Tuesday, April 23, 2019

TTAB Dismisses DENTISTRY DONE DIFFERENTLY Opposition: Failure to Prove Priority

The Board dismissed this opposition to registration of DENTISTRY DONE DIFFERENTLY for "dentist services" because Opposer Timber Dental failed to prove priority. Opposer claimed common law rights in the same phrase, but its proofs showed prior use of a different mark. Timber Dental LLC v. Tooth, LLC, Opposition No. 91234587 (April 12, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

In order to establish prior trademark rights, an opposer must show that its alleged mark is distinctive, inherently or otherwise. There was no allegation or evidence that DENTISTRY DONE DIFFERENTLY is not distinctive of  “dental services,” and so the Board found that "that while the mark is suggestive, on this record it appears to be inherently distinctive."

Applicant Tooth provided no evidence of use of the applied-for mark prior to its filing date of November 28, 2016, and so that was the earliest date on which it could rely. Opposer Timber's owner testified that opposer has used its alleged mark since 2014. However, the exhibits to his testimony showed use of the word-plus-design mark shown above, as well as the phrase FAMILY DENTISTRY DONE DIFFERENTLY, and not the phrase DENTISTRY DONE DIFFERENTLY alone.

This evidence does not establish use of the mark that Opposer pleads in its notice and argues on brief, DENTISTRY DONE DIFFERENTLY. Rather, . . . Opposer's mark includes at least the word "FAMILY" in the literal element of its mark, and most uses include TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY (and design).
* * *

As noted, the entire literal element contained in Opposer’s mark is TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY or FAMILY DENTISTRY DONE DIFFERENTLY. This is not the same as the mark pleaded, and sought to be proven on  brief, by Opposer. The mark pleaded by Opposer is simply DENTISTRY DONE DIFFERENTLY, which is a different mark.

The CAFC addressed the issue of what constitutes the "same mark" in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001):

A proposed mark is the "same mark" as previously-registered marks for the purpose of Trademark Rule 2.41(b) if it is the "legal equivalent" of such marks. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law subject to our de novo review. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). (emphasis added)

The Board found that the phrases actually used by Opposer Timber - which refer more specifically to "family dentistry" - do not engender the same commercial impression as the phrase DENTISTRY DONE DIFFERENTLY.

Opposer did not plead or otherwise assert prior rights to any mark other than DENTISTRY DONE DIFFERENTLY. "Given that this is not the mark for which Opposer has established use, Opposer has failed to prove its priority."

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Gee whiz! Why didn't opposer just rely on FAMILY DENTISTRY DONE DIFFERENTLY?

Text Copyright John L. Welch 2019.


At 10:58 AM, Blogger TM Guy said...

Agree with your comment, but this is also more proof that the Board can find any mark suggestive--if it wants to. This was a crapfest (see, "Applicant did not submit any evidence or testimony."), and the Board might not have wanted to throw the baby out with the bathwater and tell the opposer that its mark was descriptive too. But come on.

At 11:13 AM, Anonymous Anonymous said...

"There was no allegation or evidence that DENTISTRY DONE DIFFERENTLY is not distinctive of “dental services,” and so the Board found that "that while the mark is suggestive, on this record it appears to be inherently distinctive."

Are suggestive marks not inherently distinctive now?

At 8:32 AM, Anonymous Erik Pelton said...

In both In re Dial-A-Mattress Operating Corp. and Van Dyne-Crotty, Inc. v. Wear-Guard Corp. the Circuit Court did discuss issues related to "same mark" - but not as to pleading of a closely related or overlapping mark. The Board's result may be correct - pleadings are important - but I'm not certain the analysis/precedent was properly framed. Also, perhaps there was an argument that the issue (the related mark(s)) was tried by consent?


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