Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA963374
`
`Filing date:
`
`03/28/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`87524734
`
`Familia Management Group, LLC
`
`Applied for Mark
`
`FAMILIA DENTAL
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`MINDI M RICHTER
`SHUMAKER LOOP & KENDRICK LLP
`101 E KENNEDY BLVD STE 2800
`TAMPA, FL 33602
`UNITED STATES
`mrichter@slk-law.com
`813-229-7600
`
`Appeal Brief
`
`FAMILIA_DENTAL_and_design_Appeal_Brief.pdf(111989 bytes )
`
`Mindi M. Richter
`
`mrichter@slk-law.com
`
`/Mindi M. Richter/
`
`03/28/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Ex Parte Appeal of Applicant Familia Management Group, LLC
`
`Correspondent Address: Mindi M. Richter, Esq.
` Shumaker, Loop & Kendrick, LLP
` 101 E. Kennedy Boulevard, Suite 2800
` Tampa, Florida 33602
` Tel.: 813-229-7600
` Fax: 813-229-1660
` mrichter@slk-law.com
`
`Serial No. 87/524,734
`
`Mark: FAMILIA DENTAL (and design)
`
`
`
`E-Filing
`____________________________________/
`
`APPLICANT’S APPEAL BRIEF
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ............................................................................................................ i
`
`INDEX OF AUTHORITIES ...................................................................................................... ii
`
`I.
`
`II.
`
`RECITATION OF THE FACTS .................................................................................... 2
`
`STATEMENT OF ISSUES ............................................................................................ 5
`
`Is Applicant’s word mark FAMILIA DENTAL for “dental hygienist services;
`1.
`dentist services; orthodontic services” generic such that it is not entitled to trademark
`protection? ...................................................................................................................... 5
`
`If Applicant’s word mark FAMILIA DENTAL for “dental hygienist services;
`2.
`dentist services; orthodontic services” is not generic, is it nevertheless highly
`descriptive such that Applicant’s submitted declaration and additional evidence failed
`to show the word mark has become distinctive despite over ten years of use?.............. 5
`
`III.
`
`ARGUMENT ................................................................................................................. 5
`
`A.
`
`The Examiner has not met the difficult burden of establishing that Applicant’s
`FAMILIA DENTAL word mark is generic. .............................................................. 5
`
`1.
`
`The Examiner’s Evidence .................................................................................. 7
`
`2. Applicant’s Evidence ....................................................................................... 12
`
`B.
`
`The Examiner also failed to fulfill her high burden of demonstrating that FAMILIA
`DENTAL is highly descriptive such that Applicant’s 2(f) Declaration and other
`evidence is insufficient to show that the word mark is distinctive. ......................... 15
`
`IV.
`
`SUMMARY ................................................................................................................. 20
`
`i
`
`

