Kelly-Moore Paint Company, Inc.

Trademark Trial and Appeal Board

Mar 3, 2008

No. 78667467 (T.T.A.B. Mar. 3, 2008)

Mailed: March 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kelly-Moore Paint Company, Inc.
________

Serial No. 78667467
_______

John E. Kelly of Kelly Lowry & Kelley, LLP for Kelly-Moore
Paint Company, Inc.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Kuhlke, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Kelly-Moore Paint Company, Inc. seeks registration on
the Principal Register of the mark KELLY-MOORE’S ACRY-
SHIELD (in standard character form) for goods ultimately
identified as “[i]nterior and exterior paints; paint
thinners; paint pigments; interior and exterior latex
enamels for metal, wood and concrete surfaces; stains for
exterior wood, masonry, concrete and metal surfaces; paint
primers and sealer coatings for use on drywalls, plaster
and masonry surfaces; and acrylic flat finish and acrylic
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78667467
2
low sheen finish for exterior wood, metal, hard board,
stucco, brick, concrete and fiber cement board, said goods
being distributed through channels of trade consisting
substantially exclusively of applicant’s own network of
retail paint stores” in International Class 2.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark ACRI-SHIELD (in typed form)
for “finish in the nature of a paint for use on steel, wood
and masonry” in International Class 2, as to be likely to
cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
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

1 Application Serial No. 78667467, filed July 11, 2005, alleging
first use of the mark anywhere and in commerce on March 15, 1970
under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

2 Registration No. 1310667, issued December 25, 1984, renewed.

Serial No. 78667467
3
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Relatedness of the Goods
We begin by considering the possible relatedness of
the goods. As a preliminary matter, we note that in
response to the examining attorney’s argument regarding
applicant’s trade channels, applicant, in its reply brief,
seeks to amend its identification of goods to clarify that
the limiting language “said goods being distributed through
channels of trade consisting substantially exclusively of
applicant’s own network of retail paint stores,” applies to
all of the goods in the identification, and not, as the
examining attorney has stated, only to “acrylic flat finish
and acrylic low sheen finish for exterior wood, metal, hard
board, stucco, brick, concrete and fiber cement board” by
virtue of the location of the semi-colons separating the
other goods. We accept applicant’s proposed amendment and
consider the Section 2(d) refusal with the limitation
applying to all of the goods.
Serial No. 78667467
4
In making our determination, we must consider the
cited registrant’s and applicant’s goods as they are
described in the registration and application, and we
cannot read limitations into those goods. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987).
Applicant’s “acrylic flat finish and acrylic low sheen
finish for exterior wood, metal, hard board, stucco, brick,
concrete and fiber cement board” are encompassed by
registrant’s “finish in the nature of a paint for use on
steel, wood and masonry” and as such are legally identical
to these goods. Moreover, applicant’s remaining paint-
related goods (e.g., paints, paint pigments, paint
thinners, stains, paint primers) are related to
registrant’s paint finish. The examining attorney entered
into the record several third-party use-based registrations
where applicant’s various paint-related items and
registrant’s paint finish have been registered by the same
entity under a common mark. See, e.g., Reg. No. 2196987
for the mark M.A.B. for, inter alia, interior and exterior
paints, paint primers, wood stains and exterior masonry
finish for use on all above-grade masonry surfaces; Reg.
Serial No. 78667467
5
No. 2614406 for the mark SAMPSON for, inter alia, finishes
for wood and metal, namely, acrylic paints, paint primer
and paint thinners; and Reg. No. 3020892 for the mark
SIGMADUR for, inter alia, paints, stains, clear finishes,
and paint thinners. These registrations serve to suggest
that paint finish and other paint-related goods would be
sold by the same entity under a common mark. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988). Even applicant, in addition to the
involved application, has a registration that includes
various paint products and finishes. See Reg. No. 2711280
KELLY-MOORE PAINTS for, inter alia, paint thinners, paint
pigments, paints, paint primers and acrylic flat finish.
In an attempt to distinguish the goods, applicant
relies on In re W.W. Henry Co., 82 USPQ2d 1213 (TTAB 2007).
In that case, the Board, by examining the terms in the
respective identification of goods, found that they were
not related:
However, to demonstrate that goods are related,
it is not sufficient that a particular term may
be found which may broadly describe the goods.
When we examine the specific items in the
identifications, they do not appear to be related
in a manner that would be likely to cause
confusion. Applicant’s application is for a
Portland cement based patch for use in patching,
repairing or smoothing wall and floor surfaces,
Serial No. 78667467
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namely, wood, drywall, plaster, concrete, block
wall, tile and wood paneling prior to painting or
wallpapering. This is the type of product that
would be offered to do-it-yourselfers, handymen,
and contractors through hardware and home
improvement stores. On the other hand, the
chemical filler preparations identified in the
cited registration are specifically limited to
use in the cosmetic repair of “polyolefin
surfaces.” Applicant has submitted extrinsic
evidence which shows that polyolefin products are
molded by plastic manufacturers and that its
goods are used by such manufacturers.

