Wednesday, February 02, 2011

TTAB Allows Applicant to Amend I.D., But Still Sustains 2(d) Opposition to FINISHPRO for Professional Paint Sprayers

Applicant Graco won the initial skirmish but lost the war in this Section 2(d) opposition. The Board granted Graco's motion to amend its identification of goods from "paint sprayers" to "paint sprayers for use by professional painters and professional contractors in applying architectural coatings." But the Board still found Graco's mark FINISHPRO likely to cause confusion with the registered mark FINISH PRO (in standard character and design form) for paint and paint-related products for automobile, marine, and industrial use. Liberty Bell Equipment Corp. v. Graco Minnesota Inc., Opposition No. 91177965 (January 31, 2011) [not precedential].

After discovery closed and before its testimony period opened, Graco filed a motion under Rule 2.133(a) to amend its application as stated above. Liberty Bell objected, arguing that it had conducted discovery based on the unrestricted description of goods.

The Board ruled that Liberty Bell would not be prejudiced by the motion because Graco had explained in its interrogatory responses that it "intended to use its FINISHPRO mark to identify" sprayers used by professionals in applying architectural coatings. The Board entered judgment against Graco on the original description of goods, and granted the motion to amend.

Turning to the du Pont analysis, the Board not surprisingly found the involved marks to be "essentially the same." It then observed, once again, that the greater the similarity between the marks, the lesser the required between the goods to support a finding of likely confusion. And "[w]hen virtually identical marks are involved, there only needs to be a viable relationship between the respective goods to find that a likelihood of confusion exists."

The Board noted that, although Applicant's identification of goods was restricted to sprayers for use with architectural coatings, "there is evidence in the record that demonstrates that the restricted description of goods will not avoid a likelihood of confusion because applicant's paint sprayers may be used for automotive applications and presumably marine and industrial applications. [Then why allow Graco's amendment to the identification of goods? - ed.]

Opposer's paints, on the other hand, may be used with spray guns. Therefore the Board found the involved goods to be complementary.

The Board noted that Graco's products sell for $1,200 to $2,100, and that the involved goods would be purchased with a high degree of care. "However, even professional painting contractors exercising a high degree of care are not immune to trademark confusion." The Board concluded that the care with which the goods are purchased was not sufficient to overcome the other du Pont factors.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.


Post a Comment

<< Home