Delaware Quarries, Inc.v.PlayCore IP Sub, Inc.

Trademark Trial and Appeal Board

Jul 2, 2013

No. 91190282 (T.T.A.B. Jul. 2, 2013)

Mailed: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Delaware Quarries, Inc.
v.
PlayCore IP Sub, Inc.
________

Opposition No. 91190282 to
Application Serial No. 77562077
_______

Eric J Von Vorys of Shulman, Rogers, Gandal, Pordy & Ecker,
P.A. for Delaware Quarries, Inc.

Douglas T Johnson of Miller & Martin PLLC, for PlayCore IP
Sub, Inc.
_______

Before Cataldo, Ritchie, and Hightower, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

PlayCore IP Sub, Inc. (“applicant”) has filed an
application to register ROCKSCAPE in standard characters on
the Principal Register for “playground equipment, namely,
climbing units,” in International Class 28.1 On May 19,
2009, opposer Delaware Quarries, Inc. (“opposer”) filed

1 Serial No. 77562077, filed on September 4, 2008, under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona
fide intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 91190282
2
this opposition on the ground of priority and likelihood of
confusion, pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d) as to opposer’s prior registered mark
ROCKSCAPE, also in standard character format, for “stone,
gravel or similar products, namely boulders, stone veneer,
and crushed stone for use in landscaping, building
construction, and paving,” in International Class 19.2
Applicant denied the salient allegations of the notice, and
asserted several affirmative defenses, including that
opposer’s ROCKSCAPE mark, is “invalid as descriptive and
was procured by fraud,” (Answer at para. 16), as well as
that it is “generic or descriptive and it lacks secondary
meaning.” Id. at para. 17.
Applicant further counterclaimed to cancel opposer’s
pleaded registration on the grounds that it was procured by
fraud, that it is generic, and that, in the alternative, it
is at least merely descriptive and has not acquired
distinctiveness. Opposer denied the salient allegations of
the counterclaim, adding, with regard to third parties
identified as including the term “rockscape” in their name:
Opposer has corresponded with each of the
companies identified in Exhibits 7 through 37
inclusive that are using the term ROCKSCAPE

2 Registration No. 3166094, Registered October 31, 2006. Section
8 affidavit accepted.
Serial No. 91190282
3
improperly and is discussing appropriate ways in
which said companies can rectify such use.

Of the 30 companies, over half have agreed that
Opposer has rights in the ROCKSCAPE name and have
ceased using the term in connection with their
goods/services.
(Amended Answer to Counterclaim at “Affirmative
Pleading” para. 2-3)

Both opposer and applicant have filed briefs on
opposer’s case-in-chief, and both have filed briefs on
applicant’s counterclaim.
The Record and Evidentiary Issues
The record consists of the pleadings; the files of the
applications both for applicant and for opposer’s pleaded
registration in the counterclaim; and the following3:
1. The testimonial deposition of George R. Cannell,
opposer’s Director of National Sales, dated May 3,
2012.
2. The testimonial deposition of Thomas Robert Nordquist,
applicant’s Senior Vice President of Marketing,
Product Development & Sales, dated February 15, 2011.
3. Applicant’s several notices of reliance on
a. News, articles and websites, submitted to show
that the term “rockscape” is generic or
descriptive for applicant’s identified goods.
Serial No. 91190282
4
b. Definitions of various renditions of “rock,” “-
scape,” “rockscape” and related and similar
words, for the same purpose.
c. Opposer’s responses to discovery, submitted to
rebut opposer’s allegations in opposer’s case in
chief, and to support applicant’s allegations in
applicant’s counterclaim.
d. Copies of registrations and some application
files for registrations (and some applications
not matured to registration) owned by applicant,
by opposer, and by some third parties.
In its brief, applicant moves to strike Exhibit 2 of
the Cannell deposition as well as testimony given
therewith, on the grounds that Mr. Cannell has no personal
knowledge of the document and therefore cannot testify
thereto. The referred-to exhibit is a chart describing the
status of cease and desist letters sent out by opposer, and
the responses received. (Cannell depo. at 8, and Ex. 2)
(“It is a summary of the responses to the letters that we
sent to companies that were infringing on our trademark,
Rockscape.”). Mr. Cannell testified that he did not
personally create the chart. Id. at 14 (“This document, I

