Spotlight Oral Care Limited

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Hearing: Jan. 8, 2026
Mailed: March 19, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re Spotlight Oral Care Limited

Serial Nos. 79380381 (parent)
79382237
79383214
79384076
79384077

Angela Kalsi of UB Greensfelder LLP
for Spotlight Oral Care Limited.

Jesse Nelman, Trademark Examining Attorney, Law Office 129,
Pamela Y. Willis, Managing Attorney.

Before Greenbaum, Heasley, and Lebow,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Spotlight Oral Care Limited (“Applicant”) seeks registration on the Principal
Register of the following proposed word-and-design marks, all for

Non-medicated mouthwash; teeth whitening preparations; teeth
whitening strips; non-medicated mouth rinses and washes; teeth
whitening mouthwash; teeth whitening strips impregnated with teeth
whitening preparations; dental bleaching gels; tooth cleaning
preparations; toothpaste; tooth polish; tooth powders; dental bleaching

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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gels; cleaning preparations and cosmetic preparations for the mouth and
teeth in International Class 3, and
Dental cleaning articles; toothbrushes; baby finger toothbrushes; dental
floss picks for personal use; tape and floss for dental purposes; battery and
electric powered tooth brushes and flossers; water flossers; oral care kits
comprising toothbrushes and floss; toothbrush holders; electric
toothbrushes; interdental brushes for cleaning the teeth; toothpicks; water
apparatus for cleaning teeth and gums; parts and fittings for toothbrushes
and electric brushes, namely, electric toothbrush replacement heads, in
International Class 21:
1
1 Application Serial No. 79380381 was filed on June 30, 2023 as a request for extension of
protection of International Registration No. 1754595. According to the Application, “The
mark consists of the stylized black wording ‘MADE BY DENTISTS’ to the left of a design of
a green two-horned monster with one white horn and one green horn. The monster’s eyes and

