Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GILLETTE CANADA INC.
June 24, 1992
Hearing: April 14, 1992
Opposition No. 82,769 to application Serial No. 73/820,132 filed August 18, 1989.
Marie V. Driscoll and Douglas A Coblens (of Counsel) of Robin, Blecker, Daley & Driscoll; and Raymond J. De Vellis (of Counsel) of The Gillette Company for Gillette Canada Inc.
Richard C. Cooper of Price, Heneveld, Cooper, DeWitt & Litton for Ranir Corporation.
Opinion by Hohein
Applicant, Ranir Corporation, has filed an application to register the mark "ORAL-ANGLE" for "toothbrushes". [FN1]
Opposer, Gillette Canada Inc., dba Oral-B Laboratories, has opposed registration on the ground that applicant's mark, when applied to its goods, so resembles opposer's previously used trade name "ORAL-B" and various marks that consist of, include or are a variant of the designation "ORAL-B," which previously have been registered and/or used in connection with a line of preventive dentistry products encompassing such goods as "toothbrushes, denture brushes, interdental brush systems, dental floss, dental trays, toothpaste, oxygenating mouth rinse, fluoride rinse, topically applied gels, and dental amalgams," [FN2] as to be likely to cause confusion, mistake or deception. [FN3]
Applicant, in its answer, has essentially denied the allegations set forth in the notice of opposition and has further pleaded that "[t]he term ORAL as applied to oral care products such as toothbrushes for use in the oral cavity is merely descriptive".
The record includes the pleadings; the file of the involved application; and the testimony, with exhibits, of Alan A. Michaels, the general manager of the "Professional Products Division" of opposer. [FN4] In addition, opposer has submitted Mr. Michaels' stipulated testimony, with exhibits, which serves to supplement his trial deposition and has furnished the stipulated testimony, with exhibits, of Raymond J. De Vellis, an attorney and the "Director of Trademarks of The Gillette Company," [FN5] which relates to opposer's ownership of its seven pleaded registrations and its ownership of an additional registration [FN6] that issued after the May 21, 1990 commencement of this proceeding. [FN7] Applicant, although it did not take any testimony, has made of record, by notices of reliance, dictionary definitions of the word "oral" [FN8] and opposer's answers to certain of applicant's interrogatories. [FN9] Both parties have filed briefs and were represented at the oral hearing held at the Board.
Priority of use is not in issue since opposer has made of record copies of the registrations upon which it relies and has established that the registrations are in force and are owned by opposer. [FN10] In any event, applicant does not dispute opposer's priority in its brief, and the record, as detailed below, establishes opposer's prior use of its registered marks. The record also demonstrates, and applicant in its brief does not contend otherwise, that opposer's various products are identical in part and are otherwise closely related to applicant's goods, given the absence of any specific limitations in either the registrations or the involved application. The parties' goods consequently must be considered suitable for sale through the same channels of trade to the same classes of purchasers. Therefore, the only issue to be determined is whether applicant's "ORAL-ANGLE" mark, when applied to toothbrushes, so resembles any or all of opposer's "ORAL-B" marks for identical and closely related dental care products as to be likely to cause confusion, mistake or deception.
*2 According to the record, opposer is in the business of developing, selling and promoting dental care products, such as toothbrushes, toothpaste and dental floss, to both the dental profession and to consumers through retail outlets. Oral-B Laboratories, as it has been known in the trade since at least as early as September 1971, is currently a division of opposer, which purchased the business from Cooper Laboratories, Inc. in mid-1984. The business originated a few years after World War II when a periodontist in California named Robert Hutson developed a new type of toothbrush which was marketed under the brand name "ORAL B". Ownership of the business subsequently changed hands several times before it ultimately was acquired by opposer and the mark, in various styles, changed over the years to include a hyphen.
