Sherwin-Williams Automotive Finishes Corp.

Trademark Trial and Appeal Board

May 10, 2001

No. 75342774 (T.T.A.B. May. 10, 2001)

5/10/01
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sherwin-Williams Automotive Finishes Corp.
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Serial No. 75/342,774
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Robert E. McDonald of The Sherwin-Williams Company for
Sherwin-Williams Automotive Finishes Corp.
Julia Hardy Cofield, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
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Before Simms, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Sherwin-Williams
Automotive Finishes Corp. to register the mark KLEAR-KUT
for “clear and pigmented coatings in the nature of paint
for use by professional autobody painters in the automotive
refinish industry.”1
1 Application Serial No. 75/342,774 filed August 18, 1997,
alleging dates of first use of May 30, 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/342,774
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark CLEAR-
CUT and design as shown below,
for “abrasive particles for use in stripping unwanted
coatings, materials, and the like from the surfaces of
substrates in such industries as the aircraft, automotive,
and electronics industries,”2 as to be likely to cause
confusion. When the refusal was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods.
Turning first to the goods, although the involved
goods are different, the issue to be determined here is not
whether the goods are likely to be confused but rather
whether there is a likelihood that the relevant purchasers
2 Registration No. 1,620,724 issued November 6, 1990; Section 8
affidavit accepted and Renewal application filed.
Ser No. 75/342,774
3
will be misled into the belief that the goods emanate from
the same source. Thus, goods need not be identical or even
competitive in nature to support a finding of likelihood of
confusion. It is sufficient for the purpose that the goods
are related in some way and/or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that could give rise, because of the marks
used thereon, to the mistaken belief that they originate
from or are in some way associated with the same producer.
Chemical New York Corp. v. Conmar Form Systems, Inc., 1
USPQ2d 1139, 1143 (TTAB 1986).
In this case, we find that there is a relationship
between the goods. As noted by the Examining Attorney,
paint strippers are often used to remove old or existing
paint from a surface before new paint is applied. Thus, an
autobody paint specialist, in the process of refinishing a
vehicle, may use a stripper in addition to paint. We find
it likely that customers of registrant’s strippers for use
in the automotive industry would also be customers of paint
for automotive refinishing. Under the circumstances,
applicant’s goods and registrant’s goods are sufficiently
related that, if marketed under identical or similar marks,
confusion as to source or sponsorship is likely to occur.
Ser No. 75/342,774
4
We have reached this finding without giving much
weight to the third-party registrations submitted by the
Examining Attorney in her attempt to show a relationship
between the goods. The reason being that in all but one
case, the registrations cover paints and strippers designed
for use in the home or in an industry other than the
automotive industry. Thus, such registrations are not
particularly probative of whether paints and strippers used
in the automotive industry are related goods.
Considering next the marks, we find that they are
identical in sound and highly similar in appearance and
commercial impression. The fact that applicant’s mark is
spelled with the letter “K” at the beginning of each word
rather than the letter “C” is of virtually no consequence.
We note that applicant has made of record four third-
party registrations for marks consisting of either “CLEAR
CUT” or “KLEAR KUT” for various products such as insertable
saw bits, fish for human consumption, an electrosurgical
handpiece, and metal working compounds. None of these
registrations, however, covers goods of the type involved
in this appeal or items which are even arguably related
thereto. The third-party registrations, therefore, do not
establish that the cited mark is weak and thus entitled to
only a limited scope of protection.
Ser No. 75/342,774
5
Finally, we have not overlooked the fact that
applicant’s goods are specifically targeted to professional
painters in the automotive refinish industry. Be that as
it may, even discriminating purchasers are not immune to
source confusion, especially in cases like the present one
where closely related goods are marketed under
substantially similar marks.
In sum, we conclude that purchasers familiar with
registrant’s stylized CLEAR-CUT mark for abrasive particles
for use in stripping unwanted coatings, materials, and the
like from the surfaces of substrates in such industries as
the aircraft, automotive, and electronic industries, would
be likely to believe, upon encountering applicant’s
KLEAR-KUT mark for clear and pigmented coatings in the
nature of paint for use by professional autobody painters
in the automotive refinish industry, that such goods
emanate from or are otherwise associated with or sponsored
by the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.