PDG P.A.

Trademark Trial and Appeal Board

Sep 8, 2020

88009400 (T.T.A.B. Sep. 8, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re PDG P.A.
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Serial No. 88009400
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Garrett M. Weber of Moss & Barnett PA,
for PDG P.A.
Marcya N. Betts, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Wellington, Goodman and Dunn,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
PDG P.A. (“Applicant”) seeks registration on the Principal Register of the mark
PARK DENTAL (in standard characters, DENTAL disclaimed) for “Dental Services”
in International Class 44.1

1 Application Serial No. 88009400 was filed on June 21, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as December 31, 1992.

Page references to the application record refer to the online database page numbers of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal refer to the Board’s TTABVUE docket system.
Serial No. 88009400
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark PARK COSMETIC DENTAL2 for
“general and cosmetic dentistry” in Class 44 (typed drawing,3 COSMETIC DENTAL
disclaimed).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Applicant then filed a request for remand
to introduce new evidence which was granted. After remand, the appeal resumed.
The appeal is fully briefed. We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which

2 Registration No. 2792553, renewed.
3 A mark depicted as a typed drawing is the legal equivalent of a standard character mark.
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing
Trademark Manual of Examining Procedure § 807.03(i)).
Serial No. 88009400
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there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of 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
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”). These and other factors are discussed
below.
A. Similarity or Dissimilarity of the Services, Channels of Trade and
Classes of Purchasers
We first consider the second and third DuPont factors. The second DuPont factor
“considers ‘[t]he similarity or dissimilarity and nature of the goods or services as
described in an application or registration,’” while the third DuPont factor considers
“the similarity or dissimilarity of established, likely-to-continue trade channels.” In
re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018)
(quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the
identifications of services in the application and the cited registration. Id.; Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
63 (Fed. Cir. 2014).
Serial No. 88009400
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Applicant’s services are “dental services.” Registrant’s services are “general and
cosmetic dentistry.” Applicant’s recitation of services is broad enough to encompass
general and cosmetic dentistry.4 Therefore, the parties’ services are legally identical.
Neither identification includes any limitations with respect to channels of trade ,
and the class of purchasers would be the general public seeking dentistry services.
Because the services described in the application are legally identical to the
services listed in the cited registration, and there are no restrictions as to trade
channels or classes of purchasers in either Applicant’s or Registrant’s identification
of services, we must presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same). We thus find, at a minimum,
that the channels of trade and classes of purchasers overlap.
Accordingly, the DuPont factors of similarity between the services, trade channels
and classes of purchasers strongly weigh in favor of a finding of a likelihood of
confusion.