`

`INDEX OF AUTHORITIES
`
`Cases
`Am-Pro Protective Agency, Inc. v. United States, 281 F.3d 1234, 1239-40 (Fed. Cir. 2002) ........ 6
`
`Burger King Corp. v. Pilgrim's Pride Corp., 705 F. Supp. 1522, 1525 (S.D. Fla. 1988) ............ 11
`
`Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) ................ 3
`
`Hunter Publ’g Co., 1 USPQ2d 1996 (TTAB Sept. 29, 1986) ...................................................... 11
`
`In re America Online Inc., 77 USPQ2d 1618 (TTAB 2006) ........................................................ 15
`
`In re American Fertility Soc., 188 F.3d 1341, 1348-49 (Fed. Cir. 1999) ................................... 8, 9
`
`In re American Food Co., Inc., 2004 WL 2368423 (TTAB 2004) ................................................. 6
`
`In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006) ....................................................... 3
`
`In re Caddy Girls USA, Inc., 2001 WL 1587169, *4 (TTAB 2001) ...................................... 17, 18
`
`In re Country Music Ass’n, Inc., 100 USPQ2d 1824 (TTAB 2011) ............................................. 10
`
`In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, *1345-46 (Fed. Cir. 2001) ..................... 7
`
`In re Digital Oilfield Inc., 2008 WL 1897543, *8 (TTAB April 17, 2008) ................................. 10
`
`In re Dollar-A-Day Rent-A-Car Systems, Inc., 173 USPQ 435 (TTAB 1972) ............................. 19
`
`In re HM Electronics, Inc., 2015 WL 12722655 (TTAB Nov. 17, 2015) .................................... 19
`
`In re Illinois Powder & Paint Co., 188 USPQ 459, 462 (TTAB 1975)) ...................................... 17
`
`In re Kraft, Inc., 218 USPQ 571 (TTAB 1983) .............................................................................. 3
`
`In re Merrill Lynch, 828 F.2d 1567, 1571 (Fed. Cir. 1987).................................................. 5, 6, 12
`
`In re Mittal Steel Tech. Ltd., 2008 WL 5078736 (TTAB Nov. 18, 2008) .................................... 19
`
`In re Nat’l Council for Therapeutic Rec. Cert., Inc., 2006 WL 2850881 (TTAB Sept. 15, 2006)
`
`................................................................................................................................................... 15
`
`In re Payclerk, Inc., 2007 WL 2972193 (TTAB 2007) .................................................................. 6
`
`In re Port Huron Sulphite & Paper Co., 120 USPQ 343 (TTAB 1959) ...................................... 14
`
`In re Steelbuilding.com, 415 F.3d 1293, 1299 (Fed. Cir. 2005) ..................................................... 7
`
`In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) ................................................. 14
`
`In re Synergistics Research Corp., 218 USPQ 165, 1983 WL 51947, *2 (TTAB 1983) . 16, 17, 18
`
`In re Tennis Industry Assn., 102 USPQ2d 1671 (TTAB 2012) .................................................. 6, 7
`
`In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106 (TTAB 2010) ..................................................... 6, 15
`
`In re Zuffa, LLC, 2005 WL 2034531(TTAB 2005) ...................................................................... 15
`
`Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 639 (Fed. Cir. 1991) ........................................... 11
`
`ii
`
`

`

`Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 969 (Fed. Cir. 2015) 7
`
`Zimmerman v. Nat’l Ass’n of Realtors, 70 USPQ 2d 1425 (TTAB 2004) ................................... 11
`
`Other Authorities
`15 U.S.C. §1056(a) ......................................................................................................................... 3
`
`18 U.S.C. § 1001 ........................................................................................................................... 17
`
`TMEP § 1209.02, .......................................................................................................................... 14
`
`TMEP §§1213, 1213.03(a) ............................................................................................................. 3
`
`TMEP 1209.01(c)(i) ........................................................................................................................ 5
`
`iii
`
`

`

`APPLICANT’S APPEAL BRIEF
`
`Applicant Familia Management Group, LLC (“Applicant”) has used its FAMILIA
`
`DENTAL trademark for dental services since early 2009. In 2010, Applicant filed a federal
`
`trademark application for its FAMILIA DENTAL logo design and obtained a registration after
`
`the Examiner requested that FAMILIA DENTAL be disclaimed as descriptive (see Registration
`
`No. 3,779,160). Since that time, operating under the rational assumption that its FAMILIA
`
`DENTAL mark could become distinctive after sufficient use, Applicant continued to use,
`
`develop, and grow its FAMILIA DENTAL brand to the point where it now has 42 dental
`
`locations around the country, spends seven figures a year on marketing, and has annual revenues
`
`just under $100,000,000.
`
`In 2017, after about eight years of use, Applicant filed the two new FAMILIA DENTAL
`
`applications currently on appeal, one for the FAMILIA DENTAL word mark and the other for a
`
`newer FAMILIA DENTAL logo design, only to be told by another Examiner that its FAMILIA
`
`DENTAL mark is somehow entitled to zero trademark protection under any circumstances.
`
`Applicant appeals the Examiner’s refusal to register the FAMILIA DENTAL (and design) mark
`
`without a disclaimer based on Sections 3, 23, and 45 for failure to function as a trademark.
`
`Specifically, the Examiner asserts that the FAMILIA DENTAL mark is generic. Applicant
`
`respectfully submits that the Examiner failed to meet her very high burden of demonstrating by
`
`clear evidence that the FAMILIA DENTAL mark is generic. The Examiner has not proffered a
`
`single example of a generic reference to the term FAMILIA DENTAL. Not only do most of the
`
`examples provided refer only to FAMILY DENTAL as opposed to FAMILIA DENTAL, but
`
`almost all of them constitute descriptors for family or geographic trade names, as opposed to
`
`generic references. In addition to the problems with the Examiner’s evidence, Applicant itself
`
`1
`
`

