SWIMC, Inc.

Trademark Trial and Appeal Board

Aug 2, 2012

No. 85016796 (T.T.A.B. Aug. 2, 2012)

Mailed: August 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SWIMC, Inc.
________

Serial No. 85016796
_______

Robert E. McDonald of SWIMC, Inc.

Robert J. Struck, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Bucher, Bergsman and Kuczma
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

SWIMC, Inc. (“applicant”), filed an application
seeking registration of the mark COMPLETE in standard
character form for “automotive paints,” as amended, in
Class 2.
The examining attorney issued a final refusal to
register the mark pursuant to § 2(d) of the Trademark Act
of 1946, 15 U.S.C. § 1052(d), citing Registration No.
3370767 as a bar to registration.1 Registration No. 3370767
is for the mark KILZ COMPLETE in standard character form

1 Registration No. 3370767 issued January 15, 2008.

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 85016796
2
for “paint primer” in Class 2 and is owned by Masterchem
Industries LLC.
Applicant and the examining attorney submitted briefs.
Likelihood of Confusion
Our determination of likelihood of confusion under
§ 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. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also, In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 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.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
A. The similarity or dissimilarity of the marks as to
appearance/sound/meaning and commercial impression

We first consider the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
When considering the similarity of the marks, the test
is not whether the marks can be distinguished when
Serial No. 85016796
3
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of overall
commercial impression so that confusion as to the source of
the services offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992).
To the extent that applicant’s COMPLETE mark and the
cited KILZ COMPLETE mark both contain the word COMPLETE,
when comparing the marks in their entireties, they are
similar in sound, appearance and meaning.
Turning to the commercial impression of the marks, the
word COMPLETE suggests that the respective paint and primer
products “completely cover” the surfaces to which they are
applied. This is a desired feature of coatings such as
paints and primers. The presence of the word KILZ, a
homonym for “kills,” in the cited mark does not alter the
commercial impression of the KILZ COMPLETE mark, i.e., that
the primer completely covers the applied surface. Thus,
the marks have similar commercial impressions and the word
KILZ does not avoid the likelihood of confusion between the
marks.
Serial No. 85016796
4
In its appeal brief, applicant cited to application
Serial No. 85250949, issued as Registration No. 4085130,
for the mark SPRED COMPLETE for “coatings, namely, paints,
primers . . .” arguing that the “Trademark Office has
allowed several marks in class 002 incorporating the term
‘complete,’ . . . recogniz[ing] that these two word marks
can co-exist on directly competitive products, Applicant’s
one word mark for Automotive Paints would also be able to
coexist.”2 Third-party registrations may be submitted to
demonstrate the meaning of a word which comprises a mark,
or a portion thereof, in the same way dictionary
definitions are used. In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006). However, applicant failed to make
the application of record. Even if applicant had submitted
appropriate evidence of the application with its appeal
brief, such evidence would be manifestly untimely and would
not be considered. See Trademark Rule 2.142(d). In view of
the foregoing, the third-party application that was
untimely cited by applicant in its appeal brief is not
probative evidence that similar marks co-exist.

2 Applicant’s Appeal Brief, paragraph No. 3; application Serial
No. 85250949 issued as Registration No. 4085130 on January 10,
2012, three months after applicant filed its Appeal Brief.
Serial No. 85016796
5
Although the issue of likelihood of confusion must be
judged on the basis of the facts and context of each case
presented to the Board, likelihood of confusion has
frequently been found where the entirety of one mark is
incorporated within another. See In re Champion
International Corp., 196 USPQ 48, 49 (TTAB 1977)
(resemblance between applicant’s CHECK MATE and
registrant’s HAMMERMILL MICR CHECK-MATE marks for closely
related products likely to cause confusion). See also In
re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985)
(addition of house mark in LE CACHET De DIOR does not avoid
likelihood of confusion with registered CACHET mark) and In
re C.F. Hathaway Co., 190 USPQ 343, 345 (TTAB 1976)
(HATHAWAY GOLF CLASSIC for knitted sport shirts likely to
cause confusion with registered GOLF CLASSIC mark for men’s
hats); and La Maur, Inc. v. Matney, 167 USPQ 559 (TTAB
1970) (applicant’s “ITALIAN STYLE” mark similar to
registered “STYLE” mark). In view of the foregoing, the
marks have similar commercial impressions.
Due to the shared term COMPLETE, the similarities in
the appearance, sound, meaning and commercial impression of
the marks outweigh the dissimilarities.
Serial No. 85016796
6
B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers

We turn next to the du Pont factor involving the
similarity or dissimilarity of applicant’s goods
(“automotive paints”), in relation to the goods in the
cited registration (“paint primer”). It is well-settled
that the issue of likelihood of confusion between applied
for and registered marks must be determined on the basis of
the goods as they are identified in the involved
application and registrations. Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
The nature of the goods sold by applicant and the
owner of the cited registration are similar in that
automotive paints in its broadest meaning may encompass
automotive paint primers and paint primer without further
limitation includes automotive paint primers. Applicant’s
own specimen demonstrates the relatedness of its automotive
paint and registrant’s primer because its specimen
identifies applicant’s automotive paint as a “2K Primer
Sealer.”
The goods need not be identical or directly
competitive to find a likelihood of confusion. See In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Rather,
Serial No. 85016796
7
they need only to be related in some manner or the
conditions surrounding their marketing are such that they
would be encountered by the same purchasers under
circumstances that would give rise to the mistaken belief
that the goods come from a common source. See On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475-76 (Fed. Cir. 2000) and In re Total
Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).
In further support of the relatedness of applicant’s
automotive paint and the cited registrant’s paint primer,
the examining attorney submitted copies of third-party
registrations that serve to suggest that applicant’s
automotive paints and registrant’s paint primers are of a
kind that may emanate from a single source.3 The thirteen
registrations, owned by twelve different owners (and
including a registration owned by applicant), listed below
demonstrate the relatedness of these goods:4
Registration No. Mark Goods Owner
0441001

Automotive finish primers
and surfacers, automotive
paints, lacquer primers
E.I. du Pont
de Nemours and
Company

3 These third-party registrations and others submitted by the
examining attorney were attached to the 7/21/2010 Office Action
and the 2/11/2011 Final Office Action.
4 Only the goods that are pertinent to the goods identified in
applicant’s application and the cited registration are listed in
the chart.
Serial No. 85016796
8
1610333 Clear and pigmented
coatings in the nature of a
paint, automotive paint,
primers, base coats,
clearcoats and sealers
SWIMC, Inc.
2813288 COLLISION PRO Automotive clearcoat
paints; paint primers
Association of
Automotive
Aftermarket
Distributors
2865526 EUROSTAR
REFINISHING
PRODUCTS
Automobile paints and
paint primers
International
Autobody
Marketing Group,
Inc.
2955475 FINISH PRO Automotive paint, namely
aerosol spray paint; paint-
related products, namely
automotive finishing
products in the nature of
clear coats, primers
Liberty Bell
Equipment Corp.
TA Medco
3004006 MEDALLION Automotive paint, and
primer used in the field of
professional auto body and
fleet repair
Teknol, Inc.
3017096 GLASURIT Automotive Paints; paint
primers
BASF Coatings
Aktiengesellschaft
3141105 EASTWOOD Paints for automobiles,
paint primers
Easthill Group, Inc.
3205846 LUXECOLOR Paint for use in
manufacture of
automobiles; paint primers
Liang Wang
3215319 Paint primers and
automotive paint
AutoZone Parts,
Inc.
3345118 CALIFORNIA
CLEARS
Paint primers, paints for
automobiles
TCI Products, Inc.
3570823 Paint for use in the
manufacture of
automobiles, paint primers
Peishen Feng
3659799 DUPONT House mark for full line of
automotive paints, primers
E.I. du Pont
de Nemours and
Company

