IN RE KELLY-MOORE PAINT CO., INC., 77308345 (TTAB 3-2-2011)
In re Kelly-Moore Paint Co., Inc.
Serial No. 77308345United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 2, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
John E. Kelly of Kelly Lowry Kelly, LLP for Kelly-Moore Paint Co., Inc.
Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Walters, Cataldo and Lykos, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
Kelly-Moore Paint Co., Inc. filed an application under Section 1(b) of the Trademark Act to register in standard characters on the Principal Register the mark ENVIRO-COAT for goods identified as follows:
printed color guides for painting instructions; paint color swatch cards; printed educational materials, namely, booklets, pamphlets, flyers and magazines directed to colors; printed materials, namely, booklets, pamphlets, flyers and magazines to aid artists and architects in selecting colors in the fields of color selection and interior design; printed color posters; color albums; scrap booking albums; boxes for holdingPage 2
architects' and artists' color and painting tools and materials; printed educational materials directed to colors and vintage houses, namely, booklets, books, pamphlets, flyers and magazines; printed educational materials, namely, booklets, pamphlets, flyers and magazines to assist paint store customers in selecting colors and color combinations; paint rollers; paint application rollers; paint brushes; paint applicators; paint kits comprised of paints, brushes, paint rollers, paint trays; paint stick markers; paint stirrers; and paint paddles — said goods being distributed through channels of trade consisting exclusively of applicant's own network of retail paint stores
in Class 16 (Serial No. 77308345). After the application was approved for publication and published for opposition, applicant submitted a statement of use accompanied by a scanned copy of the front and back of one of its pamphlets as its specimen of use. The specimen is set forth below. (front and back)
Page 3
The examining attorney refused registration under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, on the ground that the specimen shows use of the mark in connection with paint and, as a result, fails to show use of the applied-for mark in commerce as a trademark for the identified goods. In response, applicant submitted arguments in support of registration. In addition, applicant submitted the substitute specimen displayed below, also identified as a pamphlet or flyer.
(front and back)
When the examining attorney made final his refusal to register, applicant appealed. Applicant and the examining attorney filed main briefs and applicant filed a replyPage 4
brief.
Applicant argues that its identification of goods includes several types of pamphlets or flyers; that both its original and substitute specimens are pamphlets or flyers of the type identified in its recitation of goods; that, as such, the specimens are acceptable inasmuch as both display the mark ENVIRO-COAT on goods identified in its application. The examining attorney, on the other hand, argues that while the specimens of record display the ENVIRO-COAT mark, they “do not show use of the mark on or in connection with the goods because the mark on the specimens refers to paint discussed in the specimens, but not the goods identified in the application.”[fn1] Thus, the examining attorney contends that while the ENRIVO-COAT mark is used on the specimens for paints, “the proposed mark is not being used to indicate the source of any of the goods listed in the applicant’s identification”[fn2] of goods.[fn3]Page 5
Applicant argues in reply that its primary products are paints and paint supplies; that its specimens are pamphlets and flyers discussing such products as listed in its identification of goods; and that, as a result, its specimens display the mark on certain of the goods, i.e., pamphlets and flyers, identified in its application.
Section 45 of the Trademark Act of 1946, 15 U.S.C. § 1127, defines “use in commerce” in relevant part as follows:
For purposes of this chapter, a mark shall be deemed to be in use in commerce —
(1) on goods when —
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale. . . .
In accordance therewith, Trademark Rule 2.56(b)(1) provides the following:
A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impractical to place the mark on the goods, packaging for the goods, or displays associated with the goods.
In this case, applicant asserts that both its original and substitute specimens are pamphlets or flyers and that, as such, the specimens show use of the ENVIRO-COAT mark asPage 6
a trademark on the goods themselves. The goods identified in the involved application include the following:
printed educational materials, namely, booklets, pamphlets, flyers and magazines directed to colors;
printed materials, namely, booklets, pamphlets, flyers and magazines to aid artists and architects in selecting colors in the fields of color selection and interior design;
printed educational materials directed to colors and vintage houses, namely, booklets, books, pamphlets, flyers and magazines;
printed educational materials, namely, booklets, pamphlets, flyers and magazines to assist paint store customers in selecting colors and color combinations;
… — said goods being distributed through channels of trade consisting exclusively of applicant's own network of retail paint stores.
It is applicant’s position that its specimens are pamphlets or flyers of the type identified in its application.
Turning to the specimens of record, there is no dispute that the applied-for mark, ENVIRO-COAT, appears on both the original and substitute specimens. However, both specimens appear to be advertisements for applicant’s paint products. The original specimen contains specifications for the composition of applicant’s paint; suggested application methods; a color range of “White, off-whites custom tints” and “Off-white” primer; available sizes; method of clean up; and promotional information regardingPage 7
the quality, versatility and health advantages thereof. Similarly, the substitute specimen contains essentially the same technical and promotional information regarding applicant’s paints; precautions regarding exposure and disposal; and warranty information. However, the specimens merely promote and detail the composition of applicant’s paint, and do not contain the information specified in the identification of goods.
Unlike the pamphlets and flyers identified in the application, the proffered specimens contain no information “directed to colors;” “to aid artists and architects in selecting colors in the fields of color selection and interior design;” “directed to colors and vintage houses;” or “to assist paint store customers in selecting colors and color combinations.” Indeed, the specimens do not discuss the available colors of applicant’s paints at all beyond indicating that the color range consists of white, off-white, and custom tints. In short, all of the information contained in both the original and substitute specimens promote and advertise applicant’s paint products and contain technical specifications therefor. As a result, we find that both the original and substitute specimens appear to merely advertise goods, namely, paint products, that fall outside the identification of goods.Page 8
We note that applicant does not argue that its specimens display use of its mark on its goods identified as “paint kits comprised of paints, brushes, paint rollers, paint trays.” Nor, as discussed above, does an examination of the specimens support such a finding. Furthermore, even if we were to view applicant’s specimens as displays associated with the goods, they would appear to be associated with paint products that, as noted above, are not included among its identified goods. Cf., for example, In re Shipley Co., Inc., 230 USPQ 691(TTAB 1986).
One final comment made by applicant requires addressing. Applicant maintains that it previously submitted a specimen “accepted under very similar circumstances that resulted in issuance of a U.S. Reg. No. 3,573,176 for GREEN COAT.”[fn4] While we are not unsympathetic to applicant’s situation, we simply are not bound by the decisions of examining attorneys. The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); and In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).Page 9
Decision: the refusal of registration under Trademark Act Sections 1 and 45 is affirmed.
[fn1] Examining attorney’s brief, unnumbered page 3.
[fn2] Id.
[fn3] The examining attorney presents as two separate refusals his arguments that applicant’s specimens fail to show use of the mark in connection with any of the goods identified in the application and that the specimens fail to show use of the mark as a trademark for the identified goods. We note, however, that in his Office actions the examining attorney’s second point is predicated upon the first and that both rely upon the same sections of the Trademark Act and Rules as their bases. Accordingly, we have construed them as a single refusal for purposes of our analysis herein.
[fn4] Applicant’s brief, p. 3.