3 As noted in applicant’s brief, opposer’s notices of reliance
submitted on June 8, 2012 were stricken from the record by Board
Serial No. 91190282
5
believe, was prepared by our attorney, who handles our
trademark matters.”). He also testified that he did
“not recall” personally being involved with any of the
dialogue with any of the alleged infringers, having looked
at any of the allegedly infringing websites, or having
checked whether in fact they had been rectified. Id. at
13-15. Accordingly, while we overrule the objection and
find that Mr. Cannell has attested to what the document
says on its face, we will accord it such limited probative
value as it may have, taking into account that he did not
personally attest to any of the facts therein.
Priority and Standing
As a result of opposer’s submission of a copy of its
pleaded ROCKSCAPE registration with its notice of
opposition (which registration also appears elsewhere in
the record), opposer has established its priority as well
as its standing. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).
Applicant, conversely, has standing in the
counterclaim by virtue of being the defendant in this

Order dated September 14, 2012 as being untimely.
Serial No. 91190282
6
opposition. See Trademark Act Section 14, 15 U.S.C. §
1064; see also See Cunningham v. Laser Golf Corp., supra.
I. Opposer’s Case-in-Chief
LIKELIHOOD OF CONFUSION
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record. See In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”). We consider all of the du Pont factors for which
there was evidence and argument. The others, we consider
to be neutral.
Serial No. 91190282
7
We first consider the similarity or dissimilarity of
the marks, which look and sound identical. There is little
dispute that the commercial impression and connotation of
the term “rockscape” would be highly similar when applied
to playground climbing walls as when applied to actual
stones, boulders, and similar products used in landscaping,
building, and paving, i.e., giving the impression of a
landscape of rock. Accordingly, we find that this du Pont
factor favors a finding a likelihood of confusion.
We turn then to an analysis of the similarity or
dissimilarity of the goods and the channels of trade. We
note that for this, opposer relies entirely for its
argument of relatedness on the testimony of applicant’s
witness, Mr. Nordquist.4 The Nordquist deposition does
indicate in a few places that applicant’s playgrounds are
intended to emulate the look of real rock. (“[T]he general
colors that – that those products are available in tend to
be a granite or a – we call it stone, or an earth color, as
well as a metal color.”) Id. at 46 and Ex 3. He also
refers to the “natural slate texture” of the product, id.
at 47, saying “it’s sort of a cross between a real rock and
a piece of playground equipment.” Id. at 48; it’s “a

4 We note again that opposer submitted notices of reliance, which
have been excluded from the record for untimeliness.
Serial No. 91190282
8
climbing component that is themed to look more natural.”
Id. at 49. In addition to admitting that applicant’s
ROCKSCAPE products are themed to look more or less like
natural rocks, Mr. Nordquist admitted that they may be
placed in such a way that they could be integrated with
landscaping, including landscaping with stones, paving, and
gravel. Nevertheless, Mr. Nordquist testified that neither
he, nor his competitors sell stone, gravel, or boulders.
Id. at 22.
We find from this testimony that while there may be
some tangential relationship between the playground
climbing units identified by applicant and the stone and
related products used in landscaping, building, and paving,
as identified by opposer, the nature of that relationship,
if any, is not sufficiently clear to us. As our primary
reviewing court has noted, we must not base a finding on a
mere possibility of likelihood of confusion. See Bongrain
Int’s (Amer.) Corp. v. Delice de France, Inc., 811 F.2d
1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987). Rather, the
evidence must show at least a viable relationship between
the goods, which opposer has not done. Similarly, there is
no evidence that the goods will travel in the same or
similar channels of trade in a manner that consumers will
be likely to confuse their source. Accordingly, we find
Serial No. 91190282
9
that these du Pont factors weigh against finding a
likelihood of confusion.
We next consider the conditions of sale and classes of
consumers. Applicant asserts, in this regard, that
applicant rarely sells to individuals:
Typical buyers would include municipalities,
counties, federal government, national parks, et
cetera, as well as some small communities; it
could be, you know, mayors or park and recreation
directors that would be representing that city or
county; public and private schools.
(Nordquist depo. at 12)