`

`submitted a plethora of evidence demonstrating not only that the mark is not generic, but that it is
`
`most commonly associated directly with Applicant. The Board has made clear that, given the
`
`difficult burden of proving that a mark is generic, when there is mixed evidence in the record
`
`creating doubt, such doubt is resolved in the favor of Applicant. Applicant’s FAMILIA
`
`DENTAL mark is not generic.
`
`The Examiner also asserts that, even if FAMILIA DENTAL is not generic, it must be
`
`disclaimed under Section 2(e)(1) because it is descriptive, and Applicant failed to show that the
`
`mark has become distinctive. Applicant’s mark has been in use for about ten years, and
`
`Applicant submitted a Section 2(f) declaration. The Examiner has not satisfied the high burden
`
`of demonstrating the FAMILIA DENTAL is highly descriptive or that the additional evidence
`
`submitted by Applicant with its declaration was insufficient to demonstrate distinctiveness.
`
`While Applicant’s mark may have once been descriptive, it has since acquired distinctiveness
`
`and is entitled to registration. To deny Applicant trademark protection for its primary house
`
`mark after it has poured endless resources into it on reliance that it could eventually become
`
`distinctive, is highly improper, detrimental, and prejudicial.
`
`I.
`
`RECITATION OF THE FACTS
`
`Applicant first filed a federal trademark application for FAMILIA DENTAL (and design)
`
`on January 18, 2009, with a first use date of March 28, 2009. The mark registered on April 20,
`
`2010 (Reg. No. 3,779,160) and remains active today. During prosecution of that application,
`
`Applicant was required to disclaim the exclusive use of FAMILIA DENTAL apart from the
`
`mark as shown in the application in response to an office action on the grounds that the phrase
`
`was descriptive, not that it was generic. Specifically, the Examiner stated:
`
`The applicant must insert a disclaimer of FAMILIA DENTAL in the application
`because it describes a feature of and the type of services that are rendered by the
`
`2
`
`

`

`applicant. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The following
`cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l
`Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman
`Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571 (TTAB
`1983).
`
`The applicant has identified its services as dentist and dental hygienist services.
`The term FAIMILA [sic] translates to mean family in English. The specimen of
`record shows the applicant describing its services as a FAMILY DENTAL
`practice.” When used in the context of the applicant’s identified services, the
`wording FAMILIA DENTAL merely describes the type of services rendered by
`the applicant and a feature of those services, namely, that the applicant’s services
`are provided via a FAMILY DENTAL practice.
`
`The Examiner said nothing whatsoever about the words FAMILIA DENTAL being generic. On
`
`the contrary, the Examiner said the words were merely descriptive. At that time, Applicant had
`
`only been using the mark FAMILIA DENTAL for a few months.
`
`Since the filing of its first FAMILIA DENTAL application in 2009, Applicant, a provider
`
`of affordable dental services, has grown rapidly and invested greatly in its branding. For
`
`example, Applicant grew to 27 locations in 2014; 31 locations in 2015; and 37 locations in 2016.
`
`Applicant now has 42 dental locations in six different states around the country, namely, Illinois,
`
`Indiana, Iowa, Wisconsin, Texas and New Mexico. Applicant serves hundreds of thousands of
`
`dental patients each year and spends seven figures on marketing and advertising each year. In
`
`addition, its revenues have now climbed to nearly $100,000,000/year. See April 24, 2018 Office
`
`Action Response at Exhibit 3.
`
`As Applicant continued to grow and invest in its brand, it eventually designed a new
`
`logo, and in July of 2017, Applicant filed two new federal trademark applications, one for its
`
`word mark FAMILIA DENTAL and another for the new logo design that included the words
`
`FAMILIA DENTAL, which is the subject of this appeal.
`
`3
`
`

