Stoncor Group, Inc. v. Specialty Coatings, Inc. , 759 F.3d 1327 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
STONCOR GROUP, INC.,
Appellant,
v.
SPECIALTY COATINGS, INC.,
Appellee.
______________________
2013-1448
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Opposition
No. 91187787.
______________________
Decided: July 16, 2014
______________________
CHARLES N. QUINN, Fox Rothschild LLP, of Exton,
Pennsylvania, argued for appellant.
MATTHEW SEIFERT, Hoxie & Associates, LLC, of Mill-
burn, New Jersey, argued for appellee. On the brief was
THOMAS HOXIE.
______________________
2 STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC.
Before TARANTO and HUGHES, Circuit Judges. *
HUGHES, Circuit Judge.
This is a trademark case. The appellant, StonCor
Group, Inc., owns the registered trademark
“STONSHIELD.” When a different company, Specialty
Coatings, Inc., sought registration of a competing mark,
“ARMORSTONE,” StonCor opposed the registration,
asserting a likelihood of confusion between
ARMORSTONE and STONSHIELD and that
ARMORSTONE is merely descriptive of Specialty Coat-
ings’ products. The Board dismissed StonCor’s opposition,
finding no likelihood of confusion and that
ARMORSTONE was not merely descriptive. StonCor
appeals. Although the Board erred in part of its analysis,
namely its conclusion that STONSHIELD would not be
pronounced as “STONE SHIELD,” the error is harmless
because the Board’s dismissal is supported by substantial
evidence and in accordance with the law. Thus, we af-
firm.
I
StonCor and Specialty Coatings are competitors in the
market for epoxy coatings used on concrete floors. In
1992, StonCor registered the mark STONSHIELD with
the United States Patent and Trademark Office (USPTO)
in connection with “floors and flooring systems comprised
of epoxy resins . . . for use in industrial and institutional
applications,” among other products. STONSHIELD,
Registration No. 1,689,713. In 2008, Specialty Coatings
applied to the USPTO for registration of the mark
ARMORSTONE in connection with “[e]poxy coating for
* Randall R. Rader, who retired from the position of
Circuit Judge on June 30, 2014, did not participate in this
decision.
STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC. 3
use on concrete industrial floors,” among other products.
U.S. Trademark Application Serial No. 77,428,195 (filed
Mar. 21, 2008). StonCor filed a notice of opposition to
Specialty Coatings’ application.
StonCor opposed registration of ARMORSTONE on
six grounds, two of which it raises on appeal. First,
StonCor argued that the USPTO should not allow regis-
tration of ARMORSTONE because consumers would
likely confuse the mark with STONSHIELD when
ARMORSTONE is used in connection with epoxy floor
products. Second, StonCor argued that ARMORSTONE is
not eligible for registration because the mark is merely
descriptive and Specialty Coatings has not provided
evidence of secondary meaning.
The Board analyzed the likelihood of confusion by
considering the thirteen factors set forth in In re E.I.
DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA
1973). The parties presented evidence regarding factors
one through eight, ten, and eleven. The Board addressed
each of these factors, finding no likelihood of confusion
because the marks are too distinct in sound, appearance,
and commercial impression. StonCor Grp., Inc. v. Spe-
cialty Coatings, Inc., Opposition No. 91187787, 2012 WL
2588576, at *5–*9 (T.T.A.B. June 22, 2012). StonCor
challenges the Board’s findings as to DuPont factors one
and six:
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connota-
tion and commercial impression.
...
(6) The number and nature of similar marks in
use on similar goods.
DuPont, 476 F.2d at 1361.
4 STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC.
Starting with factor one, the Board considered how
prospective consumers would pronounce STONSHIELD.
StonCor presented evidence that the “o” would be pro-
nounced by consumers with a long vowel sound, as in the
word “stone.” The Board reasoned, however, that the
spelling of “STON” and ordinary rules of English dictate
that the “o” would be pronounced with a short vowel
sound, as in the word “on.” Id. at *6. Thus, the Board
found that there was a dissimilarity in pronunciation.
The Board went on to describe additional differences
between the marks. It found that “STON” is spelled
differently from “STONE”; that “STON–” appears at the
beginning of STONSHIELD while “–STONE” appears at
the end of ARMORSTONE; that STONSHIELD is two
syllables while ARMORSTONE is three syllables; and
that STONSHIELD would create a different commercial
impression from ARMORSTONE. Taking all of these
differences into account, the Board found that factor one
weighed against finding a likelihood of confusion.
