Digest of StonCor Grp., Inc. v. Specialty Coatings, Inc., No. 2013-1448 (Fed. Cir. July 16, 2014) (precedential). On appeal from USPTO. Before Taranto and Hughes.

Procedural Posture: Opposer, StonCor Group, Inc., appealed Trademark Trial and Appeal Board (“TTAB”) decision dismissing a trademark opposition. CAFC found harmless error on the Board’s part and affirmed the dismissal.

  • Likelihood of Confusion: The Board erred in concluding that the mark “STONSHIELD” is pronounced with a short “o” sound as in “on.” CAFC held that 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 nevertheless had substantial evidence for its finding of no likelihood of confusion between “STONSHIELD” and “ARMORSTONE.” Specifically, CAFC noted the strong evidence for the first DuPont factor (similarity or dissimilarity of the marks): differing spellings between the two affixes within the marks, differing placements of the two affixes within the marks, differing numbers of syllables in the two complete marks, and differing commercial impressions conveyed by the complete marks.
  • Descriptive Marks: CAFC rejected appellant’s argument that “ARMORSTONE” was merely descriptive, finding that appellant presented no evidence of such claim and failed to meet its burden of proof. StonCor presented “evidence of Specialty Coatings’ advertising, along with dictionary definitions for the words ‘armor’ and ‘stone,’” neither of which conveys “an immediate idea of the ingredients, qualities or characteristics of the products.”

Ian Moore