Thursday, January 20, 2011

Finding Bricks Related to Mortar and Grout, TTAB Sustains 2(d) Opposition to STONEL over STONFIL

Finding Applicant Stonel's bricks related to Opposer Stoncor's mortar and grout, the Board sustained a Section 2(d) opposition to registration of the mark STONEL & Design, finding the mark likely to cause confusion with the registered mark STONFIL. Opposer Stoncor claimed a family of "STON-" marks based on fifteen registrations for various products, but the Board found no family. Stoncor also claimed fame for its marks, but again it ran into a brick wall. Nonetheless, Opposer prevailed. Stoncor Group, Inc. v. Stonel Inc., Opposition No. 91177161 (January 19, 2011) [not precedential].

In support of its fame argument, Stoncor pointed to advertising, trade show participation, and nearly 12,000 sales calls made annually by its sales reps. It also submitted magazine reader surveys showing that its flooring ranked first. The Board pointed out, however, that Stoncor failed to submit sales and advertising figures that would place its "degree of success" in context.

Although Stoncor pleaded fifteen registrations for marks having the "STON-" prefix [Slyly seeking a Family STON- ? -ed.], the Board observed (again) that "the mere fact of adoption, use and/or registration of fifteen STON- marks does not in itself prove that a family of marks exists." [The marks must eat meals together, go to church together, and argue with each other to constitute a family - ed.]. Despite some evidence of "conjoint use" of some of Opposer’s marks, "the evidence falls short of showing that a family of STON- marks has been consistently promoted together."

Guess who?

As to the goods, the parties focused on Opposer’s flooring systems and Applicant’s prefabricated brick panels, but the Board instead zeroed in on the bricks in the application and the mortar and grout in Opposer's STONEFIL registration, "inasmuch as we find that they represent the closest relationship between the respective goods of the parties." The Board then got down to the nitty-gritty:

To state the obvious, “mortars” and/or “grouts,” on the one hand, and “bricks” on the other, are complementary building materials. These goods are used in laying bricks, and the mortar holds the bricks together. *** Bricks, mortar and grout could be purchased at the same time in the same store by the same individual for use in the same construction project.

Moreover, bricks and mortar may be purchased by "ordinary consumers for use in do-it-yourself projects around the home."

As to the marks, the Board observed that Opposer's mark STONFIL for goods including "mortars" and "grouts" presented "opposer’s strongest case." Not surprisingly, it found the word STONEL to be the dominant portion of Applicant's mark, and it opined that the marks "sound similar" Although each has no specific meaning, the Board noted that each may suggest the word "stones." In sum, it concluded that the similarities in the marks outweigh their differences.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.


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