Kelly-Moore Paint Co., Inc.

Trademark Trial and Appeal Board

Mar 2, 2011

No. 77308345 (T.T.A.B. Mar. 2, 2011)

Mailed: March 2, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kelly-Moore Paint Co., Inc.
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Serial No. 77308345
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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).
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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 holding
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77308345
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)
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 reply
Ser No. 77308345
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.”1 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”2 of goods.3

1 Examining attorney’s brief, unnumbered page 3.
2 Id.
3 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.

Ser No. 77308345
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 as
Ser No. 77308345
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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 regarding
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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.
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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.”4 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).

4 Applicant’s brief, p. 3.

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Decision: the refusal of registration under Trademark
Act Sections 1 and 45 is affirmed.