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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All five applications were filed as requests for extension of protection under
the Madrid Protocol. See Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a).
Section 66(a) applications are subject to the same examination standards as any other
application for registration on the Principal Register. 15 U.S.C. § 1141h(a)(1). See
generally TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1904.02(a)
(Nov. 2025). If the proposed marks are not registrable on the Principal Register,
extension of protection must be refused. 15 U.S.C. § 1141h(a)(4).
The Trademark Examining Attorney has refused registration unless the literal
teeth are white. The monster is outlined in black.” The colors green, white, and black are
claimed as features of the mark.
Application Serial No. 79384077 was filed on April 13, 2023 as a request for extension of
protection of International Registration No. 1763355. According to the Application, “The
mark consists of the stylized black wording ‘MADE BY DENTISTS’ to the left of a design of
a purple alien with one white eye, two purple antennae, and two white teeth. The alien is
outlined in black and is next to a white star design and a white circle design, both outlined
in black.” The colors purple, white, and black are claimed features of the mark.
Application Serial No. 79384076 was filed on April 13, 2023 as a request for extension of
protection of International Registration No. 1763354. According to the Application, “The
mark consists of the stylized black wording ‘MADE BY DENTISTS’ to the left of a design of
a brown and black primate with its mouth open wide. The primate’s eyes and teeth are white.”
The colors brown, white, and black are claimed as features of the mark.
Application Serial No. 79383214 was filed on August 22, 2023 as a request for extension of
protection of International Registration No. 1761140. According to the Application, “The
mark consists of the stylized black wording ‘MADE BY DENTISTS’ to the left of a design of
a pink feline head with black spots, two pointed white teeth, two white eyes, and yellow inner
ears. The feline is outlined in black.” The colors pink, yellow, white, and black are claimed as
features of the mark.
Application Serial No. 79382237 was filed on April 13, 2023 as a request for extension of
protection of International Registration No. 1758953. According to the Application, “The
mark consists of the stylized black wording ‘MADE BY DENTISTS’ to the left of a design of
a blue shark with two white eyes showing its white teeth and pink gums emerging from
waves consisting of a black wavy line. The shark is outlined in black.” The colors pink, blue,
white, and black are claimed as features of the mark.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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part of each proposed mark, MADE BY DENTISTS, is disclaimed due to (i) its mere
descriptiveness under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
and (ii) its failure to function as a trademark.2 15 U.S.C. §§ 1056(a), 1127. When the
refusals were made final, Applicant appealed and requested reconsideration. After
the Examining Attorney denied the requests for reconsideration, the appeals
proceeded. The Board granted Applicant’s motion to consolidate the five appeals,3
which are fully briefed and ready for decision.
I. Disclaimer Requirement
A “disclaimer” is a statement in the application record that an applicant does not
claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf
v. John H. Breck, Inc., 340 F.2d 978, 979-80 (CCPA 1965); TMEP §1213. The USPTO
may “require the applicant to disclaim an unregistrable component of a mark
otherwise registrable” under 15 U.S.C. § 1056(a). “As used in trade mark
registrations, a disclaimer of a component of a composite mark amounts merely to a
statement that, in so far as that particular registration is concerned, no rights are
being asserted in the disclaimed component standing alone, but rights are asserted
in the composite; and the particular registration represents only such rights as flow
from the use of the composite mark.” Sprague Electric Co. v. Erie Resistor Corp., 1954
WL 5425, *1 (Comm’r Pats. 1954). Failure to comply with a disclaimer requirement
2 Citations to the prosecution files refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify the documents by title, date, and page in the
downloadable .pdf version in Serial No. 79380381.
3 7, 8 TTABVUE. References to the briefs and other materials in the appeal record refer to
the Board’s TTABVUE online docketing system. Unless otherwise stated, all TTABVUE
citations shall be to the appeal of Application Serial No. 79380381.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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is a basis for refusal. In re Korn Ferry, No. 90890949, 2024 WL 3219482, *2 (TTAB
2024).
The PTO “may require a disclaimer as a condition of registration if the mark is
merely descriptive for at least one of the products or services involved.” In re
Stereotaxis, Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005). The U.S. Court of Appeals for
the Federal Circuit explains the principles underlying disclaimers:
The Lanham Act’s disclaimer requirement strikes a statutory balance
between two competing trademark principles. On the one hand, it provides
the benefits of the Lanham Act to applicants for composite marks with
unregistrable components. On the other hand, the Act prevents an applicant
from claiming exclusive rights to disclaimed portions apart from composite
marks. The applicant’s competitors in the same trade must remain free to
use descriptive terms without legal harassment. … By encouraging
definition of the rights claimed in a composite mark, the Act discourages
unnecessary litigation.
Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991) (internal
citation omitted); In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed.
Cir. 2015) (“Disclaiming unregistrable components prevents the applicant from
asserting exclusive rights in the disclaimed unregistrable terms.”).
See generally Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920). “A
term is merely descriptive if it immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services with which it is used.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007). 15 U.S.C. § 1052(e)(1).
Where a proposed mark, or portion thereof, consists of multiple words, the mere
combination of descriptive words does not necessarily create a nondescriptive
expression. In re Phoseon Tech. Inc., No. 77963815. 2012 WL 3854070, * 5-6 (TTAB
2012) (SEMICONDUCTOR LIGHT MATRIX merely descriptive for light curing

