Plaid Enterprises, Inc.

Trademark Trial and Appeal Board

May 14, 2008

No. 76978625 (T.T.A.B. May. 14, 2008)

Mailed:
May 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Plaid Enterprises, Inc.
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Serial No. 76978625
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Dan R. Musick, Esq. for Plaid Enterprises, Inc.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hairston, Drost and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Plaid Enterprises, Inc. filed a use based application
for the mark ONE STROKE, in standard character format, for
goods ultimately identified as “laminated painting teaching
guides, rub-on decals, and books in the field of arts and
crafts painting,” in Class 16 (Serial No. 76978625).1
Applicant claimed June 15, 1996 as its date of first use
anywhere and first use in commerce.

1 In response to the likelihood of confusion refusal discussed
below, applicant filed a request to divide. The application
involved in this appeal is the child application of Serial No.
76283018.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76978625
2
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark ONE STROKE,
when used in connection with laminated painting teaching
guides, rub-on decals, and books in the field of arts and
crafts painting is likely to cause confusion with the mark
ONE STROKE for “paint brushes and paint applicator
rollers,” in Class 16.2
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities of the marks and the similarities or
dissimilarities of the goods. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential

2 Registration No. 2682319, issued February 4, 2003.
Serial No. 76978625
3
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In this case, the marks are
identical.
B. The similarity or dissimilarity and nature of the
goods.

In an ex parte appeal, likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ
47, 48 (TTAB 1976). Moreover, the greater the degree of
similarity between the applicant’s mark and the mark in the
cited registration, the lesser the degree of similarity
between the goods in the application and the cited
registration that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d
Serial No. 76978625
4
1812, 1815 (TTAB 2001); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
It is well settled that the goods of the applicant and
the registrant do not have to be identical or directly
competitive to support a finding that there is a likelihood
of confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In this case, applicant’s goods are “laminated
painting teaching guides, rub-on decals, and books in the
field of arts and crafts painting,” and the registrant’s
goods are “paint brushes and paint applicator rollers.”
The Examining Attorney argued that the goods of the
applicant and registrant are related because they “[b]oth
involve painting related products.”3

3 Examining Attorney’s Brief, p. 3.
Serial No. 76978625
5
The Examining Attorney’s refusal is based on the well-
settled proposition that because there are no restrictions
or limitations as to the type of paint brushes described in
the cited registration, we must presume that the
description of goods in the registration includes all types
of paint brushes, including artists’ paint brushes used in
arts and crafts painting. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re
Elbaum, 211 USPQ at 640. Thus, the Examining Attorney
concluded that paint brushes, including artists’ paint
brushes used in arts and crafts painting, are related to
“laminated painting teaching guides, rub-on decals, and
books in the field of arts and crafts painting.”
In support of her argument that the paint brushes and
paint applicator rollers in the cited registration are
related to applicant’s “laminated painting teaching guides,
rub-on decals, and books in the field of arts and crafts
painting,” applicant submitted four (4) use-based, third-
party registrations comprising paint brushes or applicators
Serial No. 76978625
6
and other arts and crafts equipment.4 Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods are of a type that
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The Examining Attorney also submitted excerpts from
six (6) web sites from retailers selling paint brushes as
part of an arts and crafts product line.5 This evidence has
limited probative value, however, because we cannot tell
whether the products are sold under the same trademark.
Applicant argued, in essence, that applicant’s goods
and registrant’s goods are not related because registrant
does not market applicant’s goods and that applicant’s
goods are arts and crafts products while registrant’s goods
are for interior and exterior house painting. The problem
with applicant’s argument is that because the registrant’s
description of goods is not limited to house painting, it
comprises all types of paint brushes and paint applicator
rollers, including those in the field of arts and crafts.

4 We did not consider Registration No. 3236777 for the mark HYDE
because it did not include any arts and crafts equipment in the
description of goods.
5 We did not consider the TeachingStuff.com or the A.C. Moore web
sites because they did not display the sale of paint brushes.
Serial No. 76978625
7
Without a restriction to the field of house painting, we
may not consider applicant’s evidence and arguments so
restricting the registrant’s description of goods.
Squirtco v. Tomy Corp., 216 USPQ at 940; In re Linkvest
S.A., 24 USPQ2d at 1716; In re Elbaum, 211 USPQ at 640.
In view of the foregoing, we find that applicant’s
“laminated painting teaching guides, rub-on decals, and
books in the field of arts and crafts painting” and
registrant’s “paint brushes and paint applicator rollers”
are related products because registrant’s paint brushes
encompass paint brushes that may used in connection with
arts and crafts.
C. The similarity or dissimilarity of likely-to-continue
trade channels.

Because there are no restrictions as to trade channels
and classes of consumers in the cited registration, we
presume that registrant’s paint brushes and paint
applicator roller move in all normal trade channels for
such goods and to all normal classes of purchasers for such
goods, including the field of arts and crafts. In re
Elbaum, 211 USPQ at 640. In addition, the above-noted
websites submitted by the Examining Attorney demonstrate
that the same online retailers sell paint brushes and other
arts and crafts related products. Accordingly, we find
Serial No. 76978625
8
that the channels of trade and classes of consumers are the
same.
D. Instances of actual confusion.
Applicant argued that the parties have coexisted for
eight years without any reported instances of confusion,
and that such a substantial period of time without any
reported instances of confusion is strong evidence that
there is no likelihood of confusion.6 However, the fact
that applicant is not aware of any reported instances of
actual confusion is not particularly probative in an ex
parte proceeding because we have no evidence pertaining to
the extent of the use by applicant and registrant, and thus
no opportunity to assess whether there has been ample
opportunity for confusion to occur. In addition, there has
been no opportunity to hear from the registrant. In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1084); In
re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984). Only in rare
instances will the Board give any probative weight to the
lack of reported instances of actual confusion. See In re
General Motors Corp., 23 USPQ2d 1465, 1470-1471 (TTAB
1992). In General Motors, the Board identified three
factors in an ex parte setting as a prerequisite to giving
the lack of actual confusion any probative value: (1) a

6 Applicant’s Brief, pp. 14-15.
Serial No. 76978625
9
long period of marketing success by the applicant; (2)
applicant’s products are expensive; and, (3) there have
been no reported instances of actual confusion. Based on
this record, the lack of any reported instances of actual
confusion is not probative because the length of the time
that applicant has been selling its arts and crafts
products is not significant, and there is no evidence of
applicant’s (or registrant’s) marketing success.
E. Balancing the factors.
Having found that the marks are identical, that
applicant’s products are related to registrant’s products,
and that the goods of the registrant and applicant move in
the same channels of trade and are sold to the same classes
of consumers, we conclude that applicant’s mark ONE STROKE
for “laminated painting teaching guides, rub-on decals, and
books in the field of arts and crafts painting” is likely
to cause confusion with the mark ONE STROKE for paint
brushes and paint applicator rollers.
Decision: The refusal to register is affirmed.