Thus, in that case the Board looked to extrinsic
evidence in order to understand the identification of goods
and not to limit its application based on actual use. In
this case, the identification in the registration, “finish
in the nature of a paint for use on steel, wood and
masonry,” is not overly broad, indefinite or unclear as to
terminology and we need not resort to any extrinsic or
other evidence to understand these goods. Moreover, while
applicant discusses the specimens of use in the cited
registration, it is not clear what limitation is indicated
by those specimens to obviate a finding that the goods are
related.3

3 Although a printout of the cited registration retrieved from
the USPTO’s electronic database was attached to the office
action, the registration file has not been made of record. In
order to have the actual specimens of use considered by the
Board, applicant would have needed to make them of record by
submitting copies.
Serial No. 78667467
7
In view thereof, we find the goods legally identical
or otherwise related and this factor weighs in favor of a
likelihood of confusion.
Channels of Trade/Class of Purchasers
Applicant relies heavily on its argument that the
restriction of the channels of trade in its identification
obviates any likelihood of confusion. The fact that
registrant’s goods may not be sold in applicant’s stores
and applicant’s goods are only sold in applicant’s stores4
does not completely obviate likely confusion in this case.
We first note that registrant’s identification is not
limited and we must assume its goods would be available in
hardware stores, large home improvement stores and paint
stores. Further, with regard to the class of customers,
there are no limitations in the application or registration
and thus we must presume that they cover the ordinary
purchasers which in both cases would include commercial
consumers and the general public (i.e., the “do-it-
yourselfers”). Thus, even with the limitation of
applicant’s trade channels, applicant’s and registrant’s
goods are likely to be encountered by the same purchasers.

4 We note that the identification “substantially exclusively”
does not preclude the possibility of sales outside of applicant’s
stores.
Serial No. 78667467
8
Purchasers may be interested in more than one type of paint
and finish and, thus, would shop in more than one store for
paints and finishes. Purchasers who are comparison
shopping for paints and finishes could easily encounter
registrant’s ACRI-SHIELD in one store and then see
applicant’s KELLY MOORE’S ACRY-SHIELD in applicant’s store.
Consumers shopping in this manner would likely believe that
there was some association or relationship between the
source of ACRI-SHIELD and KELLY-MOORE’S ACRY-SHIELD.
Compare In re Diet Center Inc., 4 USPQ2d 1975, 1976 (TTAB
1987) (“Moreover, even in absence of common, overlapping
trade channels, we conclude that confusion is likely in
this case for the reasons stated in the prior Diet Center
case, supra. Specifically, it is our view that both
products would appeal to people following a lower calorie
diet and both products are designed to contribute to the
goal of reduced calorie intake; …”) with In re Shoe Works,
6 USPQ2d 1890, (TTAB 1988) (no confusion where specifically
different goods (shoes v. shorts and pants) and applicant’s
restricted trade channels (shoe stores) are not the normal
channels (clothing stores) in which registrant’s goods
would be found, and a consent agreement with registrant was
of record).
Serial No. 78667467
9
As the examining attorney states “[t]he fact that
commercial and individual paint consumers may purchase
KELLY-MOORE’S ACRY-SHIELD paint and paint related products
through applicant’s own retail establishments does not mean
that the same consumers viewing registrant’s ACRI-SHIELD
paint products in other retail outlets and viewing
advertisements for the relevant goods will not be confused
as to their source.” Br. pp. 7-8. Finally, applicant has
indicated that some of its goods (one percent of total
sales) are sold “through independent dealers” by “reason of
acquisitions.” Declaration of John E. Kelly (applicant’s
attorney) attached to July 31, 2006 Response. Therefore,
based on the identification in the application and the
declaration it remains possible that applicant’s goods
could be sold in the same store as registrant’s goods.
In view of the above, the du Pont factor of the
similarity of the class of purchasers favors a
determination of likelihood of confusion and the limitation
of trade channels in applicant’s identification is not
sufficient to outweigh the other relevant du Pont factors.
Similarity of the Marks
We now turn to our comparison of the marks where we
must determine whether they are sufficiently similar that
there is a likelihood of confusion as to source and, in
Serial No. 78667467
10
doing so, we must consider the recollection of the average
purchaser who normally retains a general, rather than
specific, impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We find
the marks to be similar when compared in their entireties
in terms of appearance, sound, connotation and commercial
impression.
Noting that ACRY-SHIELD and ACRI-SHIELD are phonetic
equivalents and appear nearly identical, the examining
attorney argues:
Accordingly, the addition of the possessive form
of applicant’s KELLY-MOORE house mark to wording
that is nearly identical to the registered mark
creates the impression that the registered mark
and the applied for mark refer to a single
source. In other words, the issue here is that
consumers are likely to believe that applicant is
the source of registrant’s goods. ... Thus,
applicant’s addition of its KELLY-MOORE house
mark to wording that is almost identical to the
cited registered mark aggravates the likelihood
of confusion between the two marks, and consumers
would mistakenly assume that applicant is the
source of both marks. Br. pp. 9, 14.