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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systems and UV curing systems). If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a composite
that is itself merely descriptive and unregistrable. In re Oppedahl & Larson LLP, 373
F.3d 1171, 1174 (Fed. Cir. 2004).
II. Analysis
The Examining Attorney maintains that ‘MADE BY DENTISTS’ immediately
conveys to consumers a feature or characteristic of the goods in that they are designed
by dentists.4 “Terms that describe the provider of a product may be merely descriptive
of the product,”5 the Examining Attorney continues, elaborating that:
The evidence shows that applicant was created and is owned by dentists.
Applicant concedes this fact. Moreover, applicant, in its advertisement for
the goods, includes the information that it is “owned by dentists.” Here,
there is no question that “DENTISTS” describes the provider of the
identified goods. And the addition of the wording “MADE BY” further
clarifies who is the provider of the goods. Here, the goods are “MADE BY”
the very “DENTISTS” that own applicant and that provide the goods.6
Applicant responds that MADE BY DENTISTS is suggestive, not descriptive: “The
evidence shows that the wording ‘MADE BY DENTISTS’ suggests a connection to the
inventors of the goods, as the phrase ‘MADE BY DENTISTS’ refers to Applicant’s
founders rather than to the goods themselves.”7 Applicant elaborates:
The evidence of record is plainly insufficient to establish that the wording
“MADE BY DENTISTS” is merely descriptive of Applicant’s goods. Rather,
it demonstrates that such wording is, at a minimum, suggestive.
Notwithstanding the Examining Attorney’s assertions to the contrary, the
evidence supports the conclusion that the wording “MADE BY DENTISTS”
4 Examining Attorney’s brief, 6 TTABVUE 6.
5 Id., 6 TTABVUE 3 (citing inter alia In re Chamber of Com. of the U.S., 675 F.3d 1297 (Fed.
Cir. 2012).
6 Id., 6 TTABVUE 3-4.
7 Applicant’s main brief, 4 TTABVUE 9.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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requires imagination, thought, and perception to reach a conclusion as to
the nature of the goods recited in the Application. The phrase “MADE BY
DENTISTS” refers to Applicant’s founders; thus, it is not a phrase that
references a feature of Applicant’s goods themselves.8
Specifically, Applicant disputes that the dental goods are, by definition, “MADE
BY DENTISTS.” According to dictionary definitions, “MADE” means “artificially
produced” or “put together of various ingredients,” and “BY” means “through or
through the medium of” or “through the agency or instrumentality of.”9 Applicant
argues that “consumers readily understand that products undergo a design phase
before a manufacturing phase, and the involvement of dentists in the design of a
product is not the same as dentists manufacturing or making that product. …
Applicant’s goods are not made by dentists—they are not put together, manufactured,
constructed, shaped, or formed by dentists.”10
We understand that dictionary definitions “represent an effort to distill the
collective understanding of the community with respect to language and thus clearly
constitute more than a reflection of the individual views of either the examining
attorney or the dictionary editors.” In re Boulevard Entm’t Inc., 334 F.3d 1336, 1340
(Fed. Cir. 2003). However, “[i]t is well settled that so long as any one of the meanings
of a term is descriptive, the term may be considered to be merely descriptive.” In re
Mueller Sports Med., Inc., No. 87209946, 2018 WL 2277503, *6 (TTAB 2018) (quoting
In re Chopper Indus., 1984 WL 63033, *2 (TTAB 1984)). True, “MADE” can mean
“[p]roduced or manufactured by constructing, shaping, or forming,” which connotes
8 Id., 4 TTABVUE 8.
9 Merriam-Webster.com, Nov. 19, 2024 Response to Office Action, ex. B, at 415-16.
10 Applicant’s reply brief, 9 TTABVUE 4.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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handmade.11 But it can also mean, more generally, “[p]roduced or created artificially”
or “[h]aving been invented,”12 or “[t]o cause to exist or happen; bring about; create.”13
And the words should be understood “in relation to the goods or services for which
registration is sought, the context in which the mark is used, and the possible
significance that the mark is likely to have to the average purchaser encountering
the goods or services in the marketplace.” Hangzhou Mengku Tech. Co. v. Shanghai
Zhenglang Tech. Co., No. 91272143, 2024 WL 5265081, *9 (TTAB 2025) (citing In re
Chamber of Com., 675 F.3d at 1300).
Here, if “MADE” means “[t]o cause to exist or happen; bring about; create,” then
“MADE BY DENTISTS,” considered in its entirety and in the context of dental goods
such as toothpaste, mouthwash and toothbrushes, comprehends the contributions
made by the dentists who founded Applicant, provided the designs, specified the
ingredients, and directed how the ingredients were to be put together into the dental
goods. Applicant’s website reveals:
14
Applicant’s website uses “Made by dentists” in its ordinary descriptive sense:
11 AHDictionary.com, Nov. 21, 2024 Office Action at 42.
12 Id.
13 Id.
14 SpotlightOralCare.com, June 24, 2024 Office Action at 5.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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15
See also:
16
Applicant touts the same message on social media:
• LinkedIn—“At Made By Dentists, we believe that professional-level teeth
whitening should be safe, effective, and accessible to everyone—without
causing sensitivity. That’s why we created our Teeth Whitening Powder,
designed by dentists, for real results.”17
15 Id. at 6; March 18, 2025 Office Action at 21.
16 Id. at 7; March 18, 2025 Office Action at 22. Applicant argues that the Examining
Attorney’s Office Action contains multiple examples of “’MADE BY DENTISTS’ appearing
front and center with the TM symbol….” Applicant’s reply brief, 9 TTABVUE 8. But use of
the “TM” symbol cannot transform an otherwise unregistrable designation into a registrable
one. Univ. Ky. v. 40-0, LLC, No. 91224310, 2021 WL 839189, *16 (TTAB 2021).
17 LinkedIn.com, March 18, 2025 Office Action at 6, 9.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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• Facebook—“Clinically proven [Created by Dentists]….”18
On retail websites:
• Amazon—“As dentists, we know most people hate coming to see us, but the
truth is, great oral health can be achieved at home. That’s why we developed a
premium collection of safe, clinically prove products for our patients, families
and friends.”19
• Walmart—“Created by dentists and sisters Dr. Lisa and Dr. Vanessa Creaven,
Made By Dentists Whitening Toothpaste is formulated with clean, clinically
proven ingredients to help brighten your smile and prevent cavities.”20
• UberEats— “Our Sensitive + Whitening Toothpaste has been professionally
formulated to strengthen and protect teeth against cavities and sensitivity
while ensuring maximum whitening performance.
Created by dentists and sisters Dr. Lisa and Dr. Vanessa Creaven, Made By
Dentists Sensitive + Whitening Toothpaste is formulated with sodium fluoride,
hydrogen peroxide and potassium nitrate for those with sensitive teeth, who
also want to brighten their smile.”21
• Target— “Created by dentists and sisters Dr. Lisa and Dr. Vanessa Creaven,
the Made By Dentists Sonic Toothbrush delivers professional results in the
comfort of your own home.”22
• Body & House—“Teeth whitening treatment created by Dr. Lisa and Dr.
Vanessa Creaven.”23
Reviewers have covered them as well:
• RealSimple-- “The dentist duo created the powder using three whitening
ingredients that work to oxidize stains: Phthalimido-peroxy-caproic acid
(PAP), Hydroxyapatite, and diamond powder.”24
18 Facebook.com, Id. at 25.
19 Amazon.com, Id. at 39-40.
20 Business.Walmart.com, Id. at 57.
21 UberEats.com, March 18, 2025 Office Action at 34.
22 Target.com, Id. at 51.
23 BodyAndHouse.com, Id. at 61.
24 RealSimple.com, Id. at 29.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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As this evidence shows, “MADE BY DENTISTS”, used in context, bespeaks the
broader definition of “MADE BY”: “[t]o cause to exist or happen; bring about;
create,”25 not the narrow definition advanced by Applicant. In that sense, the dentists
“MADE” the dental goods in the same sense that Henry Ford “made” the Model T,
even if he didn’t assemble the cars by hand.
Applicant argues that:
In analogous cases, the fact that a mark, or portion thereof, relates to the
desirable results of using or having used a good renders it suggestive of
those goods, not descriptive, as such suggestions do not immediately tell
something about the good or service. See, e.g., In re George Weston Ltd.,
228 USPQ 57 (TTAB 1985) (SPEEDI BAKE for frozen dough found to fall
within the category of suggestive marks because it only vaguely suggests
a desirable characteristic of frozen dough, namely, that it quickly and
easily may be baked into bread); In re The Noble Co., 225 USPQ 749 (TTAB
1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-water-
heating systems found to suggest a desired result of using the product
rather than immediately informing the purchasing public of a
characteristic, feature, function, or attribute).26
Applicant’s argument, however, misconceives the basis for the refusals, which is
that MADE BY DENTISTS describes the provider of the goods, not the goods’
results.27
“It is well-established that a term which describes the provider of goods or services
is also merely descriptive of those goods and services.” In re Major League Umpires,
No. 75154506, 2001 WL 777067, *2 (TTAB 2001). In Major League Umpires, the
applicant, a limited liability company formed by three Major League umpires, applied
to register MAJOR LEAGUE UMPIRE for clothing, including caps and uniforms, and
25 Id.
26 Applicant’s main brief, 4 TTABVUE 9.
27 Examining Attorney’s brief, 6 TTABVUE 3-4.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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“face masks, chest protectors and shin guards for athletic use,” but encountered a
refusal based on Section 2(e)(1). On appeal, the Board observed that the identified
goods were not only provided by umpires, but were also designed by umpires—a fact
touted in the applicant’s advertising:
We would point out, though, that the mark MAJOR LEAGUE UMPIRE
also immediately conveys to purchasers information about a designer of at
least some of the goods. Applicant’s advertisements tout the fact that a
protective vest it sells was invented by “Major League Umpire Joe West.”…
Therefore, the mark MAJOR LEAGUE UMPIRE would immediately
convey to such purchasers a characteristic of the gear/clothing, i.e., that it
is designed by a major league umpire.
Id.
The Board elaborated on these principles in In re Recreational Equipment, Inc., No.
87186780, 2020 WL 6938376 (TTAB 2020). There it held that “A careful reading of
the Major League Umpires decision suggests the Board was not making a broad
holding that all terms that describe something about the source of goods are per se
unregistrable as merely descriptive of the goods,”; rather, “when the Board discussed
the descriptive nature of the mark vis-à-vis the source, it pointed out that the umpires
who owned and operated the business actually designed some of the goods, a fact
touted in the applicant’s advertising”; the mark “went well beyond simply describing
something about the source of the goods. It also described characteristics of the
goods.” Id. at *3-4; see generally TMEP § 1209.03(q).
Similarly here, MADE BY DENTISTS immediately conveys knowledge of both a
feature and characteristic of the dental goods: that they are designed and provided
by dentists, a type of provider in the field who, by virtue of their profession, possess
apparent skill or expertise that may be perceived or advertised as rendering their

