UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/604636
APPLICANT: Community Dental Services, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SMILECARE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 065334-0026
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/604636
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2403813. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §§1207.01(b) et seq.
In this case, the marks are essentially identical, namely SMILECARE (applicant) and
SMILE CARE (registrant).
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
The applicant’s identification contains the following goods: “Dental polish; medicated dental rinse; medicated dental floss; vitamins for oral health,” in International Class 5. The cited registration lists the following goods: “Latex and synthetic gloves for dental use,” in International Class 10.
The goods are related in that both are dental supplies. Dentists will encounter trademarks for examination gloves and trademarks for polish and floss together during their work. Dentists and hygienists use dental gloves while they are using polish, rinse, or floss on their patients. The attached NEXIS[MED1] â evidence indicates that gloves and goods such as toothpaste are used together in the dental field and that such goods can emanate from one source.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Michelle E. Dubois/
Trademark Examining Attorney
Law Office 111
(571) 272-5887 (phone)
(571) 273-5887 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
108B8C
Print Request: Selected Document(s): 12,59,119
Time of Request: March 04, 2005 04:21 PM EST
Number of Lines: 109
Job Number: 1861:34649879
Client ID/Project Name:
Research Information:
News, All (English, Full Text)
gloves w/s (fluoride or floss or rinse or toothpaste) and dentist!
Send to: DUBOIS, MICHELLE
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VA 22202-4600
12 of 133 DOCUMENTS
59 of 133 DOCUMENTS
Copyright 2002 Bell & Howell Information and Learning
Business Dateline
Copyright 2002 St. Louis Region Commerce and Growth Association
St. Louis Commerce Magazine
September 1, 2002
SECTION: Pg. 46; CODEN: SLCOAN
B &H-ACC-NO: 160248881
DOC-REF-NO: SLCO-2061-53
LENGTH: 214 words
HEADLINE: ST. LOUIS REGIONAL TECHNOLOGY TOP 50: Advanced Manufacturing Companies, YOUNG INNOVATIONS, INC.
AUTHOR-NAME: Anonymous
BODY:
...long way. The company's product offering includes disposable and metal prophy angles, prophy cups and brushes, panoramic x-ray machines, dental hand pieces (drills), orthodontic toothbrushes, flavored examination gloves, children's toothbrushes and toothpastes, moisture control and infection control products.
In 2001, Young Innovations reached almost $64 million in sales, an increase of approximately 24 percent from 2000. The company expects to achieve $72 ...
SUBJECT:
DENTAL EQUIPMENT & SUPPLIES MFG (90%); MEDICAL EQUIPMENT & SUPPLIES MFG (90%); DENTISTRY (88%); Ratings & rankings; Revenue; Dental care; Instrumentation industry
119 of 133 DOCUMENTS
Copyright 1997 The Press Enterprise Co.
THE BUSINESS PRESS/CALIFORNIA
January 13, 1997 Monday
SECTION: Pg. 15
LENGTH: 889 words
HEADLINE: Plak Smacker Inc.;
Scraping out a niche with dinosaur brushes and flavored gloves
BYLINE: Psyche Pascual - Staff Reporter, The Business Press/California
BODY:
...a unique vantage point on dental care.
For years, the former dental hygienist brushed around children's
braces, wondering whether there was a better way to deliver such
care. Would children be less fidgety if the gloves she wore tasted
good? What if she could get them to use flavored toothpaste?
Now that Tapocik's been at the helm of the Riverside business she
eventually dubbed Plak Smacker Inc. for 13 years, answers seem
obvious. Dentists are yukky. But flavor a toothpaste with bubble
gum? That's cool.
...south Riverside. Her customers include national chains like Wal-Mart
Stores, Longs Drug Stores and Albertson's Food & Drug Stores.
This decade, Plak Smacker has developed more than 50 products for
dentists and for home dental hygiene, including strawberry- and
bubble gum-flavored latex gloves, kid-friendly toothpaste, and a
dual-headed toothbrush for children with braces.
Plak Smacker recently expanded its product line for adults to
include a $ 12.95 battery-operated, vibrating flosser. Next stop is a ...
...specialist, Chris
Gallagher.
"(Children) love those cups, and the parents love the timer," she
said. Plak Smacker's toothbrushes are just one-third the price of
the product offered by the highest-priced competitor, she said.
Some dentists say the company's flavored gloves are popular among
children being fitted for braces.
"They make a tremendous difference. You work on kids and they go,
'Yuk, gloves,' " said Riverside dentist Dr. David Waldvogel.
Tapocik hopes Plak Smacker will generate between $ 20 million and
$ 25 million in sales each year for the next five years.
"I think I'm ...
SUBJECT:
COMPANY PROFILE; DENTISTRY DENTISTRY (90%); COSMETICS & TOILETRIES (89%); ORAL CARE PRODUCTS (89%); HEALTH & PERSONAL CARE STORES (65%); PHARMACIES & DRUG STORES (65%); RETAIL TRADE (65%);