SWIMC, Inc.

Trademark Trial and Appeal BoardJul 26, 2007

No. 76600804 (T.T.A.B. Jul. 26, 2007)

Mailed: July 26, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SWIMC, Inc.1 ________ Serial No. 76600804 _______ Frank P. Presta of Nixon & Vanderhye P.C. and Deron A. Cook, Esq., of SWIMC, Inc. for applicant.2 Edward Fennessy, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Seeherman, Grendel and Holtzman, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: 1 The application was assigned from Duron, Inc., the original applicant, to SWIMC, Inc., and the assignment has been recorded with the Assignment Division of the USPTO. 2 The attorney of record for applicant is Frank P. Presta of Nixon & Vanderhye P.C., 1100 North Glebe Road, 8th Floor, Arlington VA 22201-4714. Deron A. Cook of SWIMC, Inc. filed the appeal brief in this case and listed the correspondence address as Robert E. McDonald c/o The Sherwin-Williams Company, 101 Prospect Avenue NW, 1100 Midland Bldg. - Legal Dept., Cleveland, OH 44115-1075. A courtesy copy of this decision will be sent to Mr. McDonald. However, absent a written request from applicant to change the correspondence address in accordance with Trademark Rule 2.18, Mr. Presta's address will remain the correspondence address of record. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76600804 2 Applicant, SWIMC, Inc., seeks to register the mark PRO KOTE SUPREME (in standard character form) for "interior and exterior paints" in Class 2.3 The trademark examining attorney has refused registration under Section 2(d) of the Trademark Act on the ground that applicant's mark, when applied to applicant's goods, so resembles the mark PRO-COAT (in typed form) for "sealer coatings for use on wood; wood varnishes; wood lacquers in the nature of a coating; coatings in the nature of adhesion promoters for other wood coatings" (in Class 2) as to be likely to cause confusion.4 When the refusal was made final, applicant appealed. Briefs have been filed. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 3 Application Serial No. 76600804, filed July 6, 2004, based on an allegation of first use and first use in commerce "on or about 1987." The word "coat" is disclaimed. Applicant is the owner of related application Serial No. 76600805 for the mark PRO KOTE for the same goods which is also currently on appeal before the Board. Because the two applications were handled by different examining attorneys who created different records in each case, and since the applications involve certain factual differences, the appeals in these cases have been decided in separate opinions. 4 Registration No. 2892968, issued on October 12, 2004. The examining attorney had initially refused registration under Section 2(d) on the basis of an additional registration (No. 2221557). That registration was subsequently cancelled by the Office and the refusal as to the registration was withdrawn. Serial No. 76600804 3 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We turn first to the goods, keeping in mind that the question of likelihood of confusion is determined on the basis of the identification of goods set forth in the application and registration, without limitations or restrictions as to the actual nature of the goods, their channels of trade and/or classes of purchasers that are not reflected therein. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Applicant argues that wood varnishes and lacquers have a very different surface appearance and utility than applied paints. Applicant maintains that whereas house paints are typically tinted to a color selected by the consumer, wood varnishes and lacquers are generally not. In addition, applicant argues that the products are intended to meet entirely different, and not overlapping needs, concluding that consumers are likely to exercise caution in making sure that the right product is selected. Serial No. 76600804 4 Applicant's and registrant's goods may be specifically different and have different compositions. However, the question is not whether purchasers can differentiate the goods, but rather whether purchasers are likely to confuse the source of the goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, goods need not be similar or competitive in nature to support a finding of likelihood of confusion. Id. It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, if similar marks are used thereon, give rise to the mistaken belief that they emanate from or are associated with, the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Registrant's goods are varnishes, lacquers and sealer coatings all for use on wood surfaces. Applicant's goods are interior and exterior paints which, by the identification, are not limited to use on any particular type of surface and therefore may include use on wood surfaces. The respective goods are at least complementary, if not overlapping, products. They are all in the nature of decorative and/or protective coatings that can be applied to the same interior or exterior wood surfaces such as decks, floors, railings and furniture. It is clear that these closely related products, if offered under Serial No. 76600804 5 similar marks, would be perceived as emanating from the same source. We note that the examining attorney has submitted over 40 use-based, third-party registrations showing that, in each instance, a single entity has adopted the same mark for paints and one or more of the products identified in the cited registration. The third-party registrations, while not evidence of use of the marks in commerce, have probative value to the extent that they suggest that the respective goods are of a type which may emanate from the same source. See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). In addition, it can be seen from a number of these registrations that paints are often described as coatings, and that coatings such as varnishes, stains and sealers fall into the general category of paint products. For example, in Registration No. 1619309 for the mark LAZON, the "ready mixed interior and exterior paints" include "paste paints, varnishes, lacquers, paint enamels and preservatives for wood and metal surfaces"; in Registration No. 1706127 for the mark WEATHER-BOS, the "interior and exterior paints" include "preservative coatings for wood"; in Registration No. 2258500 for the mark OPTIMA, the "interior and exterior paints, wood stains and architectural coatings" include "paints, varnishes, sealers, and primers"; and in Registration No. 2841150 for the mark BOB VILA, the "sealer coatings" consist Serial No. 76600804 6 of "paint for use in home maintenance, varnishes, lacquers, wood stains, and paint