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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goods useful or appealing. As the Board explained in Major League Umpires,
“Certainly, ‘doctor’s diet’ for a diet plan would be understood by consumers as
describing a diet designed or provided by a doctor, even though ‘doctor’ does not
describe the qualities or mechanics (e.g., low fat, low carbohydrate) of the diet plan.”
2001 WL 777067, at *2. The same reasoning applies to doctors of dental surgery—
i.e., dentists.28 Applicant’s advertising via its website and social media touts the
benefits of dental goods designed by dentists. See In re Berkeley Lights, Inc., Ser. No.
88895703, 2022 WL 15733123, *6 (TTAB 2022) (“‘an applicant’s own website and
marketing materials may be . . . ‘the most damaging evidence’ in indicating how the
relevant purchasing public perceives a term.’”). And Applicant itself states that “oral
care products being designed by dentists might be desirable to consumers,” even
though it still maintains that “there is no specific ingredient, quality, characteristic,
feature, function, purpose or use of the goods that is directly communicated by the
wording.”29
Others in the dental field have an equal right to use “made by dentists.” Third-
party website pages submitted by the Examining Attorney show, for example:
• “Dental crowns are made by dentists using a mold of your tooth….”30
• “Bridges and crowns are made by dentists with decades of experience so you
can be sure of success.”31
28 AHDictionary.com, 3/16/2026.
29 Applicant’s main brief, 4 TTABVUE 9.
30 Caldentistry.com, Nov. 21, 2024 Office Action at 6 (all with emphasis added).
31 5Dent.com, Id. at 12.

