To: | SMILEDIRECTCLUB, LLC (ipdocketing@foley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88268889 - SMILE DIRECT CLUB - 116515-0121 |
Sent: | 4/5/2019 5:15:31 PM |
Sent As: | ECOM128@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88268889
MARK: SMILE DIRECT CLUB
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SMILEDIRECTCLUB, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/5/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied for the mark SMILE DIRECT CLUB in standard characters for use in connection with “online non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; dental laboratory services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring non- downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plans” in International Class 42.
The mark in Registration No. 5324184 is SMILECLUB in standard characters for use in connection with “Online retail store services featuring dental, orthodontic and personal care products and services, dental equipment, orthodontic equipment, toothbrush ,toothpaste and floss; retail stores services featuring dental, orthodontic and personal care products and services, dental equipment, orthodontic equipment, toothbrush, toothpaste and floss in International Class 35; “Insurance services, namely, underwriting, issuance and administration of health and dental insurance; providing insurance information” in International Class 36; and “Providing a website featuring information for patients in the fields of dental health, dentistry and orthodontics; providing a website featuring information for healthcare, dental, dental health and orthodontic professionals in the fields of healthcare, dentistry, dental health and orthodontics; providing information in the fields of dental health, orthodontics, dentistry, dental equipment and orthodontic equipment” in International Class 44.
The mark in Registration No. 5707207 is for ISMILE DIRECT in standard characters for use in connection with a “Network for dentist offering discounted services, namely, dental services offered through a network of health care practice entities on a contract basis” in International Class 44, limited only to the following services in the applicant’s identification “dental services.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Again, the applicant’s applied-for mark is SMILE DIRECT CLUB in standard characters, whereas the mark in Registration No. 5324184 is SMILECLUB in standard characters and the mark in Registration No. 5707207 is ISMILE DIRECT in standard characters.
First, both registered marks and the mark in the application make no claim to stylization or design. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). In short, the comparison of the marks falls to their wording. In this respect, while the wording in the registration is unitary in appearance, its pronunciation would be that of two words, i.e., “SMILE CLUB.” Nonetheless, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Thus, the compound nature of the registered mark loses significance in this comparison.
Otherwise, both the applicant’s mark and the mark in Registration No. 5324184 share the terms “SMILE” and “CLUB”. The mark in Registration No. 5707207 shares the terms “SMILE” and “DIRECT” with the applicant’s mark. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In short, the compared marks share a significant amount of wording, which renders their appearance significantly similar.
Thus, as discussed previously, the compared marks of SMILE DIRECT CLUB and SMILECLUB, as well as DIRECT SMILE CLUB and ISMILE DIRECT, have similar appearances and dominant features, which render their commercial impressions the same. Therefore, the similar appearances, connotations, and commercial impressions of the marks render them confusingly similar.
Comparison of Services.
The applicant’s identification includes “online non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; dental laboratory services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring non-downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plans” in International Class 42.
Registration No. 5324184 identifies “Online retail store services featuring dental, orthodontic and personal care products and services, dental equipment, orthodontic equipment, toothbrush, toothpaste and floss; retail stores services featuring dental, orthodontic and personal care products and services, dental equipment, orthodontic equipment, toothbrush, toothpaste and floss in International Class 35; “Insurance services, namely, underwriting, issuance and administration of health and dental insurance; providing insurance information” in International Class 36; and “Providing a website featuring information for patients in the fields of dental health, dentistry and orthodontics; providing a website featuring information for healthcare, dental, dental health and orthodontic professionals in the fields of healthcare, dentistry, dental health and orthodontics; providing information in the fields of dental health, orthodontics, dentistry, dental equipment and orthodontic equipment” in International Class 44.
The services under Registration No. 5324184 complement those in the application, and both relate to dentistry/orthodontics. Whereas the application identifies, abridged here for purposes of explanation, online software for viewing models of human teeth, for depicting teeth and projected results of proposed treatment, and providing account details and information related to orthodontic treatment, the registrant similarly identifies, again abridged for explanation, online retail store services featuring dental and orthodontic products and services, dental and orthodontic equipment in Class 35; insurance services related dental insurance in Class 36; and a website featuring information in the fields of dentistry and orthodontics, as well as dental equipment and orthodontic equipment, the last of which presumably are used in dental/orthodontic treatment, in Class 44. Thus, the wordings of these identifications show overlapping fields of use and subject matters presented in the same fashion, online or via a website.
Further, the attached Internet evidence establishes that the same entity commonly provides the relevant services through the same trade channels, which are used by the same classes of consumers in the same fields of use. For instance, the website of greendentalalexandria.com offers information regarding general dental care and cosmetic dentistry, as well as digital imaging and non-downloadable videos, while noting the dentist’s use of in-office, digital imaging/modeling. Attachments 1-3. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In short, the services identified in the application are highly similar to the services in Registration No. 5324184, as both provide interested consumers online means to access information regarding treatment/healthcare in the fields of dentistry and orthodontics, the equipment anticipated or used in these fields for treatment, and personal information regarding their accounts and treatment. Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
As to Registration No. 5707207, the identification noted previously is for a network of dentists that provide discounted “dental services.” The application identifies, in part, “dental laboratory services.” Evidence shows that, in the industry, dental services are commonly provided under the same mark as dental laboratory services. For instance, providers such as drjackschwartz.com note the benefits of having an in-house dental laboratory when providing dental treatment. Attachments 4-7. Therefore, as it is common in the applicant’s industry for the same entity to provide the applicant’s services under the same mark as the registrant’s services the services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
For the above reasons, registration is refused pursuant to Section 2(d) of the Trademark Act.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IMPROPER CLASSIFICATION OF SERVICES
The applicant has applied for the mark SMILE DIRECT CLUB with stylization for use in connection with “online non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; dental laboratory services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring non- downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plans” in International Class 42.
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Jeffrey Oakes/
Jeffrey Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
(571) 272-8653
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.