Monday, December 27, 2004

Paint Can Icon Gets TTAB Brush-Off

The TTAB brushed aside the attempt of Dunn-Edwards Corporation to register the paint brush icon shown below as a trademark for "paint for use on masonry" because as used, the design does not function as a trademark. In re Dunn-Edwards Corp., Serial No. 76201822 (December 16, 2004) [not citable].

Dunn-Edwards had received a Notice of Allowance, but the Examining Attorney, upon seeing the specimen of use, issued a refusal to register under Sections 1, 2, and 45 of the Trademark Act. The specimen was a label affixed to a paint can, on which the subject design:
"appears in a very subordinate fashion (i.e. far less than the size of a postage stamp) and the design merely indicates that the paint can be used on masonry. Eight other very small informational icons appearing on the label indicate that this paint is water-based, but not solvent-based; that this paint is good for both interior and exterior use; that this paint can be used on dry wall, wood and metal; and that this paint has a certain gloss range."
Dunn-Edwards also submitted an advertising poster, but that made matters worse: the poster displayed 14 small informational icons under the heading "Our Instructions Are Now in Sign Language." The Board concluded that "the design . . . does not function as a trademark, but rather functions merely as an informational icon, along with other informational icons, to indicate the 'Application Use' for a particular can of paint."

Dunn-Edwards argued that its design is "not merely descriptive," but the Board noted that such an assertion was "totally misplaced," since the question was whether the design served as a mark at all. Similarly, Applicant's reference to three registrations obtained for other paint can icons fell flat, because (as it frequently states) the TTAB is "not bound by actions of Examining Attorneys in allowing marks to be registered."

1,696 Dunn-Edwards Colors


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