Test Your TTAB Judge-Ability: Are TEKSTONE and STONTEC Confusingly Similar for Vinyl Flooring?
Applicant Metroflor applied to register the mark TEKSTONE for "vinyl floor tile," but StonCor opposed, claiming likely confusion with its registered mark STONTEC for "non-metal floors, namely, vinyl flake decorated and colored floors, aspartic urethane-based floors." Metroflor filed a cross-motion for summary judgment under Section 2(d). How would you rule? StonCor Group, Inc. v. Metroflor Corporation, Opposition No. 91194599 (June 24, 2011) [not precedential].
The Board granted StonCor's motion for summary judgment, sustaining the opposition. It found the goods to be "closely related, if not identical," and that these flooring products presumably travel through overlapping channels of trade to overlapping classes of consumers.
With the goods so closely related, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that "the transposition of terms is not always sufficient to distinguish the resulting marks." Here, the transposition does not "add anything which would change the commercial impression fostered by these marks." They are similar in sound and appearance, and "engender the same suggestive connotations inasmuch as they both reference stone technology."
Applicant Metroflor feebly pointed to the lack of evidence of actual confusion, but of course that is not the test. In any case, Applicant submitted no evidence to show that there was any opportunity for confusion in the marketplace.
And so the Board sustained the opposition.
TTABlog comment: I don't think these marks are similar enough. They look and sound too different, and "stone" and "tech" are weak formatives. Are people really dumb enough to confuse TEKSTONE with STONTEC?
Stoncor, who claims to be the world leader in commercial and industrial flooring, seems to be a rather aggressive TTAB litigant. It seems to leave no stone unturned when it comes to policing the word "stone." I wonder if its has every resorted to the "rock-it" docket down in Virginia?
Text Copyright John L. Welch 2011.
posted by John L. Welch @ 7/14/2011
2 comments
2 Comments:
I don’t think it is a question of stupidity but rather the common tendency towards a type of slip of the tongue called a spoonerism. A spoonerism is an error in speech or deliberate play on words in which corresponding consonants or vowels are switched. Although in this case the transposition is of syllables and not a true spoonerism. It also frequently happens among dyslexic individuals (myself included). As a punster, you should know that spoonerisms are uquently freezed for comedic effect. Regardless, I can imagine myself very easily saying TekStone in place of StonTec, especially if the mark is not in front of me and I’m working from memory. Since the goods are virtually identical, that would be confusing if I’m shopping for the product.
My only problem with the above analysis is the missing E. If the product is in front of me and it isn’t stone nor does it look like stone, I would not necessarily pronounce it stone. Was this addressed in the opinion? Thust a jought.
Interestng case and perfect for summary judgment because the issue is primarily legal. This seems like a fairly standard case of transposed marks (although Miriam raises a good point about the phonetics of the mark) and case law supports finding a likelihood of confusion when marks are transposed and the transposition does not create a different commercial impression. The issue here is primarily legal, I think, because it is whether or not the transpositions create the same commercial impression and therefore should be considered confusingly similar as per the case law. The marks need not be as similar to find likelihood of confusion since the goods seem identical. This is virtually the same analysis the examiner needs to have conducted based upon the same evidence.
Curiously, the examiner apparently did not cite the STONTEC mark against TEKSTONE, even initially, and examiners are aware of the transposition rule. Perhaps the examiner missed the STONETEC registration in his/her search or perhaps he/she really thought the marks were not confusingly similar.
I think this was a good opposition for Stonecor to bring and I would hope that counsel for Metroflor were able to conduct a trademark search, found the STONTEC registration and advised Metroflor accordnigly. If Metroflor then decided to proceed with that information, this is the risk they faced.
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