The Board next found factor six neutral because nei-
ther party provided evidence regarding the number of
marks similar to STONSHIELD. Id. at *8. In the Board’s
view, StonCor’s evidence describing other oppositions filed
by StonCor was insufficient to turn this factor in
StonCor’s favor.
Turning to StonCor’s claim that ARMORSTONE is
merely descriptive, the Board analyzed whether the mark
ARMORSTONE, in its entirety, “immediately conveys
information concerning a significant quality, characteris-
tic, function, ingredient, attribute or feature of the prod-
uct or service in connection with which it is used.” Id. at
*10 (citing to In re Eng’g Sys. Corp., 2 U.S.P.Q.2d 1075(T.T.A.B. 1986) and In re Bright-Crest, Ltd., 204 U.S.P.Q.
591 (T.T.A.B. 1979)). Finding that StonCor did not pro-
vide sufficient evidence that ARMORSTONE meets this
STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC. 5
standard, the Board concluded that StonCor failed to
meet its burden of proof.
StonCor appeals. We have jurisdiction pursuant to 15
U.S.C. § 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
II
Section 2(d) of the Lanham Act provides that a
trademark may be refused registration if it “so resembles”
a prior mark “as to be likely, when used on or in connec-
tion with the goods of the applicant, to cause confusion, or
to cause mistake, or to deceive.” 15 U.S.C. § 1052(d)
(2012). Likelihood of confusion is a question of law with
underlying factual findings made pursuant to the DuPont
factors. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 1381 (Fed. Cir. 2006). We review the Board’s factu-
al findings on each DuPont factor for substantial evidence
and its legal conclusion of likelihood of confusion de novo.
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080,
1084–85 (Fed. Cir. 2000). Substantial evidence is “such
relevant evidence as a reasonable mind would accept as
adequate to support a conclusion.” Consol. Edison Co. of
N.Y. v. N.L.R.B., 305 U.S. 197, 229 (1938).
A
On appeal, StonCor challenges the Board’s findings
with respect to DuPont factors one and six. Factor one—
the similarity or dissimilarity of the marks—is deter-
mined by focusing on “‘the marks in their entireties as to
appearance, sound, connotation, and commercial impres-
sion.’” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir.
2005) (quoting DuPont, 476 F.2d at 1361).
StonCor argues that the Board erred by creating its
own pronunciation rule and holding, contrary to StonCor’s
evidence, that the “o” in STONSHIELD would be pro-
nounced with a short vowel sound. On this point, we
agree with StonCor. The evidence in the record persua-
6 STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC.
sively suggests that the “o” would be pronounced with a
long vowel sound, like the word “stone.” For instance,
StonCor’s Vice President of Marketing, Michael Jewell,
testified at deposition that StonCor pronounces the “o”
with a long vowel sound, that he has only “very, very
rarely” heard the “o” pronounced with a short vowel
sound, and that StonCor promotes its products at trade
shows, pronouncing “STON” as “stone.” J.A. 357-58, 364–
65. Mr. Jewell further testified that StonCor employs a
direct sales force of approximately 150 people, each of
whom calls potential customers directly. J.A. 285–86,
358. While the record does not reflect how these direct
sales employees pronounce “STON,” it is a reasonable
inference from Mr. Jewell’s testimony that StonCor’s
employees follow the company’s pronunciation and pro-
nounce STON with a long “o” sound. In contrast, Special-
ty Coatings provided no evidence suggesting that “STON”
was or would be pronounced with a short “o” sound.
The Board gave minimal weight to Mr. Jewell’s testi-
mony. It held that STONSHIELD is not “spelled in a
manner consistent with” pronouncing “STON” as “stone”
and that the prefix would instead be pronounced by
prospective consumers “according to the spelling” of
“STON,” with a short “o” sound. StonCor, 2012 WL
2588576, at *6. According to the Board, StonCor “did not
introduce evidence at trial that ‘STON–’ would be pro-
nounced and perceived by prospective consumers as the
equivalent of the word ‘stone.’” Id.The Board’s pronunciation analysis is not supported
by substantial evidence. The Board erred by failing to
credit StonCor’s evidence that consumers would pro-
nounce “STON” as “stone.” There is no correct pronuncia-
tion of a trademark that is not a recognized word. See In
re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969).
