Stoncor Group, Inc. v. Specialty Coatings, Inc.
759 F.3d 1327
Fed. Cir.2014Background
- StonCor Group, Inc. owns the registered trademark STONSHIELD for epoxy flooring products (Reg. No. 1,689,713; registered 1992).
- Specialty Coatings applied to register ARMORSTONE for epoxy coatings (filed 2008); StonCor opposed registration on likelihood-of-confusion and mere-descriptiveness grounds.
- The Trademark Trial and Appeal Board (TTAB) applied the DuPont factors, considered evidence on multiple factors, and dismissed StonCor’s opposition: found no likelihood of confusion and that ARMORSTONE is not merely descriptive.
- On appeal, StonCor challenged the TTAB’s findings as to DuPont factors 1 (similarity of marks, incl. pronunciation) and 6 (number/nature of similar marks) and the mere-descriptiveness ruling under Section 2(e)(1).
- The Federal Circuit agreed that the TTAB erred by imposing its own pronunciation rule for STONSHIELD (contradicting evidence that STON is pronounced like “stone”), but held the error harmless because other substantial evidence supported the TTAB’s findings that the marks differ in appearance, syllables, affix placement, and commercial impression.
- The court also affirmed the TTAB’s rulings that factor six was neutral (StonCor’s evidence of marks similar to ARMORSTONE did not show likelihood of confusion with STONSHIELD) and that ARMORSTONE is not merely descriptive as a whole.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion (DuPont factor 1: similarity in appearance, sound, meaning, commercial impression) | STONSHIELD is pronounced with a long “o” (like “stone”), making it phonetically similar to ARMORSTONE and likely to cause confusion | ARMORSTONE and STONSHIELD differ in spelling, syllable count, affix placement, pronunciation according to TTAB, and commercial impression | TTAB erred in pronunciation analysis but error harmless; substantial evidence (different spelling, syllables, affix placement, overall impression) supports no likelihood of confusion |
| DuPont factor 6 (number/nature of similar marks in use on similar goods) | Evidence of numerous third-party uses of “armor stone” shows strength/extent of similar marks and supports StonCor’s position | Third-party uses of terms similar to ARMORSTONE do not show likelihood of confusion with STONSHIELD; typical use of this factor is to assess strength of opposer’s mark | Factor six properly treated as neutral; StonCor offered no credible link showing those third-party marks increase likelihood of confusion |
| Mere descriptiveness (Section 2(e)(1)) | ARMORSTONE immediately conveys product qualities (armor + stone) and is merely descriptive; lacks secondary meaning | ARMORSTONE is at most suggestive; the compound does not immediately describe ingredients/qualities of the goods | Substantial evidence supports TTAB’s conclusion that ARMORSTONE is not merely descriptive as a whole; StonCor failed to meet burden to prove descriptiveness |
| Burden of proof and standard of review | N/A (procedural) | N/A | Court reviews TTAB factual findings for substantial evidence and legal conclusions de novo; StonCor’s appellate challenges fail under that standard |
Key Cases Cited
- In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) (sets the multi-factor test for likelihood of confusion)
- Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005) (analysis of marks in their entireties for DuPont factor one)
- M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378 (Fed. Cir. 2006) (likelihood-of-confusion is legal question with DuPont factual findings)
- DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012) (burden on opposer to prove mere descriptiveness; suggestive vs. merely descriptive standard)
- Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (standard of review for descriptiveness findings)
- In re Belgrade Shoe Co., 411 F.2d 1352 (CCPA 1969) (no single correct pronunciation for coined/unrecognized trademarks)