Mr. Nordquist also testified that applicant’s
ROCKSCAPE climbing components cost between $1500 and $5000,
just for the one component, not including the rest of the
playground equipment, which could run in the “50 to $75,000
range.” Id. at 22, 39, and Ex. 4. We find that these are
not the types of goods that consumers will buy on impulse,
and that the classes of consumers who purchase these are
likely to do so after some amount of forethought.
Accordingly, we find this du Pont factor to weigh against
finding a likelihood of confusion as well.
Finally, applicant has asked us to consider the
relative weakness of opposer’s pleaded mark and the number
and nature of third party uses.5 In particular, as alleged

5 We note that the parties did discuss that there is no actual
confusion. Without further ado, as both parties agree there has
Serial No. 91190282
10
in the counterclaim with its grounds of genericness and
descriptiveness discussed infra, applicant alleges that the
term “rockscape” is very weak for opposer’s identified
goods. Applicant further alleges that multiple parties are
using the term in their own marks, and set forth both in
the counterclaim and with its notices of reliance a number
of third party uses of the term “rockscape” for landscaping
of stones and rocks. Opposer acknowledges in its brief
that there are “23” identified other users and says that,
per Exhibit 2 of Mr. Cannell’s deposition, 16 of these (or
“70%” according to opposer) have been identified as having
agreed to stop use of the mark. (see opposer’s brief at
12).
First, as discussed above regarding the evidentiary
objection to Exhibit 2, although we have not struck the
exhibit, neither do we accord it much probative value. Mr.
Cannell did not attest to having created the exhibit, nor
to having any personal knowledge of its content. (Cannell
depo. at 13-15). He did “not recall” whether he had ever
looked at any of the third party websites or had checked to
see whether in fact they had ceased use of the “rockscape”
term. Id. Accordingly, we have no actual testimony on

been no actual confusion, we find that du Pont factor, and the
other du Pont factors not specifically discussed herein, to be
Serial No. 91190282
11
this point. Second, even if we were to accept Exhibit 2 on
its face and accept opposer’s argument, a “70%” policing
success rate nonetheless leaves 7 unauthorized uses of its
mark, which is notable. We find that the number and nature
of uses of the term “rockscape” as a mark weighs against
finding a likelihood of confusion.
Conclusion on Opposer’s Likelihood of Confusion Claim
In conclusion, we find that although the marks are
identical and would be likely to give the same commercial
impression, opposer has not carried its burden of showing a
viable relationship between the goods or that they would
travel in the same or similar channels of trade. With
sophisticated, institutional consumers buying applicant’s
more expensive product, the likelihood of confusion further
diminishes. Finally, we have found that with a large
number of third parties using the term “rockscape” for
similar products, opposer’s mark is weak. On the balance,
we find no likelihood of confusion, and the opposition is
dismissed.
II. The Counterclaims
We next consider the counterclaims raised by
applicant.

neutral.
Serial No. 91190282
12
GENERICNESS
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name
for the goods and/or services. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)(“Ginn”); In re Women's
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
Generic terms are by definition incapable of indicating a
particular source of the goods and/or services, and cannot
be registered as trademarks and/or service marks; doing so
“would grant the owner of the mark a monopoly, since a
competitor could not describe his goods as what they are.”
See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
In an inter partes proceeding, a party must prove
genericness by a preponderance of the evidence. Magic Wand
Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1554 (Fed.
Cir. 1991). Tea Board of India v. Republic of India, Inc.,
80 USPQ2d 1881, 1887 (TTAB 2006). The critical issue is to
determine whether the record shows that members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
or services in question. Ginn, 228 USPQ at 530. Making
this determination “involves a two-step inquiry: First,
Serial No. 91190282
13
what is the genus of goods or services at issue? Second,
is the term sought to be registered ... understood by the
relevant public primarily to refer to that genus of goods
or services?” Id. Evidence of the public’s understanding
of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, trade journals,
newspapers and other publications. Merrill Lynch, 4 USPQ2d
at 1143, and In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Turning to the first inquiry, although the parties did
not specifically set out the genus of goods, they both
generally treat opposer’s identification of goods as the
genus in their discussion: “stone, gravel or similar
products, namely boulders, stone veneer, and crushed stone
for use in landscaping, building construction, and paving.”
We agree that this is an appropriate designation of genus.
See Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1552. See
also In re Country Music Association Inc., 100 USPQ2d 1828
(TTAB 2011).
Next we must determine how the relevant public
understands this genus. Applicant submitted dozens of
websites showing third party uses of the term “rockscape”
in the context of garden landscaping with rocks, stones,
and related products. Some examples include the following:
Serial No. 91190282
14
Construction Dir: Rockscape Company: Marenakos
Rock Center: Offers new materials as well as
design and construction.
www.constructiondir.com. TTABVUE #38 p52/225

Rockscapes International: Providing unparalleled
craftsmanship and expertise in the rockscape
industry. Rockscapes International has worked
with landscape architects and developers to turn
their design ideas into practical, functional
water features using natural rock and/or rock
cast from molds, cast-in-place, and tooled rock
formations. www.rockscapesinternational.com.
TTABVUE #38 p58/225.

