The USPTO refused registration of the mark CREATE PAINT (in standard characters) for “paints for creating dry erase surfaces; paints,” finding the mark likely to cause confusion with the registered mark PAINT ‘N CREATE & Design (shown immediately below) for “paints.” On appeal, applicant contended that the apostrophe “n” in the cited mark “is unlikely to occur outside of the context of children’s products.” How do you think this came out? In re Scorpion Protective Coatings, Inc., Serial No. 86617791 (February 27, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

The goods are legally identical. Applicant’s argument regarding registrant’s paints being children’s products was irrelevant, since there is no such limitation in the cited registration. These identical goods are presumed to travel in the same channels of trade to the same classes of consumers.

Turning to the marks, the Board noted that, with regard to a word + design mark, the verbal portion is typically the most likely to indicate source because it is the portion that consumers will use to call for the goods.

However, the Board found that the marks have dissimilar meanings. In applicant’s mark, “create” modifies “paint,” and the mark connotes the creation of paint. PAINT ‘N CREATE “connotes the creation of artwork by children, using paint.” [Adults never use an apostrophe “n” or create artwork? – ed.]

The Board concluded that the commercial impressions of the marks are different, and that the marks are not similar when considered in their entireties.

And so the Board reversed the refusal.