Although such registrations are not evidence that the
marks shown therein are in use or that the public is
Serial No. 85016796
9
familiar with them, they nonetheless have probative value
to the extent they are based on use in commerce and serve
to suggest that the goods identified therein are of a kind
which may emanate from a single source under a single mark.
See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).
The foregoing third-party registrations serve to
suggest that it is common for the same entity to provide
automotive paint and paint primer under the same mark.
Thus, consumers encountering applicant’s automotive paint
and the cited registrant’s paint primer in connection with
similar marks are likely to believe the goods emanate from
the same source.
We next consider the similarity or dissimilarity of
the established and likely to continue trade channels for
applicant’s and registrant’s respective goods, and the
condition under which and buyers to whom sales are made,
i.e., impulse versus careful, sophisticated purchasing,
under the third and fourth du Pont factors.
The amended identification of goods limits applicant’s
goods to paints used for automotive applications. In light
of this limitation, applicant argues that there is no
likelihood of confusion because as shown in its specimens,
Serial No. 85016796
10
its automotive paints have been “[f]ormulated for
application by trained professionals using proper equipment
under controlled use conditions. Not intended for the
retail trade . . . .”5 However, this limitation listed in
small print on the paint can label is of no consequence
where applicant’s identification of goods does not reflect
a corresponding restriction and where the cited
registration has unrestricted trade channels. The
difficulty with applicant’s argument is that this
proceeding concerns applicant’s right to register a
trademark, not applicant’s actual trademark use. Because
the scope of the registration applicant seeks is defined by
its application rather than its actual use, it is the
application that we must look to in determining applicant’s
right to register:
The authority is legion that 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 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.

Octocom Systems Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

5 See applicant’s January 21, 2011, Response to Office Action.
Serial No. 85016796
11
Likewise, in considering the scope of the cited
registration, we look to the registration itself, and not
to extrinsic evidence about the registrant’s actual goods,
customers, or channels of trade. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958).
Because there is no limitation as to trade channels or
classes of purchasers in the description of goods in either
the application or the cited registration, we must presume
that applicant’s automotive paints and registrant’s paint
primers are marketed in all normal trade channels for such
goods and to all normal classes of purchasers for such
products. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992); Elbaum, 211 USPQ at 640.
In that regard, applicant’s automotive paints are
presumably marketed and sold to those requiring paint for
automotive applications. Given the relationship between
automotive paint and paint primers established by the
third-party registrations and applicant’s specimen, and
that registrant’s identification of goods is broad enough
to encompass all types of primers including automotive
paint primers, at least some of registrant’s customers are
part of the general consuming public for applicant’s
automotive paint. Thus, applicant’s customers who may be
Serial No. 85016796
12
interested in purchasing automotive paint, upon seeing the
registrant’s KILZ COMPLETE paint primer, may assume that
applicant’s goods are related to or affiliated with
registrant’s KILZ COMPLETE primer. To the extent that
applicant’s automotive paints and registrant’s paint
primers are offered to the general consuming public, the
channels of trade and classes of purchasers overlap. This
overlap weighs in favor of a finding of likelihood of
confusion, under the third and fourth du Pont factors. In
re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
While applicant expects the professional painters who
apply its automotive paint would exercise special care in
the selection of paint products, there is no evidence in
the record to support this contention.6
C. Balancing the factors
In view of the similarity of the marks in their
entireties in sound, appearance, meaning and commercial
impression, the relatedness of applicant’s automotive paint
to the paint primer in the cited registration, and the
overlap in the channels of trade and classes of customers,
we find that applicant’s COMPLETE mark for automotive paint
is likely to cause confusion with the KILZ COMPLETE mark in

6 Applicant’s Appeal Brief, paragraph No. 2.
Serial No. 85016796
13
Registration No. 3370767. Moreover, where the goods of the
applicant and cited registrant are similar and/or closely
related as they are here, the degree of similarity between
the marks required to support a finding of likelihood of
confusion is not as great as would be required with diverse
goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).

Decision: The refusal to register is affirmed.