`

`On October 18, 2017, the Examiner issued an Office Action refusing registration on the
`
`grounds that the mark merely describes a feature of Applicant’s goods or services and asking
`
`Applicant to disclaim FAMILIA DENTAL. As Applicant had been extensively using and
`
`promoting the mark since 2009, it filed a response with a Section 2(f) Declaration.
`
`On November 17, 2017, the Examiner issued a second Office Action asserting, only by
`
`pointing to the same evidence used in the first office action, that the word mark is generic in
`
`connection with the identified services, and further that even if it is not generic, it is descriptive
`
`despite Applicant’s Section 2(f) Declaration.
`
`In response, on April 24, 2018, Applicant submitted arguments that the FAMILIA
`
`DENTAL mark is not generic, and that even if it was once descriptive, it has since become
`
`distinctive. In its response, Applicant not only submitted a mountain of evidence demonstrating
`
`that the mark is not generic, it also submitted a detailed Declaration from its Director of
`
`Corporate Development demonstrating how the FAMILIA DENTAL mark has become
`
`distinctive.
`
`On May 31, 2018, the Examiner, again submitting little if any supporting evidence, and
`
`not a single example of a generic use of FAMILIA DENTAL, issued a Final Office Action,
`
`continuing to assert that the mark was generic, and if not generic, then highly descriptive such
`
`that Applicant’s evidence failed to show the FAMILIA DENTAL mark has become distinctive.
`
`On November 28, 2018, Applicant filed a Notice of Appeal, as well as a Request for
`
`Reconsideration explaining the Examiner’s difficult burden, as well as submitting even more
`
`evidence demonstrating that the mark was not generic and had become distinctive.
`
`However, on January 24, 2019, the Examiner denied the Request for Reconsideration,
`
`continuing to assert the same arguments and taking the opportunity to attempt to insert additional
`
`4
`
`

`

`evidence into the record upon which she had not relied in her Final Office Action, which still did
`
`not contain a single generic use of FAMILIA DENTAL. As a result, Applicant pursued this
`
`appeal.
`
`II.
`
`STATEMENT OF ISSUES
`
`1.
`
`Is Applicant’s word mark FAMILIA DENTAL for “dental hygienist services; dentist
`
`services; orthodontic services” generic such that it is not entitled to trademark
`
`protection?
`
`2.
`
`If Applicant’s word mark FAMILIA DENTAL for “dental hygienist services; dentist
`
`services; orthodontic services” is not generic, is it nevertheless highly descriptive
`
`such that Applicant’s submitted declaration and additional evidence failed to show
`
`the word mark has become distinctive despite over ten years of use?
`
`III. ARGUMENT
`
`A. The Examiner has not met the difficult burden of establishing that Applicant’s
`FAMILIA DENTAL word mark is generic.
`
`A two-part inquiry is used to determine whether a mark is generic: 1) what is the genus of
`
`goods/services at issue; and 2) does the relevant public understand the designation primarily to
`
`refer to that genus of goods or services? TMEP 1209.01(c)(i). The test turns upon the primary
`
`significance of the wording to the relevant public. Id. The critical issue in genericness cases is
`
`whether members of the relevant public primarily use or understand the term sought to be
`
`registered to refer to the genus of goods or services in question. Id.
`
`A mark is not found to be generic unless the examiner is able to make a “substantial”
`
`showing that the mark is generic, which must be based on “clear evidence of generic use.” In re
`
`Merrill Lynch, 828 F.2d 1567, 1571 (Fed. Cir. 1987) (reversing examiner finding that CASH
`
`MANAGEMENT ACCOUNT was generic). The Board has repeatedly explained that an
`
`5
`
`

`

`examiner’s burden in this instance is difficult and requires very clear evidence. In re Tennis
`
`Industry Assn., 102 USPQ2d 1671 (TTAB 2012) (reversing examiner finding that TENNIS
`
`INDUSTRY ASSOCIATION was generic); see also In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106
`
`(TTAB 2010) (reversing examiner finding that THUMBDRIVE was generic); In re Payclerk,
`
`Inc., 2007 WL 2972193 (TTAB 2007) (reversing examiner finding that PAYCLERK was
`
`generic); In re American Food Co., Inc., 2004 WL 2368423 (TTAB 2004) (reversing examiner
`
`finding that THE BEEF JERKY OUTLET was generic); Am-Pro Protective Agency, Inc. v.
`
`United States, 281 F.3d 1234, 1239-40 (Fed. Cir. 2002) (explaining that “clear evidence” is
`
`equivalent to “clear and convincing evidence,” which is a heavier burden than preponderance of
`
`the evidence).
`
`“It is incumbent on the Board to balance the evidence of public understanding of the
`
`mark against the degree of descriptiveness encumbering the mark, and to resolve reasonable
`
`doubt in favor of the applicant, in accordance with practice and precedent.” In re Merrill Lynch,
`
`828 F.2d at 1571 (emphasis added). Evidence of the public’s understanding of a term can be
`
`obtained from any competent source, including dictionary definitions, research databases,
`
`newspapers and other publications. Id.
`
`In this instance, in relation to part one of the test, the genus of Applicant’s services relates
`
`to dental and orthodontic services. In relation to the second part of the test, in order for the
`
`FAMILIA DENTAL mark to be generic, the public has to understand the designation primarily
`
`to refer to the genus of the services, i.e. dental services. The Examiner’s evidence in this regard,
`
`which does not contain a single use of FAMILIA DENTAL alone in a generic manner, is vastly
`
`insufficient to prove that the mark is generic. While DENTAL may be generic, FAMILIA
`
`DENTAL is not.
`
`6
`
`

