At some point during the application process, an applicant must provide the U.S. Patent and Trademark Office with a specimen showing the applied for mark in connection with the goods or services identified in the trademark application. If the specimen shows the mark in use with goods or services that similar but still slightly different from the goods or services listed in the application, the specimen will be refused.
In In re Kelly-Moore Paint Co., Kelly-Moore had applied for the ENVIRO-COAT trademark in connection with the following goods:
printed color guides for painting instructions; paint color swatch cards; printed educational materials, namely, booklets, pamphlets, flyers and magazines directed to colors; printed materials, namely, booklets, pamphlets, flyers and magazines to aid artists and architects in selecting colors in the fields of color selection and interior design; printed color posters; color albums; scrap booking albums; boxes for holding architects’ and artists’ color and painting tools and materials; printed educational materials [*2] directed to colors and vintage houses, namely, booklets, books, pamphlets, flyers and magazines; printed educational materials, namely, booklets, pamphlets, flyers and magazines to assist paint store customers in selecting colors and color combinations; paint rollers; paint application rollers; paint brushes; paint applicators; paint kits comprised of paints, brushes, paint rollers, paint trays; paint stick markers; paint stirrers; and paint paddles – said goods being distributed through channels of trade consisting exclusively of applicant’s own network of retail paint stores
However, Kelly-Moore submitted specimens that showed the ENVIRO-COAT trademark in connection with paint rather than in connection with the goods identified in the application, such as color guides and flyers and pamphlets. Therefore, the Examining Attorney assigned to Kelly-Moore’s ENVIRO-COAT trademark refused the specimen on the ground that it failed to show use of the mark in connection with the goods identified in the application.
Kelly-Moore then appealed the decision to the U.S. Trademark Trial and Appeal Board (“TTAB”). The TTAB confirmed the refusal of the specimen, noting that Kelly-Moore’s specimens – even if they were flyers – were advertisements directed to paint, not the goods listed in the application.
No related posts.