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• “[Teeth whitening] trays are made by dentists using imprints of your teeth,
and a high-quality whitening gel is then placed within.”32
• “Our collection is made by dentists, for you. The Linhart line of oral care
products is based on 10 years of development within our global patient
pool….”33
• “Duo toothpaste is made by dentists in the United States.”34
Applicant critiques the Examining Attorney’s third-party examples “because they
identified unrelated goods and services such as headlights and earplugs rather than
Applicant’s actual goods,” and because “three of the cited references were from
websites in the United Kingdom and Australia and thus did not demonstrate how
U.S. consumers would associate Applicant’s Mark with Applicant’s goods….”35
But the examples quoted above are for dental products advertised in the United
States. Descriptiveness may be demonstrated by “evidence of third parties that use
the term … to describe [goods or] services that are similar to those identified in [the]
application,” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1378 (Fed.
Cir. 2012), illustrating how “descriptive words must be left free for public use.” In re
Colonial Stores, Inc., 394 F.2d 549, 551 (CCPA 1968), quoted in In re Styleclick.com
Inc., No. 75459912, 2001 WL 245735, *5 (TTAB 2001).
32 ProDentalMN.com, Nov. 21, 2024 Office Action at 25.
33 SpaandBeautyToday.com, Id. at 94.
34 ToothFeed.com, Id. at 100.
35 Applicant’s main brief, 4 TTABVUE 6.