It is well established that the addition of a house
mark may not obviate the similarity between the marks
overall or overcome a likelihood of confusion under Section
2(d). In re United States Shoe Corp., 229 USPQ 707 (TTAB
1985) (CAREER IMAGE for retail clothing store and clothing
and CREST CAREER IMAGES for uniforms); In re Riddle, 225
Serial No. 78667467
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USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE for
automotive service centers and ACCUTUNE for automotive
testing equipment); Key West Fragrance & Cosmetic Factory,
Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN
SAVERS for hand and body lotion and SKIN SAVERS for face
and throat lotion). However, “there is no rule of law that
if two product marks are confusingly similar, likelihood of
confusion is not removed by use of a company or house mark
in association with the product mark. Rather, each case
requires a consideration of the effect of the entire mark
including any term in addition to that which closely
resembles the opposing mark.” New England Fish Company v.
The Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA
1975) citing Rockwood Chocolate Co. v. Hoffman Candy Co.,
372 F.2d 552, 152 USPQ 599 (CCPA 1967). In making a
determination, the Board will look to see if “there are
some recognizable differences in the asserted conflicting
product marks or the product marks in question are highly
suggestive or play upon commonly used or registered terms
[such that] the addition to applicant’s mark of the
housemark [is] sufficient to render the marks as a whole
registrably distinguishable.” Rockwood Chocolate Co, Inc.,
v. Hoffman Candy Company, 179 USPQ 743, 746 (TTAB 1973).
Serial No. 78667467
12
Applicant contends that registrant’s mark is highly
suggestive and deserving of limited protection.5 Based on
the asserted weakness of the term ACRI-SHIELD, applicant
argues that the addition of its house mark serves
sufficiently to distinguish the marks and the examining
attorney has incorrectly applied the “house mark rule.”
Applicant asserts that this case falls within the exception
presented in Knight Textiles Corp. v. Jones Investment Co.,
75 USPQ2d 1313 (TTAB 2005) where the Board found no
likelihood of confusion between applicant’s NORTON
MCNAUGHTON ESSENTIALS mark and registrant’s ESSENTIALS mark
both used on clothing. In Knight Textiles the Board found
that the addition of the house mark was sufficient to
distinguish the marks in issue in view of the highly
suggestive nature of the term ESSENTIALS as used in
connection with clothing items. The evidence of record in
that case included twenty-three third-party registrations
(owned by twenty-one different owners) of marks which
included the word ESSENTIALS for clothing items and a

