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

Trademark Trial and Appeal Board

Mar 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.