4 The Examining Attorney also submitted third-party registrations that include among other
services, “dental services, namely general dentistry and cosmetic dentistry” or separately
identify dental services, general dentistry services and cosmetic dentistry services. May 7,
2019 Office Action at TSDR 2-27.
Serial No. 88009400
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B. Similarity or Dissimilarity of the Marks and Strength of the Mark
We next turn to the first DuPont factor, which requires us to determine the
similarity or dissimilarity of the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial impression. Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). The test, under the first DuPont factor, is not whether
the marks can be distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the services offered under the respective
marks is likely to result.
Furthermore, although the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more significant than another,
and it is not improper to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Finally, in cases where Applicant’s services are identical
or legally identical to Registrant’s services, the degree of similarity between the
marks which is required to support a finding of likelihood of confusion is less than it
would be if the services were not identical or legally identical. Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant’s mark is PARK DENTAL with “dental” disclaimed, and Registrant’s
mark is PARK COSMETIC DENTAL with “cosmetic dental” disclaimed.
Serial No. 88009400
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The marks are similar in sound and appearance to the extent that they both
contain the identical terms PARK and DENTAL. The point of dissimilarity is the
additional term COSMETIC in the middle of Registrant’s mark.
The lead element PARK in each of the marks has a position of prominence, as the
first word in each mark, and is the dominant element in each mark because DENTAL
and COSMETIC DENTAL in Applicant’s and Registrant’s respective marks has been
disclaimed. See, e.g., Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the
marks’ initial two words is particularly significant because consumers typically notice
those words first.”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (Disclaimed matter generally will not constitute the dominant
part of a mark) (quoting In re Nat’l Data Corp., 224 USPQ at 752); Century 21 Real
Estate, 23 USPQ2d at 1700 (stating that, “upon encountering each mark, consumers
must first notice this identical lead word”); Presto Products Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (it is the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and be remembered by the
purchaser).
As stated, the additional disclaimed term COSMETIC in Registrant’s mark is a
point of difference between the two marks. Nonetheless, likelihood of confusion is not
necessarily avoided between otherwise confusingly similar marks merely by the
addition of descriptive or distinctive matter. See, e.g., In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB finding that
applicant’s mark ML is likely to be perceived as a shortened version of registrant’s
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mark ML MARK LEES (stylized) when used on the same or closely related skin-care
products).
Applicant argues that the marks have different connotations and commercial
impressions because PARK in Registrant’s mark has a connotation of a surname,
referencing the dentist that owns the business, Dr. Park, while PARK in Applicant’s
mark is arbitrary and not named after any particular dentist.
However, Applicant’s argument is premised on Registrant’s actual use of the cited
mark, not on the identification of services in the cited registration. These arguments
are unpersuasive because we must consider the possible meaning of PARK in the
cited mark in the context of the services identified in the cited registration, not in the
context of the Registrant’s current actual use of the registered mark. In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (in considering first
DuPont factor, Board properly determined that marks had similar connotations on
the basis of the services identified in the application and cited registration, rather
than on the basis of extrinsic evidence of actual use).
We find that, regardless of whether PARK is understood as a surname, or an
arbitrary term, when considered in connection with the services, the connotation of
PARK in the two marks is the same. We find PARK DENTAL and PARK COSMETIC
DENTAL have a similar connotation and commercial impression.
Applicant also argues that the marks can coexist because there are numerous
other third-party registrations with variations that include the terms PARK and
DENTAL, for dentistry-related services, making the cited mark diluted. Applicant
Serial No. 88009400
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has submitted registrations for P PARKLANE DENTAL and two cancelled
registrations, HIGH PARK DENTAL GROUP and PARK DENTAL CARE, to support
this argument.5 In its April 24, 2020 Request for Remand, 12 TTABVUE, Applicant
referenced “a new registration for LAKE PARK DENTAL, No. 6,025,985, issued on
March 31, 2020.” The Examining Attorney objected to this evidence as not being of
record, because Applicant merely referenced the registration rather than submitting
an electronic copy.6 However, because the Examining Attorney did go on to address
the evidence, we also consider it. May 29, 2020 Denial of Reconsideration at 1.
“[T]hird-party registrations are relevant evidence of the inherent or conceptual
strength of a mark or term because they are probative of how terms are used in
connection with the goods or services identified in the registrations.” In re Morinaga
Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016).
However, the third-party registration evidence does not establish conceptual
weakness of PARK COSMETIC DENTAL. Both P PARKLANE DENTAL and LAKE
PARK DENTAL have different commercial impressions than the cited mark. In
addition, two registrations is not a significant number to show conceptual weakness
and fall well short of the “voluminous” and “extensive” evidence presented in Jack

5 A cancelled registration is evidence only of the fact that it issued. In re Brown-Forman
Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006). Applicant also argues that cancelled
registrations for HIGH PARK DENTAL GROUP and PARK DENTAL CARE are evidence of
prior coexistence of similar marks with Registrant’s mark on the register. However, the prior
coexistence of a cancelled registrations with the cited mark, even if confusingly similar, does
not justify registration of yet another confusing mark. See AMF Inc. v. American Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
6 As the Examining Attorney correctly points out, this registration was not properly made of
record.
Serial No. 88009400
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Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen
relevant third-party uses or registrations of record), or of that in Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1673 n.1 (Fed. Cir. 2015)
(at least twenty-six relevant third-party uses or registrations of record).
When we compare PARK DENTAL and Registrant’s mark PARK COSMETIC
DENTAL in their entireties, and give greater weight to the dominant elements, we
conclude that the marks in their entireties are more similar than dissimilar.
The first DuPont factor favors a finding of likelihood of confusion.
C. Conclusion
Overall, we find that in view of the legally identical services, trade channels and
classes of customers and the similarity of the marks, confusion is likely between
Applicant’s mark PARK DENTAL mark and Registrant’s PARK COSMETIC
DENTAL mark.
Decision: The refusal to register Applicant’s mark PARK DENTAL is affirmed.