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Applicant then presents its own third-party evidence: approximately two hundred
USPTO registrations and allowed applications containing “MADE BY _____” without
disclaimers.36 Applicant highlights the following examples in its brief:
36 Nov. 19, 2024 Response to Office Action at 29-413.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077

JEWELRY MADE BY
ME (“JEWELRY”
disclaimed)

5871705

CL 14: Women's jewelry, including
pendants, lockets, charms, beads,
necklaces, bracelets, rings, and pins:
jewelry, namely, Victorian and coastal
themed jewelry collections; earring
backs: key rings and key chains; jewelry
findings, namely, magnetic clasps, pin to
pendant converters, and chain extenders;
and jewelry making instruments,
namely, earring backs, clasps, links, and
chains

JEWELRY MADE
BY ME, LLC

MADE BY ME!

4252348

CL 16: Craft and activity kits for
children, namely, hobby paint kits to
paint and personalize bird houses and
piggy banks; craft and activity kits for
children, namely, paint and clay or
plaster kits: craft and activity kits for
children for decorating a backpack,
namely, markers and a backpack; craft
and activity kits for children for painting
and decorating friendship stones,
namely, paint, paint brushes, plaster and
molds; craft and activity kits for children
for painting and decorating a clock,
namely, paint, paint brushes and a clock:
craft and activity kits for children for
painting and decorating toy cars,

Horizon Group USA,
Inc

namely, paint, paint brushes and toy
cars; craft and activity kits for children
for painting and decorating magnets,
namely, paint, paint brushes and
magnets; craft and activity kits for
children for painting, decorating and
burning wood objects, namely, paint,
paint brushes, wooden objects and wood
burning iron; craft and activity kits for
children for painting and decorating a
time capsule, namely, paint, paint
brushes and a time capsule; craft and
activity kits for children for painting and
decorating toy pets, namely, paint, paint
brushes and toy pets: craft and activity
kits for children for painting and
decorating bobble heads object, namely,
paint, paint brushes and bobble head
objects: craft and activity kits for
children for painting and decorating
figurines, namely, paint, paint brushes
and figurines; craft and activity kits for
children for creating sand art, namely,
sand and a container; craft and activity
kits for children for decorating frames,
namely, paint, brush and frame; arts and
craft kits containing various
combinations of selected art and craft
supplies, namely, paint, paint brushes
and clay