Pacific Rockscape: Rockscapes: Replicating nature
with hand carved rockwork. Over the years, our
team has installed artistic landscapes,
rockscapes, artificial waterfalls and water
features for architects and home owners alike.
www.pacificrockscape.com. TTABVUE #38 p62/225.

Reed: Concrete Pumps & Gunite Machines:
Rockscapes are made with either wet or dry
shotcrete. Reedmfg.com. TTABVUE #38 p64/225.

Creative Land Design: Rockscaping: Welcome to the
Creative Land Design Rockscaping photo gallery.
The pictures you see above are all photos of rock
gardens that we have created in the Maryland area
over the last 25 years. . . . Please browse our
pictures of Maryland Rockscapes below, and end E-
mail us with any comments that you have.
creativelanddesignmd.com. TTABVUE #38 p70/225.

Green Lizard landscapes LLC unique rockscapes,
which make our client’s properties the envy of
the neighborhood. [sic] We meet with our
clients, get a feel of their likes, dislikes and
landscape tastes and transpose their dreams into
realities. [url cut off] TTABVUE #38 p72/225

Backyard Jungle: Tampa Bay, FL Rockscape
Installation: Backyard Jungle Tropical Landscape
LLC provides the latest in rockscape installation
options to the Tampa Bay, FL area. We install
rock gardens, drought-resistant landscaping and
Serial No. 91190282
15
more. Palmharborlandscaping.com. TTABVUE #38
p79/225.

Landscape Productions: Mulch and Rockscape: Mulch
and decorative rocks complete the look of all
landscape projects. We offer a wide variety of
landscape rock including river rocks, buff
limestone, red limestone, granite, and purple
quartz. www.landscapeproductionsllc.com. TTABVUE
#38 p83/225.

Authentic Rockscape Designers: Artificial Rock
Waterfalls For Landscape & Swimming Pools
www.authenticrockscs.com. TTABVUE #38 p89/225.

Rock Walls & Landscaping: Wise Rockscapes
Landscape Solutions:
Why not explore the possibility of a rockscape or
timber retaining wall to add that new spectacular
feature for your backyard.
www.wiselandscapesolutions.com. TTABVUE #38
p93/225.

Natural Rock: Residential Projects: Throughout
the past 23 years, Natural Rock Formations has
gained a unique reputation among homeowners. We
are not your typical rockyard. If you want to
plan a rock garden, or other custom designed
rockscape, we can point you in the right
direction. www.natrok.com. TTABVUE #38 p96/225.

Chris’ Yard Detail & Hauling: There is NOTHING
like a beautiful waterscape or rockscape to
compliment your yard or garden. Constructed
mostly of natural materials, waterscapes and
rockscapes greatly add to the aesthetics and
value of your property. www.chrisyarddetail.com.
TTABVUE #38 p104/225.

Star Nursery: Achieving a Beautiful Rockscape:
Are you considering adding a rockscape in your
yard? If so, there are several important issues
and detail to consider during your planning
phase. Probably the first is to DO ADEQUATE
PLANNING. Determine the minimum amount of rock
that you will need. www.starnursery.com. TTABVUE
#38 p112/225.
Serial No. 91190282
16

AZ Rock Scape & Lawn Care: Welcome . . . We have
over 15 years of Yard Maintenance and Rockscape
experience. We understand the enjoyment that
comes from a nicely manicured and beautifully
kept yard. [url cut off] TTABVUE #38 p115/225.

Sierrascape Landscaping: Rockscapes: Rockscape
Design and Construction: Perhaps nothing is more
beautiful in a landscapingn [sic] environment
than the use of stone. From stonewalls, dry
river beds, paved paths, flagstones and boulders
the use of stone in a landscape design and
installation can be truly magnificent.
Sierrascape Landscaping are experts in the use of
the best type of stone from pebbles to boulders
to paving for your budget and to create a truly
stunning landscape installation using rockscape.
[url cut off] TTABVUE #38 p118/225.