5 We note that applicant’s arguments refer to the common terms as
“descriptive.” The cited registration enjoys the presumptions
under Section 7(b) of the Trademark Act, and may not be attacked
as being “merely descriptive.” In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (while prima facie
presumption of validity may be rebutted, ex parte proceeding is
not the proper forum for such a challenge). Therefore, we
construe applicant’s arguments as contending that ACRI-SHIELD is
highly suggestive.
Serial No. 78667467
13
judicially noticed dictionary definition of the word
ESSENTIALS.
In this case, as the examining attorney has noted,
there is no evidence that the term ACRI-SHIELD is widely
used or registered in connection with finishes or other
paint products such that the term has some suggestive
significance prompting consumers to look to other elements
for source identification. Applicant has submitted
evidence in the form of listings retrieved from the
Trademark Electronic Search System (TESS) displaying
applications and registrations in International Class 2
containing the terms SHIELD, ACRYLIC and ACRI.6 However,
none of the examples use ACRYLIC or ACRI together with the
word SHIELD. Moreover, many of these examples from the
TESS database have no probative value inasmuch as they are
either applications or dead registrations. The remaining
live registrations for International Class 2 (paints)
include, for example, Reg. No. 2845230 for ACRI-LOC, Reg.
No. 1996952 for ACRI-LUSTRE, Reg. No. 1529183 for ACRI
SHEEN, Reg. No. 3106337 for POND SHIELD, Reg. No. 3115293
for PERMA-SHIELD, and Reg. No. 3097718 for ULTRA-SHIELD.
As noted above, none of the examples are for ACRI-SHIELD or

6 While the listing does not make the registrations properly of
record inasmuch as the examining has not objected to the listing
Serial No. 78667467
14
ACRY-SHIELD or some other phonetic variant of this
combination, other than applicant’s and registrant’s
respective application and registration. Although the
components of registrant’s mark may be commonly registered
in the “paints” class, the combined term ACRI-SHIELD is
not, nor is it simply a combination of two possibly
descriptive or generic terms, ACRYLIC and SHIELD. Rather,
while it is highly likely that ACRI is derived by
shortening the word ACRYLIC, it is not the word ACRYLIC.
Although for some consumers the terms ACRI-SHIELD and ACRY-
SHIELD may suggest that the goods are or act as “a
protective coating of acrylic composition,” we cannot say
based on this record that the terms are so highly
suggestive that the addition of the house mark to the
product mark would obviate confusion similar to the
circumstances in Knight Textiles. Therefore, we find that
the record does not show that ACRI-SHIELD is so highly
suggestive to fall into that category of exception
discussed in the Rockwood Chocolate case and exemplified by
the Knights Textile case.
Applicant’s assertion that its KELLY-MOORE mark is
well-known and famous also does not help in this effort to

we have considered it. In re Total Quality Group Inc., 51 USPQ2d
1474, 1477 n.6 (TTAB 1999).
Serial No. 78667467
15
distinguish the marks because purchasers familiar with
registrant’s ACRI-SHIELD finishes upon encountering
applicant’s KELLY-MOORE ACRY-SHIELD finishes and paints are
likely to believe that applicant is the source of
registrant’s ACRI-SHIELD products.7 “[E]ven if this had
been shown to be the case, it would only serve to aggravate
the likelihood of confusion that would arise from the
contemporaneous use of the marks on the respective goods.”
In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985)
(addition of house mark DIOR to applicant’s LE CACHET DE
DIOR for shirts does not obviate likely confusion with
CACHET for dresses and toiletries).
Overall we find that the examining attorney
appropriately applied the relevant “house mark” case law
and the cases cited by applicant are not persuasive of a
different conclusion.8
Viewing the ACRY-SHIELD portion of applicant’s mark,
we find that it is identical in sound and meaning to the
entirety of registrant’s mark ACRI-SHIELD and highly
similar in appearance and commercial impression. Applicant