`

`1.
`
`The Examiner’s Evidence
`
`The Examiner’s second Office Action, which was the first action to contain an assertion
`
`that FAMILIA DENTAL is generic, contained no evidence at all, but rather referred Applicant to
`
`the first Office Action, which only contained a rejection based on descriptiveness grounds. In
`
`that Office Action, the Examiner first pointed to dictionary excerpts to show that FAMILIA
`
`translates to FAMILY in English, as well as the separate definitions of FAMILY and DENTAL.
`
`The Examiner did not point to dictionary excerpts of FAMILIA DENTAL as a whole, because,
`
`notably, the same does not exist in the dictionary. While the Examiner cited to a new dictionary
`
`reference in the Reconsideration Letter where “family dental” is used in a sentence, neither
`
`FAMILY DENTAL nor FAMILIA DENTAL appear as defined terms.1 Therefore, that evidence
`
`actually weighs in favor of Applicant. Moreover, even if, for the sake of argument, the separate
`
`components of “familia” and “dental” could be considered generic in certain circumstances, it
`
`does not follow that FAMILIA DENTAL as a whole is generic such that the public understands
`
`it to refer to Applicant’s services. See Princeton Vanguard, LLC v. Frito-Lay North America,
`
`Inc., 786 F.3d 960, 969 (Fed. Cir. 2015) (reversing finding that PRETZEL CRISPS was generic
`
`because the Board did not consider the evidence of the relevant public’s understanding of the
`
`term in its entirety); In re Tennis Industry Assn., 102 USPQ2d at 1671 (finding substantial doubt
`
`that TENNIS INDUSTRY ASSOCIATION was generic for association services related to
`
`promoting tennis, which had to be resolved in favor of applicant); In re Steelbuilding.com, 415
`
`F.3d 1293, 1299 (Fed. Cir. 2005) (vacating finding that STEELBUILDING.COM was generic
`
`for online retail services in the field of pre-engineered metal buildings and roofing systems); In
`
`re Dial-a-Mattress Operating Corp., 240 F.3d 1341, *1345-46 (Fed. Cir. 2001) (reversing
`
`1 Notably, the Examiner did not search “family dental” or “familia dental” in the dictionary because if you do,
`nothing comes up. Instead, the Examiner had to search “family dentistry” to receive any hits.
`
`7
`
`

`

`finding that 1-888-M-A-T-R-E-S-S was generic because it needed to be considered in its entirety
`
`and there was no record evidence that the public referred to shop at home mattress retailers as
`
`“1-888-M-A-T-R-E-S-S); In re American Fertility Soc., 188 F.3d 1341, 1348-49 (Fed. Cir. 1999)
`
`(finding AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE was not generic for
`
`promoting the interests of the reproductive medicine profession because the examiner failed to
`
`provide evidence that the phrase as a whole, rather than the individual components, was generic).
`
`In addition to the dictionary excerpts, the Examiner pointed to various websites showing
`
`dental companies that have FAMILY DENTAL in their business name. In the Examiner’s
`
`multiple office actions, not one of the website examples shows a generic use of FAMILIA
`
`DENTAL; not one of the referenced website examples even contained FAMILIA DENTAL at
`
`all, let alone FAMILIA DENTAL as a standalone reference. Rather, the examples showed
`
`various dental provider business names that included FAMILY DENTAL within them. In each
`
`case, the word FAMILY is used to name a specific family, such as “Sharpe Family” or “Davis
`
`Family,” and then the word dental describes the practice. Applicant is not aware of any Board
`
`decision affirming that a mark is generic when not one reference could be found using the exact
`
`mark at issue in a generic manner. In addition, in each instance to which the Examiner cites,
`
`“family dental” is not used generically in conversation to refer to services, but rather is used in
`
`business names for various families or in a few cases, geographic locations, such as “Lakeshore
`
`Family Dental” or “Fort Union Family Dental.” While FAMILY DENTAL in these instances
`
`may be used along with geographic locations, that does not show they are generic. Indeed
`
`similar marks have registered with no generic objection (see, e.g. GOLD COAST FAMILY
`
`DENTAL, Reg. No. 4,658,397 where only FAMILY was disclaimed as descriptive; FAMILY
`
`DENTAL CENTERS (and design), Reg. No. 4,240,926, where FAMILY DENTAL CENTERS
`
`8
`
`

