoriously difficult to obtain. That would be particularly
true in the case of toothbrushes, in view of the low cost of
the products.
We do not mean to suggest by our decision that opposer
has exclusive rights to the term ORAL for toothbrushes, and
that any mark containing the element ORAL, used on
toothbrushes, would be likely to cause confusion with
opposer’s mark. We confess that this is a close case. In
contrast to Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992), in which this Board found likelihood of
confusion between ORAL-B and ORAL-ANGLE, both used for
toothbrushes, the second word in applicant’s mark, COMPARE,
is not a descriptive term for toothbrushes. Nevertheless,
it is well-established that one who adopts a mark similar to
the mark of another for the same or closely related goods or
services does so at his own peril, and any doubt as to

17 Applicant has, in addition to the third-party uses noted
above, referred in its brief to third-party registrations as
indicating “widespread and unfettered use of ‘oral’ in the names
of competing and related products.” p. 11. However, third-party
registrations are not evidence that the marks are in use.
Opposition No. 99,522
16
likelihood of confusion must be resolved against the
newcomer and in favor of the prior user or registrant. W.R.
Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ
308 (TTAB 1976). Accordingly, we have resolved our doubts
in favor of opposer.
Decision: The opposition is sustained.
E. J. Seeherman
C. E. Walters
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board