Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Opposition No. 91187787.
CHARLES N. QUINN, Fox Rothschild LLP, of Exton, Pennsylvania, argued for appellant.
MATTHEW SEIFERT, Hoxie & Associates, LLC, of Millburn, New Jersey, argued for appellee. On the brief was THOMAS HOXIE.
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 Coatings' 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 affirm.
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 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 registration 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. Specialty Coatings, Inc.,
Opposition No. 91187787, ...