The Sherwin-Williams Co.

Trademark Trial and Appeal Board

May 31, 2002

No. 75860737 (T.T.A.B. May. 31, 2002)

5/31/02

Paper No. 13
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Sherwin-Williams Company
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Serial No. 75/860,737
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Vivien Y. Tsang for The Sherwin-Williams Company.

Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Hairston, Wendel and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

This is an appeal from the Trademark Examining
Attorney’s final refusal to register the mark PALETTE MATCH
for “interactive computer programs and computer software
for use in creating, displaying and visualizing paint
colors and decorating features.”1

1 Serial No. 75/860,737, filed November 30, 1999. The
application is based on an intent-to-use under Trademark Act
Section 1(b).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/860,737
2
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that, as applied to the identified goods, the mark is
merely descriptive of them.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
According to the Examining Attorney, applicant’s
computer software is designed to “provide consumers with
the means of determining a range of contrasting or
complementary colors based on a consumer’s selection of a
color or colors.” Thus, the Examining Attorney argues that
the mark PALETTE MATCH describes the function of
applicant’s goods which is to establish “the palette or
range of colors that ‘work’ or match with a given color
choice.” (Brief, p. 3).
In support of the refusal to register, the Examining
Attorney made of record definitions of the words “palette”
and “match” taken from Merriam-Webster’s Collegiate
Dictionary (10th ed. 1993). The word “palette” is defined
as “1: a thin oval or rectangular board or tablet that a
painter holds and mixes pigments on; the set of colors put
on the palette; 2: a particular range, quality, or use of
color; a comparable range, quality, or use of available
elements especially in another art (music).” The word
Ser No. 75/860,737
3
“match” is defined as, inter alia, “a pair suitably
associated (carpet and curtains are a ~).” In addition,
the Examining Attorney submitted excerpts from the NEXIS
database wherein the words “palette” and “match” are used
in connection with paints and/or home decorating.2 The
following are representative examples:
If this is a crusade, its most effective weapon
may be the computer. Austin sees a designer
being able to select two distinct colors and the
computer producing a complete palette to match
the colors of leaves, bark, mulch, paving,
garden furniture, house trim and the rest.
(The Orlando Sentinel; June 5, 1999);

In the kitchen, a 1930’s turquoise Hoosier
cabinet (a free-standing pantry) is filed with
Fiesta ware, the colorful dinnerware from the
1930’s. “You could say the Fiesta ware is our
color palette – we match everything in the house
to it,” Bert said.
(The Baltimore Sun; April 18, 1999); and

2 We note that the Examining Attorney did submit several Nexis
excerpts wherein the words “palette” and “match” are used in
connection with computer software. It would appear from these
articles that the word “palette” has become a term of art in the
computer field that is immediately identifiable with subsets of
displayable colors. In fact, one excerpt the Trademark Examining
Attorney pulled from an Apple Macintosh Web site uses the exact
combination (“palette match”) in a highly technical sense to
explain Mac’s routine for managing the colors of pixels between
different computerized applications.
While applicant’s goods are computer software, these highly
technical excerpts from Nexis have little probative value because
both words in applicant’s mark are being used in the more
traditional senses of these words, namely “palette” to suggest a
combination of colors and “match” as a verb form meaning “provide
a harmonious counterpart.” Applicant is not using this
designation in the highly technical context of computer graphics
system software finding the closest or best available pixel
colors.
Ser No. 75/860,737
4
In real life, he has designed his getaway for
easy upkeep. The retreat is done in a sandy
palette that matches his pet Weimaraner. It
does have white floors.
(The Washington Post; August 20, 1998).

Further, the Examining Attorney submitted the following
information about applicant’s goods downloaded from
applicant’s Web site:
With Palette Match, a click of your mouse can
find the color you want and tell you where to
get it before you open a single can of paint.
Your old paintbrush could never do that.
. . . .
Is choosing the right paint color giving you
a headache? We’ve made choosing a paint
systematically simple. By grouping our paints
into four distinct color collections and
dividing them into convenient color palettes,
choosing the right paint color has never
been easier.

Based on the foregoing, the Examining Attorney argues
that the mark PALETTE MATCH is merely descriptive of the
identified goods.
In response to this refusal, applicant argues that its
mark is at most suggestive of the identified goods. In
particular, applicant maintains that its computer program
will provide consumers with the ability to view contrasting
and complementary colors based on a single color selection.
However, applicant argues that its goods are not intended
to “match any color palette in any manner.” (Brief, p. 7).
Ser No. 75/860,737
5
A mark is merely descriptive if it forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods or services. In re Abcor
Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978).
Moreover, in order to be descriptive, the mark must
immediately convey information as to the ingredients,
qualities or characteristics of the goods or services with
a “degree of particularity.” Plus Products v. Medical
Modalities Associates, Inc., 211 USPQ 1199, 1204-05 (TTAB
1981); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ
949, 952 (TTAB 1981); In re TMS Corp. of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Diet Tabs, Inc., 231
USPQ 587, 588 (TTAB 1986).
If, however, when the goods or services are
encountered under a mark, a multistage reasoning process,
or resort to imagination is required in order to determine
the attributes or characteristics of the product or
services, the mark is suggestive rather than merely
descriptive. See In re Abcor Development Corp., supra at
218; and In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
To the extent that there is any doubt in drawing the line
of demarcation between a suggestive mark and a merely
descriptive one, such doubt is to be resolved in
applicant’s favor. In re Atavio, supra at 1363.
Ser No. 75/860,737
6
Most of the Nexis excerpts made of record by the
Examining Attorney merely show the words “palette” and
“match” in close proximity with one another, and not as a
single term. Moreover, except for references to
applicant’s computer program, none of these excerpts relate
to a paint vendor providing an interactive tool for retail
paint customers. Certainly, there is nothing in the record
to suggest that competitors need to use this exact
terminology to describe their own interactive, colorization
programs.
In our view, a visitor to applicant’s web site would
not obtain an immediate idea of the particular nature of
applicant’s computer programs for use in creating,
displaying and visualizing paint colors and decorating
features upon seeing the mark PALETTE MATCH used in
connection therewith. Rather, PALETTE MATCH used for such
computer programs requires a multistage reasoning process
before one is able to determine the specific nature of the
goods. For example, the homeowner, interior decorator or
painting contractor visiting applicant’s Web site chooses a
color from among the various color collections (or
“palettes”) offered by applicant and then applicant’s
computer program selects a limited number of trim colors to
“match” the main color chosen by the prospective customer.
Ser No. 75/860,737
7
Accordingly, because PALETTE MATCH does not
immediately describe with particularity the nature of
applicant’s goods, it is not merely descriptive of them.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed.