Thursday, July 17, 2014

WYHA? CAFC Affirms TTAB's Dismissal of STONSHIELD v. ARMORSTONE Opposition

The CAFC affirmed the Board's ruling in StonCor Group, Inc. v. Specialty Coatings, Inc. (Opposition No. 91187787), dismissing on opposition to registration of the mark ARMORSTONE for, inter alia, epoxy coating for use on concrete industrial floors. The Board found the applied-for mark not likely to cause confusion with the registered mark STONSHIELD [as well as the registered marks STONCLAD and STONHARD] for goods that include epoxy hardeners; and it also found the applied-for mark not merely descriptive of applicant's epoxy coatings. Would you have appealed? Stoncor Group, Inc. v. Specialty Coatings, Inc., 111 USPQ2d 1649 (Fed. Cir. 2014) [precedential].

On appeal, StonCor raised only two issues: likelihood of confusion with its STONESHIELD mark, and mere descriptiveness.

As to the Section 2(d) issue, the Board found that the first du Pont factor, the similarity or dissimilarity of the marks, weighed against StonCor.

StonCor presented evidence that the “o” (in “Ston”) would be pronounced by consumers with a long vowel sound, as in the word “stone.” The Board reasoned, however, that the spelling of “STON” and ordinary rules of English dictate that the “o” would be pronounced with a short vowel sound, as in the word “on.” Thus, the Board found that there was a dissimilarity in pronunciation.
The CAFC ruled, however, that the Board’s pronunciation analysis was not supported by substantial evidence. The Board improperly failed to credit StonCor’s evidence that consumers would pronounce “STON” as “stone.”

There is no correct pronunciation of a trademark that is not a recognized word. See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969). “STON” is not a word in English. Neither party argues that “STON” is a word in any other language. Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

The Board's error, however, was harmless, because its other findings under the first du Pont factor were each supported by substantial evidence and together provided substantial evidence in support for the Board's weighing of that factor in favor of applicant.

The CAFC gave short shrift to the mere descriptiveness issue. StoneCor submitted definitions of "armor" and "shield," but no evidence that the combination conveyed "an immediate idea of the ingredients, qualities or characteristics of" the products.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog note:  Well, WYHA?

Text Copyright John L. Welch 2014.


At 1:52 PM, Anonymous Anonymous said...

So what happened to the case law that examiners always cite in office actions - "there's no correct pronunciation of a mark..."? Not that that was such a relevant issue in this case.


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