7 We note that applicant did not introduce sufficient evidence to
conclude that its KELLY-MOORE mark is famous.

8 For example, Coats v. Merrick Thread Co., 149 U.S. 562 (1893)
involved an infringement case that comprised much more
complicated factual circumstances including trade dress, an
expired patent and generic terminology along with a house mark.
Serial No. 78667467
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has, in essence, “appropriated in its entirety”
registrant’s mark. See Phillips Petroleum Co. v. Jet-Aer
Corp., 157 USPQ 98 (TTAB 1968). Further, as discussed
above, the addition of applicant’s house mark to its
product mark is not sufficient in this case to obviate
likely confusion. Overall, we find that the marks KELLY-
MOORE’S ACRY-SHIELD and ACRI-SHIELD are sufficiently alike
that when used on identical or closely related goods would
likely cause confusion.
In view of the above, the factor of the similarity of
the marks weighs in favor of likelihood of confusion.
Conditions of Sale
With regard to the conditions of sale, these goods
would be purchased with a certain level of care both by
commercial and individual consumers, however, not to such
an extent to outweigh the other du Pont factors. See
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992).
Lack of Actual Confusion
Applicant also argues that “there has been substantial
concurrent use by Applicant and Registrant of their
respective marks without a single instance of confusion.”
Br. p. 20. In an ex parte case, the absence of actual
confusion is hardly unusual and seldom is a significant
Serial No. 78667467
17
factor in finding that there is no likelihood of confusion
inasmuch as the Board has no way to know whether the
registrant is unaware of any instances of actual confusion,
nor is it usually possible to determine whether there has
been any significant opportunity for actual confusion to
have occurred. See Majestic Distilling, 65 USPQ2d at 1205
(“The lack of evidence of actual confusion carries little
weight”). See also In re Opus One Inc., 60 USPQ2d 1812,
1817 (TTAB 2001). We further note that the case upon which
applicant relies is an inter partes case where such
evidence would carry more probative value. Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1271 (TTAB 2003). However, the
Board has recognized that there may be an exception to this
general rule where there is shown to be a ‘confluence of
facts’ which together strongly suggest, under the eighth du
Pont factor, that the absence of evidence of actual
confusion is meaningful and should be given probative
weight in an ex parte case. See In re Opus One, Inc.,
supra at 1817 (TTAB 2001); In re General Motors Corp., 23
USPQ2d 1465 (TTAB 1992). This “confluence of facts”
includes no reported instances of actual confusion over a
long period of sustained marketing success (e.g., 2.7
million automobiles) as attested to by “individuals
seemingly in the best position to learn of the occurrence
Serial No. 78667467
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of actual confusion,” goods that are a “major and expensive
purchase” (automobiles), an opportunity for actual
confusion has increased over time due to registrant’s
expansion of its products, and the applicant’s mark is
extremely well-known. In re General Motors, supra at 1471.
The record in this case does not support the
“confluence of facts” necessary to accord this factor more
weight than is usual in an ex parte context. Applicant’s
goods cannot be considered a “major and expensive purchase”
in the same category as automobiles. Moreover, the record
does not provide information as to the extent of its sales
and advertising activity under the mark in issue, KELLY-
MOORE’S ACRY-SHIELD, such that we can determine it to have
enjoyed a “sustained success.” Rather we think it
appropriate to follow the general rule that, in an ex parte
situation, the fact that the applicant has not experienced
any instances of actual confusion is entitled to limited
weight.
Accordingly, although we have considered such evidence
in reaching our decision herein, we find that this factor
does not outweigh the other relevant du Pont factors
pointing to likely confusion.
Serial No. 78667467
19
Prior Use
Applicant argues that as the prior user its right to
exclude others from using similar marks and “exceeds the
comparable rights Registrant may have.” Br. p. 21. In the
context of an ex parte proceeding, applicant’s prior use
has no relevance. Section 7(f) of the Trademark Act
provides as follows:
A certificate of registration on the principal
register provided by this Act shall be prima
facie evidence of the validity of the registered
mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the mark in
commerce on or in connection with the goods or
services specified in the certificate, subject to
any limitations stated in the certificate. 15
U.S.C. §1057(b).

See also In re Majestic, 65 USPQ2d at 1206-07. There can
be no doubt that prompt registration of trademark rights
has numerous advantages and that delay in registering a
mark may result in a refusal if another entity with
subsequent use has, in the meantime, registered a
confusingly similar mark.
Reverse Confusion
Finally, applicant’s argument that the likelihood of
“reverse confusion” does not pose a problem because
“applicant was in fact first to use its relevant marks,
i.e., ACRY-SHIELD and KELLY-MOORE’S ACRY-SHIELD, and
Serial No. 78667467
20
therefore, if a customer came to believe Applicant was the
‘senior’ user, he/she would be absolutely correct” (Br. p.
23), is misplaced. The point is not that the consumer,
upon seeing ACRI-SHIELD used on paint finish, believes that
applicant is the senior user of the mark, but rather that
applicant is the source of the paint finish.
In conclusion, we find that because the marks are
highly similar, the goods are related, and the purchasers
overlap, confusion is likely between applicant’s mark and
the mark in the cited registration. To the extent there
are any doubts, we resolve them, as we must, in favor of
the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.