United States: TTAB Makes Harmless Error In Its Pronunciation Analysis

In StonCor Group, Inc. v. Specialty Coatings, Inc., No. 13-1448 (Fed. Cir. July 16, 2014), the Federal Circuit affirmed the TTAB's dismissal of an opposition by StonCor Group, Inc. ("StonCor") to an application by Specialty Coatings, Inc. ("Specialty Coatings") for the mark ARMORSTONE because substantial evidence supported the TTAB's dismissal of the opposition.

StonCor and Specialty Coatings compete in the market for epoxy coatings used on concrete floors.  StonCor registered the mark STONSHIELD with the PTO for "floors and flooring systems comprised of epoxy resins . . . for use in industrial and institutional applications."  Slip op. at 2 (citation omitted).  Specialty Coatings later filed an application for the mark ARMORSTONE in connection with "[e]poxy coating for use on concrete industrial floors."  Id. at 2-3 (alteration in original) (citation omitted).  StonCor opposed the registration of ARMORSTONE on multiple grounds, including likelihood of confusion with its STONSHIELD mark and that ARMORSTONE was merely descriptive.  The TTAB dismissed StonCor's opposition, and StonCor appealed.

"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."  Slip op. at 6-7.

On appeal, the Federal Circuit first held, regarding likelihood of confusion, that the TTAB erred in its pronunciation analysis under DuPont factor one—the similarity or dissimilarity of the marks—but held that the error was harmless.  Specifically, the Court held that the TTAB improperly created its own pronunciation rule contrary to StonCor's evidence that the "o" in STONSHIELD was pronounced as a long vowel, as in "stone," rather than a short vowel, as in "on."  The Court pointed to testimony from StonCor's Vice President of Marketing that the company pronounces and promotes its products using a long vowel, and that "he has only 'very, very rarely' heard the 'o' pronounced with a short vowel sound."  Id. at 6 (citation omitted).  The Court further noted that it was reasonable to infer from this testimony that StonCor's sales employees follow the company's pronunciation as well.  Because "[t]here is no correct pronunciation of a trademark that is not a recognized word," the Court concluded that the TTAB failed to give proper weight to StonCor's evidence.  Id.  Nevertheless, the Court held that this error was harmless because substantial evidence supported the TTAB's finding that DuPont factor one weighed against a likelihood of confusion, including differences in (1) spelling between the two affixes, (2) placement of the two affixes within the mark, (3) number of syllables within the complete mark, and (4) commercial impression.

The Federal Circuit also held that substantial evidence supported the TTAB's conclusion that the sixth DuPont factor—the number and nature of similar marks in use on similar goods—was neutral.  The Court noted that while StonCor presented evidence of third-party uses of ARMORSTONE, "this factor usually addresses marks similar to an opposer's registered mark [STONSHIELD], to demonstrate the strength or weakness of that mark."  Id. at 7.  The Court concluded that StonCor did not present any credible explanation to support its contention that marks similar to ARMORSTONE demonstrate a likelihood of confusion with STONSHIELD.

Finally, the Federal Circuit held that substantial evidence supported the TTAB's decision that StonCor failed to prove that ARMORSTONE was merely descriptive.  The Court explained that while StonCor presented evidence of Specialty Coatings' advertisements and of dictionary definitions of "armor" and "stone," none of this evidence demonstrated that "the mark, as a whole, conveys 'an immediate idea of the ingredients, qualities or characteristics of' the products."  Id. at 9 (quoting DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012)).

Accordingly, the Court affirmed the TTAB's dismissal of StonCor's opposition to registration of the mark ARMORSTONE to Specialty Coatings.

This article previously appeared in Last Month at the Federal Circuit, August, 2014.

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