Opposer uses its "ORAL-B" marks on all of its products and utilizes "ORAL-B" as part of its trade name on its business cards and literature. Typically, the "ORAL-B" marks appear on packaging for opposer's goods and, in the case of various brushes, are applied to the handles of the products. Although opposer sells a variety of dental care products, toothbrushes account for the vast majority of its sales. Opposer sells its toothbrushes at retail through food stores, mass merchandisers and drug stores, with distribution of such goods in over 90 percent of all such outlets. In essence, wherever toothbrushes are sold to consumers, opposer's toothbrushes may usually be found.
At the retail level, most toothbrushes are displayed for sale in racks which are either supplied by manufacturers or furnished by individual retailers. Opposer's witness, Mr. Michaels, testified in particular that:
The most common type of a rack is what we call an egg crate rack, where there are single slots for each toothbrush. All of the different brands are usually included in that one rack. And they are usually segmented by brands, although they get mixed up quite often. When the consumers go to make a choice, they will take one brush out and put it back in the wrong space. In many cases you have a mixture of a bunch of different brands on the shelf in the same place.
The approximate retail cost of an "ORAL-B" toothbrush is in the range of $2.50 to $3.00. Opposer, through a series of dealers, also sells its "ORAL-B" toothbrush products to dentists and other dental professionals. Dental offices purchase opposer's products to give to their patients.
Opposer advertises its goods to the general public in print media and on television. Opposer further promotes its products through the use of consumer coupons and refund programs. While opposer also advertises its goods to the dental profession in professional journals and through the use of brochures, direct mail offers and free samples, the bulk of its advertising and promotional outlays is spent on that directed to the consumer trade.
In terms of volume and market share, the "ORAL-B" brand is the largest selling toothbrush in the United States with respect to sales both to the consumer and the dental profession. Opposer has enjoyed its position as the number-one seller of such goods to the consumer since 1978 and has been the leading seller to the dental profession since before 1979. Although its exact sales figures are the subject of a stipulated protective order and thus are confidential, it suffices to say that opposer's total sales have been and remain substantial, with the amount thereof increasing annually. A substantial majority of such sales, which quadrupled during the period from 1982 to 1990, reflects toothbrush sales.
*3 Opposer offers a variety of sizes and styles of toothbrushes under its "ORAL-B" marks. In particular, opposer added a toothbrush with an angled handle or neck to its product line in September 1981. The brush, marketed as the "Oral-B Right Angle," was sold through 1986, when a new style of angled brush, designated as the "Oral-B Ultra Right Angle," was introduced as part of opposer's "Ultra" series of toothbrushes. Eventually, opposer converted all of its styles of toothbrushes, both straight-handled as well as angled, to the "Ultra" design in 1990. At that time, which was subsequent to applicant's use of its "ORAL-ANGLE" mark, opposer decided to drop the term "Right Angle" and to use just the term "Angle" to designate those of its "ORAL-B" toothbrushes which feature an angled neck or handle.
Opposer's promotional activities for its angled toothbrushes, such as refund offers and buy-one-get-one-free type promotions, are similar to those used in the marketing of its straight-handled brushes. Opposer has also manufactured angled toothbrushes on a private label basis for others and its competitors in the trade likewise have used the terms "angled" or "angle" on their product packaging to describe the angled handle or neck feature of their goods. The angled toothbrush market, which was originated by E.R. Squibb & Sons, Inc. and currently includes Johnson & Johnson as a major competitor of opposer, presently accounts for between 20 and 30 percent of all toothbrush sales.