-16-

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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37
Applicant argues that “over 200 prior registrations for marks including “MADE
BY” (or equivalent terms) with no disclaimer signify a lack of consumer perception of
the phrase “MADE BY” as being descriptive of the goods and services identified in
those registrations.”38 Applicant continues, “just as consumers of MADE BY TWO
HAIRY GUYS body hair removal wax understand that the product was not actually
manufactured by two hairy guys, so too will consumers understand that MADE BY
DENTISTS dental products were not literally manufactured by dentists.”39
The Examining Attorney rejoins that “[t]he descriptive nature of the wording
‘MADE BY’ combined with ‘DENTISTS’ is clear. The same cannot be said of the third-
party registrations, which involve a variety of goods and services. For example, the
mark in U.S. Registration No. 4125280 is ‘MADE BY MOOS,’ in Class 29, for ‘cheese.’
Without the benefit of the full record, it is not clear what ‘moos’ are and whether they
37 Applicant’s main brief, 4 TTABVUE 15-16.
38 Applicant’s main brief, 4 TTABVUE 4.
39 Applicant’s reply brief, 9 TTABVUE 5.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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make cheese.”40 Applicant answers that “the Examining Attorney’s focus on MADE
BY MOOS is in no way representative of the majority of the third-party registrations
relied upon by Applicant….”41
We find upon review of Applicant’s cited third-party registrations that most have
little or no probative value. As the case law above reveals, an applied-for mark may
be deemed descriptive in part or in whole if it immediately conveys knowledge of a
feature and characteristic of the goods: i.e., that they are designed and purveyed by
certain types of providers who, by virtue of their profession, possess some apparent
skill or expertise that may be perceived or advertised as rendering the goods useful
or appealing. Major League Umpires, 2001 WL 777067; Recreational Equipment, 2020
WL 6938376, at *3-4.
Most of Applicant’s examples of third-party marks do not meet this standard. For
example, third-party marks such as MADE BY MOOS, MADE BY CHICKPEAS,
NOT CHICKS, KORKO MADE BY NATURE, MADE BY THE WATER, MADE BY
CHICKS, MADE BY GHOSTS, FKUR PLASTICS – MADE BY NATURE!, OUR
WORLD IS STILL MADE BY HAND, and HEY HONEY! MADE BY HAPPY BEES
do not refer to any designers, much less a class or type of purveyors of the goods. And
third-party marks such as MADE BY TWO HAIRY GUYS, JEWELRY MADE BY
ME, MADE. BY LIA, MADE BY JOHNNY, HAND MADE BY MARKETTA, MADE
BY HUMANS, MADE BY ALIENS, MADE BY DESIGN, MADE BY MANY, MADE
BY US, MADE WITH YOU, and MADE BY ME! do not identify a type of professional
40 Examining Attorney’s brief, 6 TTABVUE 8.
41 Applicant’s reply brief, 9 TTABVUE 7.

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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or entity. Thus, most of Applicant’s registered third-party marks do not indicate the
provenance and characteristics of their identified goods.
Only a few of Applicant’s examples are relevant under the Major League Umpires
standard. Registration No. 3609120, MADE BY FIREMEN FOR FIREMEN (a slogan
for BLACKJACK helmet flashlight holders) identifies the profession, but was
amended to disclaim “FIREMEN” at the examining attorney’s instance, thereby
freeing up the term for use by others. Registration No. 6493302, MADE BY VETS.
CRAVED BY PETS (a slogan of NUTRI-VET nutritional supplements for animals)
identifies the profession by shortening “veterinarians,” and contains no disclaimers;
but its prosecution history contains no refusals or amendments, so we are left to guess
whether the examining attorney considered Major League Umpires applicable,
regarded the mark as unitary, or had some other reasoning.
In sum, Applicant’s examples of relevant third-party registrations are few in
number, and result from the decisions of other examining attorneys, not the Board.
As the Board has recently declared:
In any event, prior decisions and actions of other examining attorneys in
registering other marks have little evidentiary value and are not binding
on the USPTO or the Board. … A mark that is merely descriptive does not
become registrable simply because other seemingly similar marks appear
on the register. … The third-party registrations for various app icons were
decided on their own records and have minimal probative value. Any effort
to draw an analogy between the third-party registrations and Applicant's
proposed mark is far less meaningful than the detailed analysis we have
given to the specific aspects of Applicant’s proposed mark.
Hangzhou v. Shanghai, 2024 WL 5265081, at *15 (internal citation omitted).
The Federal Circuit has stated that “this court encourages the PTO to achieve a
uniform standard for assessing registrability of marks. Nonetheless, the Board (and

