Plaid Enterprises, Inc.

Trademark Trial and Appeal Board

May 14, 2008

No. 76283018 (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. 76283018
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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 “artists’ paint brushes,” in
Class 16 (Serial No. 76283018). Applicant claimed June 15,
1996 as its date of first use anywhere and first use in
commerce.
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 artists’ paint brushes, is
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76283018
2
likely to cause confusion with the mark ONE STROKE for
“paint brushes and paint applicator rollers,” in Class 16.1
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
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,

1 Registration No. 2682319, issued February 4, 2003.
Serial No. 76283018
3
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. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges
& Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 the sales of goods are directed”).
In this case, the cited registration is for “paint
brushes and paint applicator rollers.” 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
Serial No. 76283018
4
includes all types of paint brushes, including artists’
paint brushes. 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 639, 640 (TTAB 1981). Accordingly,
applicant’s evidence and arguments that registrant’s paint
brushes are limited to interior or exterior house painting
may not be given any consideration. In view thereof, we
find that the goods of the applicant, artists’ paint
brushes, are included within registrant’s paint brushes,
and therefore the goods are identical.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because we have found that the registrant’s paint
brushes may encompass artists’ paint brushes, and therefore
the goods are identical, we must presume that the channels
of trade and classes of purchasers are the same. Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part (sic) identical and in-part (sic) related nature of
the parties’ goods, and the lack of any restrictions in the
Serial No. 76283018
5
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
Accordingly, we find 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.2 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

2 Applicant’s Brief, pp. 14-15.
Serial No. 76283018
6
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 evidence actual confusion any probative value:
(1) a 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 the
applicant’s goods are included within registrant’s
description of goods, 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 artists’ paint brushes is
Serial No. 76283018
7
likely to cause confusion with the mark ONE STROKE for
paint brushes and paint applicator rollers.
Decision: The refusal to register is affirmed.