While applicant, as previously mentioned, did not take testimony, opposer's witness testified as to his familiarity with applicant and its products. Specifically, Mr. Michaels stated that over a period of years in the mid-1980s, opposer received its supply of dental floss and flossing products, bearing opposer's "ORAL-B" marks, from applicant. Mr. Michaels further stated that applicant's products, like opposer's, are sold at retail through food, drug and mass-merchandiser accounts, although he indicated that he did not know the levels of distribution or sales volume of applicant's products. In addition, an advertisement by applicant (Exhibit 35) for its private label toothbrushes, including its "Oral Angle" brushes, which appeared in the June 1990 issue of Private Label Product News, contains the following statement with respect to applicant and its goods: "The leading manufacturer of Private Label Dental Floss now introduces a full line of PRIVATE LABEL TOOTHBRUSHES". [FN11]
On cross-examination, opposer's witness reaffirmed that the term "angled" is used by others in the toothbrush field to describe an angled product and that such term, as well as the word "angle," is generic for toothbrushes with an angled handle. Mr. Michaels also stated that the phrase "oral health market" has been used generically to refer to the market segment for opposer's goods and that such goods, as a product category, have been variously described as "oral health products," "oral care products" and "oral hygiene" products.
*4 However, as to whether the word "oral" alone is descriptive or generic, when applied to toothbrushes, Mr. Michaels testified that:
Q. How about the term "oral," in terms of toothbrushes or other oral care products, is the term "oral" a general descriptive term?
You may answer it, if you can.
A. Well, I don't know of any cases where the term "oral" is used in conjunction with a toothbrush as a trademark other than Oral-B.
I think Oral-B is a trademark[.] "Oral" obviously is used to describe something that goes in the mouth, so that could relate to a number of any type of products. But I think in this particular case "oral" and "toothbrush" is synonymous with Oral-B, in this particular category.
Q. The category of toothbrush, the term "oral" is not generally descriptive of those type of products?
A. It depends on how you use it. If you are using "oral" something as a trademark, then obviously it is going to be confused with Oral-B.
When pressed by counsel for applicant, Mr. Michaels further testified that:
Q. I would like an answer to that specific question. I think we heard your opinions in relation to "oral" as a trademark.
Now I would like to know your opinion as to "oral" by itself as being a generally descriptive term.
MS. DRISCOLL: You can answer it again, if you wish.
A. I guess my answer is the same as the one before. If it is used in copy to describe in a sentence, to describe the oral cavity or something, obviously it is used. But if it is being used in conjunction with a trademark, or as part of a trademark, then to me it is very confusing with Oral-B. When people think of "oral" as a trademark, they think of Oral-B. Especially in the toothbrush category where we have--we have market share leadership in both the consumer end and in the professional end.
Mr. Michaels also indicated, in relation to the above, that he was not aware of or familiar with any third-party use of the term "oral" as part of either a trademark for, or a trade name of a company in the field of, oral or dental care products.
Applicant argues that contemporaneous use of the parties' marks for their respective goods is not likely to cause confusion. Specifically, applicant contends that since it has been established that the word "oral" means "related to the mouth" and it has been shown that the term "angle" designates a type of toothbrush, its "ORAL-ANGLE" mark for toothbrushes is not confusingly similar to opposer's "ORAL-B" marks for toothbrushes and other oral care items because the only shared aspect of the respective marks is the descriptive word "oral". Thus, contrary to opposer's argument that the term "oral" is the dominant feature of the parties' marks, applicant maintains that "[s]uch a descriptive/generic word is not capable of forming the dominant part of a mark, and indeed, '... it should be given little weight in determining whether these marks are confusingly similar,' " citing Lauritzen & Co., Inc. v. Borden Co., 239 F.2d 405, 112 USPQ 60, 62 (CCPA 1956). Instead, according to applicant, it is the letter "B" in opposer's marks which is the dominant portion thereof or, at the very least, sufficiently distinguishes those marks from that of applicant.
*5 Applicant also asserts that, applying the relevant factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for determining whether a likelihood of confusion exists, it is apparent, and opposer has not shown otherwise, that the parties' marks in their entireties are dissimilar as to appearance, sound, connotation and commercial impression. In view thereof, and in the absence of any instances of actual confusion, applicant urges that there is no likelihood of confusion.
