Scorpion Protective Coatings, Inc.

Trademark Trial and Appeal Board

Feb 27, 2018

No. 86617791 (T.T.A.B. Feb. 27, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: February 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Scorpion Protective Coatings, Inc.
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Serial No. 86617791

Heather A. Sapp and Ruth Khalsa of Raj Abhyanker, P.C.
for Scorpion Protective Coatings, Inc.

Angela M Micheli, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Cataldo, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Scorpion Protective Coatings, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark CREATE PAINT (in standard characters) for
Paints for creating dry erase surfaces; paints, in
International Class 2.1
The word “PAINT” has been disclaimed.

1 Application Serial No. 86617791was filed on May 2, 2015, based upon Applicant’s allegation
of first use of the mark and first use in commerce since October 1, 2014 under Section 1(a) of
the Trademark Act.
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Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the basis of a registration for the mark set forth below, PAINT ’N
CREATE (stylized with design)

for “paints” in International Class 2.2 The Examining Attorney asserts that
Applicant’s mark so resembles this registered mark that, as used in connection with
Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive.3
When the refusal was made final, Applicant appealed. We reverse the refusal to
register.
I. Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2 Reg. No. 4789364, issued August 11, 2015 to ArtSkills, Inc. The registration includes the
following description of the mark: “The mark consists of the words ‘PAINT ’N CREATE’ in
stylized font inside a stylized design of a paint splash. The words ‘PAINT ’N” are stacked
above the word ‘CREATE.’ A stylized design of bubble appears above the words.” Color is not
claimed as a feature of the mark. The registration also includes goods in Class 16, which are
not relevant to our determination.
3 Registration was also refused on the basis of a likelihood of confusion with Registration No.
3959416 for the mark CRE-8 (in standard characters) for “coatings in the nature of paints for
creating dry-erase writing surfaces” in International Class 2, which was cancelled on
December 15, 2017 for failure to file a declaration of use. Accordingly, this refusal is
dismissed as moot with regard to Registration No. 3959416.

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2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity or dissimilarity and nature of the goods, class of purchasers
and channels of trade.
We start by evaluating the second and third du Pont factors, the similarity and
nature of the goods; and the channels of trade and class of purchasers. Applicant
argues that the goods in the cited registration are different from Applicant’s goods
since they are “used for children’s paint.” Appeal Brief, 4 TTABUVE 17. The
relationship of the goods must be determined by the identifications of the goods in
the application and cited registration. In re Total Quality Grp. Inc., 51 USPQ2d 1474,
1476 (TTAB 1999). As identified, the goods are identical in part, and otherwise legally
identical.
When determining the relationship between the goods,
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application. This is so regardless of what the
record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the
class of purchasers to which sales of the goods are directed.
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161-62 (Fed. Cir. 2014) (citations omitted).
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Applicant’s and Registrant’s goods, both identified as “paints,” are identical. In
addition, Applicant’s “paints for creating dry erase surfaces” are subsumed under the
more broadly identified “paints” identified in the cited registration. Since the goods
are identical and there is no restriction in the channels of trade, “they are presumed
to travel in the same channels of trade to the same class of purchasers.” In re Viterra
Inc., 671 F.3 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Therefore, the second and third du Pont factors favor a finding of likelihood of
confusion.
B. Similarity of marks.
The marks at issue are CREATE PAINT and PAINT ’N CREATE (stylized with
design), as set forth below.

To determine whether the marks are similar, we must consider the appearance,
sound, connotation and commercial impression of the marks in their entireties. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Further, when evaluating a composite mark containing both words and designs,
such as the cited mark, the verbal portion of the mark is typically the one most likely
to indicate the origin of the goods to which it is affixed because it is the portion of the
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mark that consumers would use to refer to or request the goods. In re Viterra Inc.,
101 USPQ2d at 1908. See also In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1593-
95 (TTAB 1999).
The Examining Attorney argues that the marks are similar in appearance, sound
and meaning since “both marks are comprised of the same wording, CREATE PAINT
and PAINT ’N CREATE, which is the dominant element of the [R]egistrant’s mark
and the dominant and only element of [A]pplicant’s mark.” Examining Attorney Brief,
6 TTABVUE 5. We agree that the marks at issue contain the same words, CREATE
and PAINT, with the positioning transposed, and that the dominant element of
Registrant’s mark is the literal phrase, PAINT ’N CREATE, however we do not agree
that the marks have the same or similar meanings.
Applicant argues that the cited mark “creates a vastly different commercial
impression than that of Applicant’s mark.” Appeal Brief 4 TTABVUE 12. In
particular Applicant contends that the use of the apostrophe “n” in Registrant’s mark
“is very unlikely to occur outside of the context of children’s products.” Id. Although
Applicant had not submitted evidence supporting this contention, the appearance of
the mark suggests that Registrant’s products are for children, with words “PAINT ’n
CREATE” in a juvenile font combining upper and lower case letters in the same word
“PaiNT ’n CReATe,” on top of a stylized cloud, all of which look like they could have
been drawn by children.
In addition, Applicant argues that in its mark, the word “create” is either an
adjective or a verb modifying the word “paint.” We agree that in Applicant’s mark the
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word “create” does modify the word “paint” and we find that it connotes the creation
of paint. To the contrary, we find that the cited mark, PAINT ‘N CREATE in the
stylized font within a cloud, discussed supra, connotes the creation of artwork by
children, using paint.
“[T]he reversal in one mark of the essential elements of another mark may serve
as a basis for a finding of no likelihood of confusion only if the transposed marks
create distinctly different commercial impressions.” In re Nationwide Indus. Inc., 6
USPQ2d 1882, 1884 (TTAB 1988), (emphasis added). See also Bank of Am. Nat’l Trust
and Sav. Assn. v. Am. Nat’l Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978), and
cases cited therein. Cases on point include In re Mavest, Inc., 130 USPQ 40 (TTAB
1961) (finding no likelihood of confusion between the marks TOWN SQUIRES and
SQUIRETOWN because transposition of words creates distinctly different
commercial impressions); and In re Akzona Inc., 219 USPQ 94 (TTAB 1983) (finding
no likelihood of confusion between SILKY TOUCH for synthetic yarns and TOUCH
O’ SILK for men’s dress shirts, sport shirts, and pajamas because of different
commercial impressions). As discussed supra, the commercial impressions of
Applicant’s mark and the cited mark are different. Therefore, we do not find the
marks to be similar when compared in their entireties.
II. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, whether discussed herein or not, we find that despite the identical nature of
Applicant’s and Registrant’s goods, Applicant’s mark CREATE PAINT, in standard
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characters, is not likely to cause confusion with the cited mark PAINT ’N CREATE
(stylized with design) , when used in connection with “paints.” See Kellogg
Co. v. Pack’em Enters. Inc., 951 F2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991).
Decision: The refusal to register Applicant’s mark CREATE PAINT is reversed.