“STON” is not a word in English. Neither party argues
that “STON” is a word in any other language. Where a
trademark is not a recognized word and the weight of the
STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC. 7
evidence suggests that potential consumers would pro-
nounce the mark in a particular way, it is error for the
Board to ignore this evidence entirely and supply its own
pronunciation.
The Board’s error here, however, was harmless. The
Board found that DuPont factor one weighed against a
likelihood of confusion because of (1) differing pronuncia-
tions of the affixes, “STON–” and “–STONE”; (2) differing
spellings between the two affixes; (3) differing placements
of the two affixes within the marks; (4) differing numbers
of syllables in the two complete marks, STONSHIELD
and ARMORSTONE; and (5) differing commercial im-
pressions conveyed by the complete marks. The latter
four findings are each supported by substantial evidence
and, together, provide substantial evidence in support of
the Board’s conclusion that DuPont factor one weighs in
favor of Specialty Coatings.
B
Factor six of the DuPont test addresses the “number
and nature of similar marks in use on similar goods.” 476
F.2d at 1361. StonCor argues that the Board erred by
failing to credit StonCor’s evidence that numerous third
parties use the term “armor stone” in connection with
construction, stone, concrete, and epoxy products. As
StonCor acknowledges, this factor usually addresses
marks similar to an opposer’s registered mark, to demon-
strate the strength or weakness of that mark. See, e.g.,
Palm Bay Imps., 396 F.3d at 1373 (addressing evidence of
third-party marks similar to a registered mark to assess
the strength of that mark); M2 Software, 450 F.3d at 1384(same); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d
200, 204 (Fed. Cir. 1992) (same).
But StonCor nonetheless argues that evidence of
marks similar to ARMORSTONE is somehow probative of
a likelihood of confusion with STONSHIELD. The evi-
dence of marks similar to ARMORSTONE may be rele-
8 STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC.
vant to the strength or weakness of that mark, but
StonCor has offered no credible explanation to support its
contention that the existence of marks similar to
ARMORSTONE demonstrates a likelihood of confusion
with its mark STONSHIELD. The Board’s conclusion
that DuPont factor six was neutral is supported by sub-
stantial evidence.
III
Section 2(e)(1) of the Lanham Act provides that a
trademark may be refused registration if it consists of a
mark that “when used on or in connection with the goods
of the applicant is merely descriptive” of the goods. 15
U.S.C. § 1052(e)(1) (2012). Whether a mark is merely
descriptive is a question of fact that we review for sub-
stantial evidence. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1378 (Fed. Cir. 2012). The party
opposing a registration bears the burden of proving by a
preponderance of the evidence that an applicant’s mark is
merely descriptive. DuoProSS Meditech Corp. v. Inviro
Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012).
A mark that is “suggestive” may be registered, but a
mark that is “merely descriptive” may not be registered
without showing that it has acquired secondary meaning.
Id. at 1251–52. A “suggestive mark ‘requires imagination,
thought and perception to reach a conclusion as to the
nature of the goods,’ while a merely descriptive mark
‘forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods.’” Id. at 1252(quoting In re Abcor Dev. Corp., 588 F.2d 811, 813 (CCPA
1978)).
The Board held that, although ARMORSTONE might
be suggestive of the effectiveness of Specialty Coatings’
goods, StonCor presented no evidence that the combina-
tion of “armor” and “stone” was merely descriptive of the
goods. The Board therefore concluded that StonCor failed
STONCOR GROUP, INC. v. SPECIALTY COATINGS, INC. 9
to meet its burden to prove that ARMORSTONE is merely
descriptive.
StonCor presented evidence of Specialty Coatings’ ad-
vertising, along with dictionary definitions for the words
“armor” and “stone.” None of StonCor’s evidence demon-
strates that the mark, as a whole, conveys “an immediate
idea of the ingredients, qualities or characteristics of” the
products. DuoProSS, 695 F.3d at 1252 (internal quota-
tion marks omitted) (citation omitted). The Board’s
conclusion is supported by substantial evidence.
IV
The Board concluded that there was no likelihood of
confusion between STONSHIELD and ARMORSTONE
and that StonCor did not prove that ARMORSTONE was
merely descriptive. Because these conclusions are in
accordance with the law and supported by substantial
evidence, we affirm.
AFFIRMED