We agree with opposer, however, that confusion as to source or sponsorship is likely to occur. As a preliminary matter, we note as a general proposition that, as pointed out by Professor McCarthy, "[t]he degree of similarity of the marks needed to prove likely confusion will vary with the difference in the goods ... of the parties. Where the goods ... are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar products". 2 J. McCarthy, Trademarks and Unfair Competition § 23:3 (2d ed. 1984) at 56-57. See, e.g., ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980) and Jules Berman & Associates, Inc. v. Consolidated Distilled Products, Inc., 202 USPQ 67, 70 (TTAB 1979). Here, both parties market toothbrushes, which are relatively inexpensive items, through common channels of trade. Purchasers of such goods, especially members of the general public, would consequently not be expected to exercise a great deal of care or deliberation in making their selections.
In the present case, we find that when considered in their entireties, the respective marks are quite similar in sound and appearance, and that they create virtually identical commercial impressions, particularly since the term "ANGLE" in applicant's mark generically designates a toothbrush with an angled handle or neck. [FN12] Consumers seeking such a brush would therefore place more emphasis and reliance on the term "ORAL," which applicant's "ORAL-ANGLE" mark shares with opposer's "ORAL-B" marks. While the record discloses that the word "oral" is used by the trade to refer to a broad category of dental items known variously as "oral care," "oral hygiene" or "oral health" products, there is no evidence that consumers, or even dentists, use such word to describe any specific characteristic, quality, feature, use, purpose or other aspect of toothbrushes, toothpaste, dental floss or other related goods individually. It consequently may serve as a distinguishing element of the parties' marks. In addition, when the term "ORAL" is used in conjunction with a hyphen, as is the case with both parties' marks, the result creates marks which are so similar that, when used on identical and closely related goods, confusion as to origin or affiliation is likely to occur.
*6 Furthermore, as noted in the recent case of Kenner Parker Toys Inc. v. Rose Art Industries Inc., --- F.2d ----, 22 USPQ 1453, 1456 (Fed.Cir.1992): "the fifth duPont factor, fame of the prior mark, plays a dominant role in cases featuring a famous or strong mark. Famous or strong marks enjoy a wide latitude of legal protection". Opposer's "ORAL-B" marks are undoubtedly famous. They have been in use for many years; they represent the leading brand of toothbrushes sold in the United States; they have held the number one sales position, among both consumers and dentists, since about 1978; and they receive significant advertising and promotional outlays. Moreover, besides their high degree of renown, the record reflects that no one else in the preventive dentistry products trade utilizes a mark or trade name which includes the term "ORAL". Opposer's "ORAL-B" marks are thus strong marks meriting a wide latitude of protection from imitators.
Given the appreciable similarities in the parties' marks and the longstanding public recognition and fame of opposer's "ORAL-B" marks, we believe that confusion is likely to take place since a consumer, in picking out a toothbrush from a rack in which different brands frequently have become jumbled, could easily be misled into believing that an "ORAL-ANGLE" brush is a type of angled brush from opposer. Applicant maintains, however, that notwithstanding the facts that toothbrushes are inexpensive items which share such channels of trade as food stores, drug stores and mass merchandisers, confusion has been shown to be unlikely by the absence, to date, of any instances of actual confusion.
We observe, however, that the absence of any reported instances of actual confusion would be meaningful only if the record indicated appreciable and continuous use by applicant of its mark for a significant period of time in the same markets as those served by opposer under its marks. Applicant, in this case, has failed to present any evidence of the extent and duration of the use of its mark. Although opposer's witness, Mr. Michaels, testified that applicant's toothbrushes are sold in the same types of trade channels in which opposer sells its goods, there simply is no evidence that the parties' goods have been sold together in the same locality for a significant period of time so that, if confusion were likely to occur, circumstances have been such that it could be expected to have happened. Moreover, the lack of any occurrences of actual confusion is not dispositive inasmuch as evidence thereof is notoriously difficult to come by [FN13] and, in any event, the test under Section 2(d) of the Trademark Act is likelihood of confusion rather than actual confusion. See, e.g., Block Drug Co. v. Den-Mat Inc., 17 USPQ2d 1315, 1318 (TTAB 1989) and Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738, 742 (TTAB 1978).