Artistic Waterways & Paving Stone:
Landscapes/Rockscapes/Waterways/Paving
Stone/Commercial & Industrial Paving
Applications: Artistic Waterways & Paving by
Gonzalez Rockscapes create artificial, yet,
natural looking rockscapes that become the focal
point of YOUR landscape!
www.artisticwaterways.com. TTABVUE #38 p131/225.

Breese Landscaping Landscape Design Phoenix: Full
backyard landscape redesign from grass to Granite
and Rockscape in Mesa. This was a Mesa, Az
Landscape grass conversion to the granite and
rockscape you see. Breeselandscaping.com.
TTABVUE #38 p141/225.

Concrete Ideas: Usually working with a design
element similar to that of the natural
surroundings a properly crafted rockscape should
blend in and flow seamlessly with its
surroundings. http://concreteideas.com. TTABVUE
#38 p201/225.

Take Advantage of Native Stones to Rockscape
Yard: When the summer sun sends the average
gardener to the shady confines of the gazebo (or
worse – indoors), it allows a moment to see the
Serial No. 91190282
17
total landscape picture, rather than the demands
of the individual plantings. It was during one
of those sultry moments that my wife decided we
needed to do something with all of nature’s
“misplaced” rocks to make them fit into the
balance of the rest of the gardens and lawn. We
needed to do some rockscaping. The Morning Call;
July 22, 1990 (Articles.mcall.com). TTABVUE #38
p213/225.

Cerritos: Rockscape Planned at Freeway Entrance:
Work is under way on an $866,000 landscaping
project for the entrance to the Artesia Freeway
(91) at Cerritos Towne Center. . . . The work, by
Valley Crest Landscape Inc. of Santa Ana,
includes a 15-foot decorative rockscape, three
tiers of ponds and 15-foot waterfalls and
geysers. Los Angeles Times Community Digest
November 19, 1992 (articles.latimes.com). TTABVUE
#38 p217/225

We find that these uses clearly establish that the
term “rockscape” would be understood by the relevant public
as a generic term to mean “stone, gravel or similar
products, namely boulders, stone veneer, and crushed stone
for use in landscaping, building construction, and paving.”
Applicant also submitted dictionary definitions of the
following terms to support its claim of genericness.
–scape: view; pictorial representation of a
(specified) type of view. Merriam-Webster
Unabridged Unabridged.merriam.webster.com.

Rock: 2a: extremely hard dense stone; a large
fixed stone; 3a: something that resembles a rock
in firmness Unabridged.merriam.webster.com.

Rockscape: a landscape dominated by rocks
www.definition.of.net (2012).

Serial No. 91190282
18
Opposer objected to the definition of “rockscape” as
not being from an established dictionary. While we accept
the definition, we accord it more limited probative value,
taking into account the limitations noted by opposer of
evidence from unestablished dictionary sources. As such,
while we find that the definitions buttress applicant’s
case, we would reach the same conclusion without them.
Opposer’s mark is generic for the goods for which it is
registered.
Conclusion on Counterclaims
Based on a preponderance of the evidence, we find the
term “rockscape” to be generic for “stone, gravel or
similar products, namely boulders, stone veneer, and
crushed stone for use in landscaping, building
construction, and paving.” Inherent in our finding of
genericness is that opposer’s mark is merely descriptive,
and is, indeed, highly descriptive. “The generic name of a
thing is in fact the ultimate in descriptiveness.” H.
Marvin Ginn Corp., supra, at 530. Opposer has not claimed
acquired distinctiveness and has not introduced any
evidence or argument in that regard.
Serial No. 91190282
19
Therefore, to the extent our finding of genericness is
appealed, we also find opposer’s mark to be highly
descriptive without a showing of secondary meaning.6
Decision: Opposer’s likelihood of confusion claim is
denied, and the opposition is dismissed. Applicant’s
counterclaim is granted on the ground of genericness and
alternatively on the ground that opposer’s mark is highly
descriptive without a showing of secondary meaning.
Applicant’s application will proceed to publication in
due course.
Opposer’s registration will be cancelled in due
course.

6 With these findings, we see no need to address applicant’s
fraud claim.