`

`was disclaimed as descriptive not generic; and WEST COAST DENTAL, Reg. No. 2,801,606,
`
`registered on Supplemental Register (November 28, 2018, Request for Reconsideration at
`
`Exhibit 3)).
`
`Given the high burden of showing that a mark is generic, citing websites of family or
`
`geographic business names, with not a single reference to FAMILIA DENTAL or FAMILY
`
`DENTAL alone, is not nearly enough. Notably, the Board specifically addressed this situation in
`
`In re Country Music Association and found the Examiner’s evidence insufficient to prove that
`
`the mark was generic. In that case, the applicant sought to register COUNTRY MUSIC
`
`ASSOCIATION, and the Examiner asserted the mark was generic and cited to third party uses
`
`such as THE LESBIAN AND GAY COUNTRY MUSIC ASSOCIATION; CHRISTIAN
`
`COUNTRY MUSIC ASSOCIATION; NEW YORK METROPOLITAN COUNTRY MUSIC
`
`ASSOCIATION; and others for support. In finding such evidence insufficient to satisfy the
`
`Examiner’s burden, the Board stated in part the following:
`
`Considered in the context of the record as a whole in this case, the examining attorney's
`evidence of third-party use of the phrase “Country Music Association” does not clearly
`establish genericness. We note that all of the Internet and LEXIS/NEXIS excerpts show
`the phrase “Country Music Association” in initial capitalization form, which, as
`discussed further below, may be indicative of use as a trade or brand name. In addition,
`the evidence shows that third-party organizations use the term “Country Music
`Association” in combination with other descriptive, geographic, or other terms to
`designate the name of their respective organizations. Taking into account these points and
`the evidence presented by applicant which is discussed below, we are not convinced that
`the examining attorney’s evidence of use of the phrase “Country Music Association”
`suffices as clear evidence that the relevant purchasers perceive the phrase as naming the
`genus of the services at issue. We are left with doubt on the issue and find the evidence to
`be equally compatible with a conclusion that the phrase is not the name of a genus of
`services but merely an apt name for an association comprised of country music
`professionals or promoting the country music industry. Cf. In re American Fertility
`Society, 51 USPQ2d at 1836 (“AMERICAN BAR ASSOCIATION is certainly an apt
`name for a national association of lawyers”).
`
`9
`
`