*7 As a final consideration, it is apparent that applicant had knowledge of opposer and its "ORAL-B" marks since applicant, for a period of time in the 1980s, served as the supplier to opposer of dental floss packaged under the "ORAL-B" mark. We note, in this regard, that a party which knowingly adopts a mark similar to one used by another for the same or closely related goods or services does so at its peril and any doubt on the question of likelihood of confusion must be resolved against the junior user. See, e.g., First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB 1988) and Roger & Gallet S.A. v. Venice Trading Co. Inc., 1 USPQ2d 1829, 1832 (TTAB 1987).
Accordingly, we believe that ordinary consumers and dental professionals, familiar with opposer's famous "ORAL-B" marks for toothbrushes, toothpaste, dental floss and other preventive dentistry products, would be likely to believe, upon encountering applicant's appreciably similar "ORAL-ANGLE" mark for toothbrushes, that the parties' goods emanate from or are otherwise sponsored by or affiliated with the same source.
Decision: The opposition is sustained and registration to applicant is refused.
Members, Trademark Trial and Appeal Board
FN2. Specifically, opposer has pleaded ownership of the following seven registrations: (i) Reg. No. 547,130, issued on August 28, 1951, which sets forth a date of first use anywhere of January 22, 1949 and a date of first use in commerce of May 19, 1949 for the mark "ORAL B" and design, as reproduced below, for "toothbrushes"; second renewal;
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
(ii) Reg. No. 1,106,587, issued on November 21, 1978, which sets forth dates of first use of May 2, 1977 for the mark "ORAL-B" and design, as illustrated below, for "dental floss dispensers and dental floss"; combined affidavit §§ 8 and 15;
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
(iii) Reg. No. 1,197,304, issued on June 8, 1982, which sets forth dates of first use of June 15, 1972 for the mark "ORAL-B" and design, as depicted below, for "toothbrushes"; combined affidavit §§ 8 and 15;
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
(iv) Reg. No. 1,501,858, issued on August 30, 1988, which sets forth dates of first use of May 31, 1981 for the mark "ORAL-B" for "topical fluoride gels for application to the teeth, medicated mouthrinse preparations and dental amalgam"; (v) Reg. No. 1,502,069, issued on August 30, 1988, which sets forth dates of first use of May 2, 1977 for the mark "ORAL-B" for "dental floss and trays for topical application of fluoride compositions and other preparations to the teeth"; (vi) Reg. No. 1,502,572, issued on September 6, 1988, which sets forth dates of first use of May 31, 1982 for the mark "ORAL-B" for "toothpaste and dental prophylaxis preparation"; and (vii) Reg. No. 1,548,836, issued on July 25, 1989, which sets forth dates of first use of June 8, 1988 for the mark "ORAL-B" for "in vitro diagnostic test kit consisting primarily of a reagent for detecting microorganisms associated with gum disease".
FN3. Opposer also has alleged that:
Opposer has manufactured and sold ORAL-B toothbrushes with angled handles and has used the word ANGLE in the forms ORAL-B RIGHT ANGLE and ORAL-B ULTRA RIGHT ANGLE in connection with the sale of said toothbrushes to describe this feature of the brushes. Opposer has also used ANGLE in connection with the packaging of toothbrushes manufactured by it for others on a private label basis, and, upon information and belief, others in the industry have likewise used ANGLE or some variation thereof in connection with the sale of toothbrushes.
In consequence thereof, it is asserted that "Opposer will be further damaged by the registration sought by Applicant because such registration will give a color of right to Applicant to assert trademark rights in ANGLE and will cast a cloud over Opposer's right to continue use of the word ANGLE in connection with the sale of ORAL-B Angle toothbrushes".
FN4. Opposer's uncontested motion, filed on July 10, 1991, to allow the filing of the confidential portions of the transcript of Mr. Michael's deposition under seal is granted. Trademark Rules 2.27(e) and 2.125(e).
FN5. Specifically, the parties have stipulated pursuant to Trademark Rule 2.123(b) that:
In this capacity, he has overall responsibility for the registration and maintenance of trademarks owned by The Gillette Company and its various affiliated companies, including Gillette Canada Inc., which does business in the United States as Oral-B Laboratories. Mr. De Vellis, in his capacity as Director of Trademarks, is familiar with the United States Trademark Registrations owned by Gillette Canada Inc.
FN6. Inasmuch as applicant has stipulated to opposer's reliance on the additional registration as part of opposer's case-in-chief, the pleadings are hereby deemed to be appropriately amended in accordance with Fed.R.Civ.P. 15(b) to include the following registration: Reg. No. 1,608,762, issued on August 7, 1990, which with respect to the mark "ORAL-B" and design, as shown below, sets forth dates of first use of March 24, 1986 for "dentifrice; [and] dental prophylaxis preparations--namely, non-medicated mouthwash"; recites dates of first use of September 24, 1986 for "medicated mouth rinse preparation, topical fluoride gels for application to the teeth, [and] dental amalgam" as well as for "dental floss, [and] disposable trays for topical application of dental medications"; and lists dates of first use of May 16, 1986 for "toothbrushes, denture brushes, [and] interdental brushes".
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
FN7. Besides including a copy of each of the eight registrations relied upon by opposer in this proceeding, the parties have stipulated pursuant to Trademark Rule 2.123(b) that:
All of the registrations are presently in force and subsisting and are owned by Gillette Canada Inc. Registration No. 547,130 has been duly renewed. Affidavits of Use and Incontestability have been filed and accepted in support of Registrations No. 547,130, 1,106,587 and 1,197,304.
FN8. Applicant, in accordance with Trademark Rule 2.122(e), relies upon definitions from Webster's Third New International Dictionary (1986) at 1585 and The Random House Dictionary of the English Language (2d ed. 1987) at 1361 "to show the descriptive nature of the word 'oral', the only word in common between Applicant's mark and Opposer's mark[s]". In pertinent part, the former defines "oral" as meaning "2a(1): of, relating to, or belonging to the mouth: BUCCAL <the mucous membrane> (2): given or taken through or by way of the mouth <does for administration> (3): acting on the mouth < diseases> < a skillful surgeon>," while the latter defines such term to mean "3. of, pertaining to, or involving the mouth: the oral cavity".
FN9. In particular, applicant notes that in response to Interrogatory No. 11, which requested that opposer identify and describe all evidence to be relied upon by opposer which relates "to actual confusion between Opposer's term ORAL B as applied to its products, and Applicant's mark ORAL ANGLE as applied to its products," and in answer to Interrogatory No. 25, which similarly sought from opposer the identity of "all instances of actual confusion or mistake regarding Applicant's Mark and Opposer's mark[s]," opposer replied in each instance that it "is not presently aware of any actual confusion which may have occurred".
FN10. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Ranir, the leading manufacturer of private label dental floss, brings you private label toothbrushes. One source for your entire oral health care line. The same high quality that has earned Ranir a reputation of excellence in the private label industry is now available for your entire toothbrush line. All of our toothbrushes are made in-house with state-of-the-art equipment assuring you on-time deliveries.
We will introduce new marketing concepts, cross merchandising, couponing and other strategies ... never seen in the private label oral-care category.
In addition, the representative packaging for some of applicant's toothbrushes, although not that for its "Oral Angle" brushes, bears the legend: "Compare with *Oral-B(R)".
FN12. Aside from the evidence in this case demonstrating that the term "angle" signifies a type of toothbrush which has an angled handle or neck, the term has also been judicially determined to be generic for such a product. See E.R. Squibb & Sons, Inc. v. Cooper Laboratories, Inc., 536 F.Supp. 523, 214 USPQ 441, 445-46 (S.D.N.Y.1982) ["angle," as applied to toothbrushes with handles that are not straight, "is the common description for this category of goods"].