Trademark Trial and Appeal Board

Jun 27, 2011

No. 91181621 (T.T.A.B. Jun. 27, 2011)

Hearing: Mailed:
11/09/10 6/27/11

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

StonCor Group, Inc.
v.
Les Pierres Stonedge Inc.
_____

Opposition No. 91181621
to application Serial No. 76650832
filed on November 22, 2005
_____

Request for Reconsideration
_____

Charles N. Quinn of Fox Rothschild for StonCor Group, Inc.

James R. Menker of Holley & Menker for Les Pierres Stonedge
Inc.
______

Before Quinn, Wellington and Wolfson, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

The Board, on May 17, 2011, dismissed the opposition.
Opposer now requests reconsideration of this decision.
We have carefully considered opposer’s request, but we
remain of the opinion that the evidentiary record
introduced by opposer falls short of proving its likelihood
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opp. No. 91181621
2
of confusion claim. To reiterate, the only evidence of
record on opposer’s behalf comprises status and title
copies of its pleaded registrations.
Even though the parties’ goods may be, at best,
complementary, the goods are distinctly different. As we
indicated in our decision, any conjoint use of the involved
goods, in and of itself, is an insufficient basis in this
case upon which to find that the goods are sufficiently
related for purposes of our likelihood of confusion
analysis, especially where, as here, the marks are also
different. As we stated: “There simply is no evidence to
even suggest that the goods are of a type that ever emanate
from a common source, much less that purchasers would
expect them to, especially when, as in this case, the marks
are different.” (Opinion, p. 18). We stand by the
conclusion set forth in the opinion:
Based on the sparse record introduced
by opposer, comprising only its pleaded
registrations, and keeping in mind that
opposer has the burden of proof of
establishing its likelihood of
confusion claim by a preponderance of
the evidence, we see opposer’s
likelihood of confusion claim as
amounting to only a speculative,
theoretical possibility. The
cumulative differences between each of
the parties’ marks and the goods sold
thereunder, coupled with the
suggestiveness of the STON(E)- portions
of the marks, persuade us that
Opp. No. 91181621
3
confusion is unlikely to occur among
consumers in the marketplace.
(Opinion, pp. 20-21).

Accordingly, the request for reconsideration is
denied, and the Board’s decision dated May 17, 2011 stands.
We also note that opposer has filed a second request
to file a supplemental brief “addressing the issue of
attachment of a presumption of administrative correctness
to trademark registration applications approved for
publication of the marks approved for opposition by the
[USPTO].” (p. 1). Opposer states that its “rebuttal
testimony and documentary evidence were admissible to rebut
a presumption of administrative correctness to which the
[USPTO] action of approving [applicant’s] application was
entitled, just as in any essentially final action of any
administrative agency.” (p.2).
The Board has inherent authority to manage its own
proceedings. See TBMP §§101; 102.03; and 702.03 (3d ed.
2011). To that end, the Board has long-standing practices
and procedures, as well as the Trademark Rules of Practice,
that govern inter partes proceedings. The present case is
no exception. As we indicated in our original decision,
opposer, during its testimony period, neither took nor
offered any other evidence. Nevertheless, opposer, during
its rebuttal testimony, took a deposition, at which
Opp. No. 91181621
4
applicant objected “on the grounds that it’s improper
rebuttal.” Applicant, in its brief, renewed its objection.
Even a cursory review of the “rebuttal” testimony
makes it clear that it is in the nature of testimony that
was appropriate for introduction during opposer’s case-in-
chief. On that basis alone, the rebuttal is improper.
But, even more specifically in the context of this
proceeding, applicant did not take testimony or introduce
any other evidence. Thus, there was nothing for opposer to
rebut. When the defendant in a Board inter partes
proceeding does nothing during its testimony period, there
is nothing for the plaintiff to rebut. So as to be clear,
such a situation does not present the plaintiff with a
second chance to take testimony or offer other evidence
during rebuttal that was proper for introduction in support
of its case-in-chief. Opposer’s argument that its
testimony and evidence is admissible to rebut “the
presumption of administrative correctness” accorded to the
Office’s “approval” of the involved application by having
published the mark for opposition is ill-founded; to
reiterate, Mr. Jewell’s deposition comprises classic case-
in-chief testimony. See Visual Info. Inst., Inc. v. Vicon
Indus. Inc., 209 USPQ 179, 182-83 (TTAB 1980); and General
Electric Co. v. Graham Magnetics, 197 USPQ 690, 692 n.5
Opp. No. 91181621
5
(TTAB 1977). To take opposer’s position to the extreme, it
would allow a plaintiff in a Board procedure to do nothing
during its testimony period, with the plaintiff then seeing
what the defendant does (or does not do), and then having
the plaintiff proceed, during rebuttal, to put on its case-
in-chief under the guise of “rebutting a presumption of
administrative correctness to which the [USPTO] action of
approving [applicant’s] application was entitled.” Board
practice and procedure governing inter partes proceedings
neither allow nor contemplate such action by a plaintiff.
Thus, we see no reason to allow opposer to file a
supplemental brief, arguing a position that clearly is
contrary to established Board practice and procedure
governing proper rebuttal in an inter partes proceeding.
Accordingly, opposer’s request is denied.