Serial Nos. 79380381 (parent), 79382237, 79383214, 79384076, and 79384077
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this court in its limited review) must assess each mark on the record of public
perception submitted with the application.” In re Nett Designs, Inc., 236 F.3d 1339,
1342 (Fed. Cir. 2001). Accordingly, “[t]he Board has recognized that consistency is
highly desirable, but consistency in examination is not itself a substantive rule of
trademark law....” In re Korn Ferry, 2024 WL 3219482, *5 n.13 (TTAB 2024) (cleaned
up).
Based on the foregoing, we have no doubt that consumers who see the term
MADE BY DENTISTS in Applicant’s marks, used on the identified goods, would
immediately understand a significant characteristic is that the goods are designed
and provided by dentists. The definitions of the words MADE and BY show their
descriptiveness in this context, and as the above evidence makes clear, the
combination of MADE BY and DENTISTS indicates skilled professional providers of
the goods. Accordingly, the term MADE BY DENTISTS in each of the marks is merely
descriptive of the identified goods in both classes.
Because the phrase MADE BY DENTISTS is merely descriptive as a whole, it
must be disclaimed as a whole. In re Wanstrath, 1987 WL 123913, *2 (Comm’r Pats.
1987); see, e.g., Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc., 1984
WL 63174, * 7 n.3 (TTAB 1984) (CERTIFIED HEARING AID AUDIOLOGIST found
to be “a unitary expression that should be disclaimed in its entirety”). See generally
TMEP § 1213.08(b) (“Disclaimer of Unregistrable Matter in Its Entirety). The record
supports a finding that MADE BY DENTISTS is a merely descriptive grammatical
whole. The third-party website evidence provides further support for this finding,
because it shows common usage of “made by dentists” as a complete term describing

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dental products designed and provided by dentists. The combination of the terms
MADE, BY and DENTISTS, does not convey any meaning or connotation different
from its individual components. That is, when viewed in relation to Applicant’s goods,
the combined components MADE, BY and DENTISTS retain their merely descriptive
significance. Oppedahl & Larson, 373 F.3d at 1174.42
III. Conclusion
For the foregoing reasons, we find that the literal portion of Applicant’s proposed
marks is merely descriptive of its goods, and must be disclaimed in its entirety. 15
U.S.C. § 1056(a). We do not reach the Examining Attorney’s other ground for refusal.
In re Princeton Equity Grp., LLC, No. 97397212, 2025 WL 1638891, *4 (TTAB 2025).
Decision: The refusal to register Applicant’s proposed marks in both classes
absent a disclaimer of their literal portions is affirmed. However, if Applicant
submits disclaimers of “MADE BY DENTISTS” to the Board within thirty (30) days
of the mailing date of this decision, the requirements for disclaimers will have been
met and the applications will proceed. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).
The disclaimers should read as follows: “No claim is made to the exclusive right to
use MADE BY DENTISTS apart from the mark as shown.”
42 Also, the placement of the words to the left of each design makes the wording visually
prominent and easy to separate from the design of each mark, such that none of the marks
is unitary in its entirety. See Dena v. Belvedere, 950 F.2d 1555 1561(finding EUROPEAN
FORMULA and design for cosmetics not unitary since the “elements are not so merged
together that they cannot be regarded as separate” and the proximity of the words to the
design feature “does not endow the whole with a single, integrated, and distinct commercial
impression.”); In re Lego Juris A/S, No. 88698784, 2022 WL 1744613 (TTAB 2022). Moreover,
the words MADE BY DENTISTS are not so stylized as to create an impression on purchasers
separate and apart from the descriptive meaning of the words. See In re Cordua Rests., Inc.,
823 F.3d 594, 606 (Fed. Cir. 2016).