Genericness Counterclaim Demolishes ROCKSCAPE Registration for Landscaping Stone

Delaware Quarries opposed PlayCore's application to register the mark ROCKSCAPE for "playground equipment, namely, climbing units," claiming a likelihood of confusion with its identical, registered mark for "stone, gravel or similar products, namely boulders, stone veneer, and crushed stone for use in landscaping, building construction, and paving." PlayCore counterclaimed for cancellation on the grounds of genericness and mere descriptiveness. The Board dismissed the opposition and granted the counterclaim petition, confirming the old adage that people who live in glass houses .... Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., Opposition No. 91190282 (July 2, 2013) [not precedential].

Likelihood of confusion: The crucial question was, of course, the relatedness of the goods. PlayCore admitted that its products are "themed to look more or less like rocks," and could be integrated with landscaping. The Board, however, found the relationship between the involved goods, if any, to be insufficiently clear. There was no evidence that the goods travel in the same trade channels in a manner that would likely cause source confusion. The purchasers of PlayCore's products would be bought after some forethought, and not on impulse. [But what about Delaware's goods? - ed.]. Finally, unauthorized, third-party usage of the term "rockscape" for similar products showed that Delaware's mark is weak.

And so the Board dismissed the opposition.

Genericness: It was not disputed that the genus of Delaware's goods was set out in its identification of goods. PlayCore submitted evidence showing dozens of websites using the term "rockscape" in connection with landscaping with rocks, stones, etc. The Board concluded that these uses "clearly establish" that "rockscape" would be understood by relevant consumers as a generic term for Delaware's identified goods.

For the sake of completeness the Board ruled that Delaware's mark was at least merely descriptive, and since Delaware did not claim acquired distinctiveness, the Board sustained the petition for cancellation on that alternative ground as well.

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Text Copyright John L. Welch 2013.