The U.S. Court of Appeals for the Federal Circuit, in affirming a Trademark Trial and Appeal Board (the Board) ruling finding no likelihood of confusion between the trademarks STONSHIELD and ARMORSTONE, cautioned that the Board improperly forced a pronunciation of the appellant’s mark that was unsupported by evidence.  StonCor Group, Inc. v. Specialty Coatings, Inc., Case No. 13-1448 (Fed. Cir., Jul. 16, 2014) (Hughes, J.).

StonCor Group opposed Specialty Coatings application for the mark ARMORSTONE alleging, in part, that the mark is confusingly similar to StonCor’s registered mark STONSHIELD.  The Board concluded that confusion between the parties’ marks was unlikely because the marks were distinct in sound, appearance and commercial impression.  However, as part of the Board’s analysis, and despite StonCor presenting evidence that consumers would pronounce the “STON” portion of its mark as “stone,” the Board reasoned that the parties’ marks were distinguishable in pronunciation because ordinary rules of English language construction indicate that the “o” in STON would be pronounced with a “short vowel” sound, as in “on.”  StonCor appealed.

On appeal, the Federal Circuit agreed with StonCor that the Board erred by giving minimal weight to StonCor’s evidence about the pronunciation of its mark and instead supplying its own pronunciation.  StonCor’s vice president of marketing testified that StonCor pronounces the STON portion of its mark as “stone,” promotes its products at trade shows by pronouncing STON as “stone” and that he has “very, very rarely” heard the mark pronounced in the manner suggested by the Board.  The Federal Circuit held that the Board’s pronunciation analysis was not supported by substantial evidence and “there is no correct pronunciation of a trademark that is not a recognized word.”  As “STON” is not a word in the English language, it was error for the Board to ignore StonCor’s evidence and arrive at its own conclusion about how potential consumers would pronounce appellant’s mark.

Ultimately, however, the Federal Circuit considered the Board’s error “harmless” and affirmed the Board’s ruling, which the Court concluded was supported by substantial evidence

StonCor Group, Inc. v. Specialty Coatings, Inc. - Trademarks