sealers." It can also be seen that applicant itself has registered or has been assigned registrations for marks covering both types of goods: Registration No. 1877325 for the mark MINWAX lists both "wood stains, penetrating wood sealers in the nature of paints and coatings" as well as "interior and exterior paints"; Registration No. 2396358 for the mark PERMALAST lists "clear and pigmented coatings in the nature of interior and exterior paints, wood stains and varnishes"; Registration No. 2476192 for the mark WALL EXPRESS lists "clear and pigmented coatings in the nature of interior and exterior paints, wood stains and varnishes"; and Registration No. 2691269 for the mark BEYOND PAINT. lists "clear and pigmented coatings used in the nature of interior and exterior paints, wood stains and varnishes." Because the goods are closely related and there are no limitations in the application or registration, we must assume that the respective products are sold through all normal channels of trade for those goods, including home improvement stores and paint product stores, and that the goods reach all the usual purchasers, including ordinary consumers. In other words, we must assume that the channels of trade and the purchasers for the goods would be the same. See Interstate Brands Corp. v. McKee Serial No. 76600804 7 Foods Corp., 53 USPQ2d 1910 (TTAB 2000); and In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994). It is reasonable to assume, as applicant claims, that the ordinary consumers who would purchase applicant's and registrant's products would exercise some degree of care in selecting the products. However, even careful purchasers can be confused as to source under circumstances where similar marks are used on closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers...are not infallible."). We turn then to a comparison of applicant's mark PRO KOTE SUPREME and registrant's mark PRO-COAT. Applicant argues that the word SUPREME in its mark is as important as the term PRO KOTE, and that the presence of this word together with the misspelling of the word "coat" as KOTE in its mark distinguishes the two marks in sound, appearance and in commercial impression. Applicant contends that the term SUPREME is "one-half of the mark and shares equally with, if not more than 'PRO' in defining the marks commercial impression as reflecting a high-quality, superior, better than simply professional, product." Brief, pp. 3-4. Applicant also contends that consumers are going to see product labels before making purchases and that therefore the Serial No. 76600804 8 "obvious differences" in appearance "will not be missed." Brief, p. 5. In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The phrase PRO-COAT is registrant's entire mark. The phonetically identical phrase PRO KOTE is a significant component of applicant's mark PRO KOTE SUPREME. In addition, PRO-COAT and PRO KOTE have the identical meaning and create the same overall commercial impressions in relation to the respective goods, both suggesting professional quality finishes. While applicant's mark also includes the term SUPREME, that term is merely laudatory and at least highly suggestive of applicant's goods. We take judicial notice of the definition of "supreme" in Collins English Dictionary (HarperCollins Publishers 2000), as meaning "of highest quality, importance, etc."5 As the dictionary definition shows, and as applicant itself admits, SUPREME indicates the superior quality of the product. The presence of that word does not change the meaning or commercial impression of 5 From credoreference.com. The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 76600804 9 PRO KOTE in any significant way, but rather it simply informs applicant's customers that this is a superior version of its PRO KOTE line of paint products. There are some visual differences in the marks as applicant points out. Registrant's mark contains a hyphen; and applicant's mark contains a misspelling of "coat" as "KOTE" and an additional word. However, when we consider that the comparison of the marks is not necessarily made on a side-by-side basis and that recall of purchasers is often hazy and imperfect, the differences in the marks are not so significant that they are likely to be remembered by purchasers when seeing these marks at different times in connection with closely related, complementary goods. Consumers familiar with registrant's mark PRO-COAT for wood varnishes, lacquers and sealer coatings, upon encountering applicant's mark PRO KOTE SUPREME at a later time on closely related paints, are likely to simply assume that the mark identifies a superior line of PRO-COAT products coming from registrant. We recognize that registrant's mark PRO-COAT is suggestive of registrant's varnishes and coatings, and therefore not entitled to the broadest scope of protection.6 However, the mark 6 Applicant argues, referring to printouts of five third-party registrations attached to its appeal brief, that the registered mark is weak and entitled to only a narrow scope of protection. The examining attorney has properly objected to this untimely submission. See Trademark Rule 2.142(d). Accordingly, the third-party registrations Serial No. 76600804 10 is at least entitled to protection from registration of this highly similar mark for closely related goods. See In re Colonial Stores, Inc., 216 USPQ 793 (TTAB 1992). See also King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks.) Finally, we point out that the asserted absence of evidence of actual confusion does not, as applicant claims, weigh in favor of applicant. We have no information regarding the nature or extent of applicant's and registrants' use or whether a meaningful opportunity for actual confusion ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Thus, we consider this factor to be neutral. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). In view of the foregoing, and because similar marks are used in connection with closely related goods, we find that there is a likelihood of confusion. have not been considered. Even if we had considered this evidence, however, it would not change the result in this case. First, third- party registrations are not evidence that the marks shown therein are in use or that the public is aware of them. See AMF Incorporated v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973) ("little weight is to be given such registrations in evaluating whether there is likelihood of confusion."). Further, none of the marks in those third- party registrations is as similar to the cited mark as applicant's mark. Serial No. 76600804 11 Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.