Stoncor Group, Inc.v.Specialty Coatings, Inc.

Trademark Trial and Appeal BoardMar 5, 2013

No. 91187787re (T.T.A.B. Mar. 5, 2013)

Oral Hearing: November 15, 2011 Mailed: March 5, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ Stoncor Group, Inc. v. Specialty Coatings, Inc. ________ Opposition No. 91187787 to application Serial No. 77428195 filed on March 21, 2008 _______ Request For Reconsideration _______ Charles N. Quinn of Fox Rothschild LLP for Stoncor Group, Inc. Thomas Hoxie of Hoxie and Associates LP for Specialty Coatings, Inc. _______ Before Quinn, Holtzman, and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On June 22, 2012, the Board issued a final decision dismissing opposer’s Section 2(d) and descriptiveness claims. As to opposer's Section 2(d) claim, the Board found that contemporaneous use by applicant of its ARMORSTONE mark for goods which include "glazes” and “epoxy coating for use on concrete industrial floors" is not likely to cause confusion with opposer's previously registered marks STONCLAD, STONHARD, and STONSHIELD for, inter alia, “epoxies,” and “epoxy THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91187787 2 coatings for use on concrete floors.” In addition, the Board did not consider opposer’s genericness claim, finding that it was neither properly pleaded nor tried by implied consent. This case now comes before the Board for consideration of opposer’s timely filed request for reconsideration of the Board’s decision pursuant to Trademark Rule 2.144. The motion is fully briefed. The premise underlying a request for reconsideration of a Board decision in an ex parte appeal is that “based on the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. The request may not be used to introduce additional evidence, nor should it be devoted simply to a reargument of the points presented in the requesting party's brief on the case. Rather, the request normally should be limited to a demonstration that based on the evidence properly of record and the applicable law, the Board's ruling is in error and requires appropriate change.” Cf. TBMP § 543 (3d. ed. rev. 2012), discussing the application of Trademark Rule 2.129(c); 37 CFR § 2.129(c) (request for reconsideration of final decision in an inter partes proceeding). As grounds for reconsideration, opposer argues the following: that the Board erred in the likelihood of confusion analysis by ignoring evidence of the pronunciation of opposer’s mark and substituting its own judgment; mischaracterized the testimony of opposer’s Vice President of Marketing, Michael Jewell, as hearsay when the testimony instead constituted proper lay opinion testimony; improperly found that the issue of genericness was not tried by implied Opposition No. 91187787 3 consent by ignoring portions of applicant’s brief; and ignored evidence of third-party descriptive use of the mark ARMORSTONE which led to the finding that the mark is not descriptive. First, with regard to the pronunciation of opposer’s mark, opposer argues that the Board ignored the testimony of Mr. Jewell that the “STON-” prefix is pronounced with a long vowel sound for the letter “O” as the word “stone.” However, as the decision correctly states, “[o]pposer did not introduce any evidence at trial that ‘STON-‘ would be pronounced and perceived by prospective consumers as the equivalent of the word ‘stone.’” Decision, p. 12 (emphasis added). This finding is entirely accurate. Opposer did not introduce any testimony or affidavits from consumers or survey evidence regarding how consumers are likely to perceive and pronounce opposer’s “STON-” formative marks. As such, the Board did not err in its finding regarding this factor in making its likelihood of confusion determination. With regard to the testimony of Mr. Jewell, the Board stated the following: Opposer relies primarily on the testimony of Mr. Jewell who stated that in his view, the typical general contractor would mistakenly believe that flooring material bearing the mark ARMORSTONE, would identify a product manufactured by opposer. Opposer argues that based on his testimony and the fact that applicant failed to cross- examine Mr. Jewell on this subject, “it is undisputed” that a prospective consumer would confuse applicant’s ARMORSTONE mark with opposer’s STONCLAD, STONHARD, and STONSHIELD marks. [citation omitted]. Aside from the fact that Mr. Jewell’s testimony is hearsay, it is at best speculative, and therefore accorded minimal probative value. Furthermore, the fact that applicant elected not to cross-examine Mr. Jewell on this topic does not make his testimony dispositive of the issue. Instead, we will examine the marks themselves to reach a determination on this first du Pont factor. Opposition No. 91187787 4 Decision, pp. 11-12. Essentially, Mr. Jewell offered his legal opinion regarding opposer’s likelihood of confusion claim against applicant. It is not appropriate for a fact witness to offer his legal opinion regarding the ultimate disposition of a claim before the Board. For this reason, it was entirely proper for the Board to disregard any opinion testimony regarding the ultimate disposition of opposer’s Section 2(d) claim. As to the finding that opposer’s genericness claim was not tried by implied consent, opposer points to two sentences in applicant’s brief discussing opposer’s descriptiveness claim as support that the genericness claim was tried by implied consent. Again we disagree. Applicant’s brief is entirely devoid of a discussion of opposer’s genericness claim. There was no proper pleading of opposer’s genericness claim, and nothing in the testimony to support a finding that applicant was on notice that this claim was implicitly tried. Moreover, as we previously stated, there should be no doubt that applicant was apprised of this claim. Again, the Board did not err in its determination on this issue. With regard to the descriptiveness claim, as noted in the opinion, during oral argument, counsel for opposer stated that the evidence of third-party brand name use of the term ARMORSTONE submitted by notice of reliance was not in support of opposer’s descriptiveness claim. See Decision, n.19. Moreover, even if we were to have considered this evidence in support of opposer’s descriptiveness claim, our determination would still have been the same. As explained in our opinion, “[o]pposer has introduced no evidence (for example, dictionary definitions, excerpts Opposition No. 91187787 5 from news databases or the Internet) that the combination of the terms ‘armor’ and ‘stone’ are merely descriptive of applicant’s goods.” Decision, p. 21. Decision: The Board, not being persuaded of any error in the rendering of its decision, hereby denies opposer's request for reconsideration.