Monday, March 12, 2012

Granting Rule 2.132(b) Motion, TTAB Dismisses Ston Cor's 2(d) Opposition For Failure to Make Prima Facie Case

In this Section 2(d) opposition, Applicant Cupa Materials, Inc. moved for judgment under Rule 2.132 (b) at the end of Opposer Ston Cor's case-in-chief. Ston Cor relied only on its 15 pleaded registrations and nothing more. The Board granted the motion and dismissed the opposition, finding that Ston Cor had failed to make out a prima facie case of likelihood of confusion. Ston Cor Group, Inc. v. Cupa Materiales, S.A., Opposition No. 91190420 (February 28, 2012) [not precedential].

Cupa applied to register the mark STONEPANEL CUPA in stylized form (shown above) for non-metallic building materials (e.g., pipes and sealants), stone monuments, and construction services [STONEPANEL disclaimed]. Opposer Ston Cor pleaded 15 trademark registrations (and attached status-and-title copies to its Notice of Opposition)for the following marks for various grouts and mortars: STONCLAD-PT, STONHARD, STONCRETE, STONLOK, STONLUX, STONLINER, STONSHIELD, STONSET, STONKOTE, STONPROOF, STONSEAL, STONFIL, STONCLAD, STONBLEND, and STONCREST.

Rule 2.132(b) provides that:

If no evidence other than a copy or copies of Patent and Trademark Office records is offered by any party in the position of plaintiff, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the party in the position of plaintiff has shown no right to relief.

Copa argued that Ston Cor had failed to meet its burden to submit evidence establishing a reasonable likelihood of confusion. Ston Cor asserted that it owns a "family" of "STON" marks, but the Board pointed out that we a party "cannot simply rely on its pleaded registrations to establish that it has a family of marks. Testimony and/or evidence beyond registration evidence is required to establish such a family of 'STON' marks and that is lacking here."

Turning to the individual marks of Opposer, the Board observed that the "only arguable similarity" is the STON- and STONE element, but Ston Cor did not establish that
the appearance, sound, connotation and commercial impressions of the marks are similar. Instead the Board found that the dissimilar elements distinguish the marks.

As to the goods/services of the parties, they are clearly different and any relatedness is not readily apparent from the pleaded registrations.

And so the Board granted the motion and dismissed the opposition.

TTABlog comment: Ston-Cor took a gamble by not submitting any evidence during its testimony period. Third-party registration evidence might have helped on the relatedness issue.But the marks? "Ston-" has to be a weak formative for, at least, goods made of stone. If you were to appeal this case, which route would you take, CAFC or district court, and why?

Text Copyright John L. Welch 2012.


At 9:54 PM, Anonymous Legal Advice said...

The opposing party definitely dropped the ball on this one it seems. Mere bare bone assertions from an opposing party that opposing party has a family of marks - is clearly insufficient - to make out a prima facia case. It is not too hard to make out a case that the applicant's marks are confusing and similar to the registrations, so as to why it was not articulated is a mystery to me. The attorney that drafted the opposition should be castigated; reprimanded and tarred and feathered as inadequate counsel.

At 9:25 AM, Anonymous Anonymous said...

The attorney that drafted the opposition may have also counseled the client that further evidence was needed. The client may have decided not to do so.

At 2:47 PM, Anonymous Patrick said...

Which appeal route would YOU have taken, John?


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