`

`In re Country Music Ass’n, Inc., 100 USPQ2d 1824 (TTAB 2011). Similar to the examples cited
`
`in that case, the Examiner’s examples consist of trade names or brand names, which are not
`
`generic references, and they also all contain “family dental” in combination with other terms to
`
`designate the name of their entities, i.e. surnames or geographic locations. Such third party uses
`
`do not show that Applicant’s mark is generic.
`
`In the Reconsideration Letter issued after all the Office Actions, the Examiner was still
`
`not able to come up with a single generic use of FAMILIA DENTAL, but did, in a last minute
`
`effort to supplement the record before appeal, scrape together nine dental practice websites that
`
`refer to a “family dental practice.” While these do show uses outside of use as a trade name,
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`they do not alone constitute anywhere near enough evidence to show that FAMILIA DENTAL is
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`generic. A handful of online references could never reach the standard of a substantial showing,
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`particularly given that none of the references demonstrates that the relevant public (i.e. ordinary
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`consumers) understands FAMILIA DENTAL to refer to dental services, and none of them
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`contain FAMILIA DENTAL. See e.g., In re Digital Oilfield Inc., 2008 WL 1897543, *8 (TTAB
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`April 17, 2008) (finding DIGITAL OILFIELD not generic for software related to the oil industry
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`despite over 20 articles referring generally to the term “digital oilfield”). Moreover, it is clear
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`that the Examiner had to exert great efforts just to find these few examples since they were not
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`asserted until the last minute in the Reconsideration Letter, not to mention that, as further
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`described below, the results of a google search for “familia dental” reveals almost solely hits
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`referring directly to Applicant.
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`In addition, the particular uses cited by the Examiner are not probative of how the
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`relevant public—ordinary consumers—would view Applicant’s mark. The asserted exemplary
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`uses consist of websites owned by dental service providers—i.e., professionals in the trade of
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`dental services, not members of the relevant consuming public. The fact that a limited subset of
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`dental practices might import a particular meaning to the term “family dental” says little about
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`how the ordinary consumer might view the term.
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`“Clearly, when dealing with ordinary consumer goods or services, the test for genericness
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`is the term’s meaning to consumers, not necessarily the professionals in the trade.” Zimmerman
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`v. Nat’l Ass’n of Realtors, 70 USPQ 2d 1425 (TTAB 2004). To illustrate, the Federal Circuit
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`rejected a claim that the mark TOUCHLESS was generic for “automobile washing services”
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`where the only evidence cited was usage by operators and manufacturers of car wash equipment
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`and not automobile owners generally. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 639 (Fed.
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`Cir. 1991). The Federal Circuit noted that car wash equipment operators and manufacturers only
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`fell within the relevant public insofar as they were automobile owners, and even then, they only
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`made up a subset of the relevant consuming public.
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`Similarly in this case, dentists at best make up a small subset of the relevant consuming
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`public for dental services. Evidence illustrating how some dentists might use the term “family
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`dental” does not clearly and convincingly establish that ordinary consumers would understand
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`the term to be generic. See also Burger King Corp. v. Pilgrim's Pride Corp., 705 F. Supp. 1522,
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`1525 (S.D. Fla. 1988) (upholding a jury verdict finding that the mark CHICKEN TENDERS was
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`not generic because “although there was evidence that the term ‘tender’ might be generic within
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`the chicken industry, it was not generic among the general public”).
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`In another example, the Board rejected a challenge to the mark SYSTEMS USER as
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`being generic for the title of a trade publication. See Hunter Publ’g Co., 1 USPQ2d 1996
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`(TTAB Sept. 29, 1986). The Board noted that while there was some evidence that persons in the
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`industry were referred to as “system users,” there was nothing indicating that the relevant public
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`would interpret the term as referring to a publication. See id. The Board, therefore, found that
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`the evidence did not support a finding that the mark was generic.
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`2.
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`Applicant’s Evidence
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`In addition to the above-referenced issues in the evidence cited by the Examiner,
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`Applicant itself provided a plethora of evidence demonstrating that the mark is not generic.
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`First, a simple Google search of “familia dental” shows that virtually every hit in the first few
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`pages is a reference to Applicant, and the few that are not do not contain “familia dental.” For
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`example, on the first page, the first three hits are Applicant’s website, and all remaining hits are
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`websites referring to Applicant and its dental locations. See April 24, 2018 Office Action
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`Response at Exhibit 1; November 28, 2018 Request for Reconsideration at Exhibit 1. A
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`Westlaw search of all news publications for “Familia Dental” further weighs against a generic
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`finding. The search comes up with 90 hits, nearly every one of which refers to Applicant. See
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`April 24, 2018 Office Action Response at Exhibit 2; November 28, 2018 Request for
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`Reconsideration at Exhibit 2. The few hits that do not refer to Applicant refer to a dental clinic
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`in New Mexico called La Familia. Id. Therefore, a search of all news sources in Westlaw does
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`not show a single generic reference to FAMILIA DENTAL and in fact the great majority of all
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`hits refer specifically to Applicant. In addition to the pages of hits, Applicant also submitted
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`printouts of the hits to clearly demonstrate that they are indeed references to Applicant.
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`November 28, 2018 Request for Reconsideration at Exhibits 1 & 2. This serves as strong
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`evidence that the public does not associate FAMILIA DENTAL, nor use FAMILIA DENTAL,
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`as a general phrase to refer to dental services and further that the public in fact associates the
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`mark directly with Applicant. In re Merrill Lynch, 828 F.2d at 1571 (“the evidence before the
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`Board showed a recognition in a substantial number of publications that the source of the CASH
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`MANAGEMENT ACOUNT was the appellant” and “this evidence does not clearly place
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`appellant’s mark in the category