Stoncor Group, Inc.v.Specialty Coatings, Inc.

Trademark Trial and Appeal Board

Jun 22, 2012

No. 91187787 (T.T.A.B. Jun. 22, 2012)

Oral Hearing: November 15, 2011 Mailed: June 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Stoncor Group, Inc.
v.
Specialty Coatings, Inc.
_____

Opposition No. 91187787
to application Serial No. 77428195
filed on March 21, 2008
_____

Charles N. Quinn of Fox Rothschild LLP for Stoncor Group, Inc.

Thomas Hoxie of Hoxie and Associates LP for Specialty Coatings,
Inc.
______

Before Quinn, Holtzman and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

On March 21, 2008, Specialty Coatings, Inc. (“applicant”)
filed an application to register the mark ARMORSTONE, in
standard character format, for “Clear and pigmented coatings
used in the nature of paint; Glazes; House paint; Interior
paint; Mixed paints; Paint for concrete floors; Paint primers;
Paint sealers; Paint thinner; Paints; Paints and lacquers;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91187787
2
Pavement striping paint; Epoxy coating for use on concrete
industrial floors” in International Class 2. The application
was filed on March 21, 2008 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging January 1, 2006 as
the date of first use anywhere and in commerce.1
On December 1, 2008, Stoncor Group, Inc. (“opposer”) filed
an ESTTA2 cover sheet indicating the following grounds for
opposition as reprinted below:
Deceptiveness Trademark Act section 2(a)
False suggestion of a connection Trademark Act section 2(a)
Priority and likelihood of confusion Trademark Act section 2(d)
The mark is merely descriptive Trademark Act section 2(e)(1)
The mark is deceptively misdescriptive Trademark Act section 2(e)(1)
Dilution Trademark Act section 43(c)

Opposer also listed on the ESTTA cover sheet fifteen
registrations owned by opposer, and properly made of record
those registrations by printing out copies from the USPTO
Trademark Applications and Registrations Retrieval (“TARR”)
database. See Trademark Rule 2.122(d)(1). These pleaded

1 Application Serial No. 77428195.

2 ESTTA is the acronym for “Electronic System for Trademark Trials and
Appeal,” the Board’s electronic or Internet filing system.
Opposition No. 91187787
3
registrations are for marks which all begin with the prefix
“STON-” and include the following:3
STONCLAD for “epoxy hardeners, chemical epoxy additives,
epoxy curing agents, epoxies for use as components in
mixtures, chemical solvents all solely for use in
industrial and institutional applications” in International
Class 1, and “floors and flooring systems composed of
resins, curing agents, quartz aggregate for use in
industrial and institutional applications” in International
Class 19;4

STONHARD for “chemicals, namely two component epoxies;
multicomponent mixtures of epoxies, curing agents and
aggregates; multicomponent mixtures of urethanes, resins
and hardeners; all for general industrial use” in
International Class 1;5 and

STONSHIELD for “epoxy hardeners, chemical epoxy additives,
epoxy curing agents, epoxies for use as components in
mixtures, chemical solvents all solely for use in
industrial and institutional applications” in International
Class 1; and “floors and flooring systems comprised of
epoxy resins, hardeners/curing agents for use with epoxy
resins and quartz aggregates for use in industrial and
institutional applications” in International Class 19.6

The pleading attached to the cover sheet reads in its
entirety as follows: “THERE IS A LIKELIHOOD OF CONFUSION AS
BETWEEN APPLICANT’S MARK AND THE INDIVIDUAL MARKS AND THE FAMILY
OF MARKS PLEADED BY THE OPPOSER.” The next day opposer filed a
“Supplemental Statement” which included the following new
allegation: “Opposer’s marks are earlier in priority such that
applicant’s mark lacks priority and registration of the same is
likely to cause confusion, thereby damaging Opposer.” We

3 Opposer focused on these three registrations in its brief.
4 Reg. No. 1706070, issued August 11, 1992; renewed.
5 Reg. No. 1487280, issued May 10, 1988; renewed.
6 Reg. No. 1689713, issued June 2, 1992; renewed.
Opposition No. 91187787
4
construe this “Supplemental Statement” as additional allegations
to the original notice of opposition. Applicant in its answer
essentially denied the allegations set forth in the notice of
opposition and asserted various affirmative defenses.
I. Pleading and Claim Issues
Opposer did not argue the following claims in its brief:
deceptiveness pursuant to Section 2(a), false suggestion of a
connection pursuant to Section 2(a), deceptive
misdescriptiveness pursuant to Section 2(e)(1) and dilution
pursuant to Section 43(c).7 In accordance with the Board’s usual
practice, we find those claims to have been waived by opposer.8
See, e.g., Knight Textile Corp. v. Jones Investment Co., 75
USPQ2d 1313, 1314 n.4 (TTAB 2005).
Opposer argued in its brief the likelihood of confusion and
descriptiveness claims as well as a newly asserted claim that
widespread third-party generic use of the term “armorstone”
precludes registration of the mark. Thus, we are left with the
question of whether these claims were properly pleaded or tried
by express or implied consent.
For an opposition to a Section 66(a) application, the ESTTA
cover sheet constitutes the entirety of the complaint. See CSC

7 In its reply brief, opposer explicitly acknowledged it did not argue
its asserted dilution claim. Reply Brief, p. 16.
8 The fact that applicant argued some of these claims in its brief (e.g.
dilution) is irrelevant. At oral argument, applicant requested that
opposer’s unargued claims be deemed waived.
Opposition No. 91187787
5
Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011). By
contrast, for an opposition to an application based on Section
1(a), as in this case, merely checking off the ESTTA box for a
particular claim does not constitute a proper pleading of that
claim, absent further allegations relating to the claim in the
notice of opposition. Applying this standard, we find that opposer
properly pleaded a Section 2(d) claim based on the allegations
contained in the attached and supplemental supporting pleadings.
See Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949-50
(2009), quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007)(a pleading “must contain sufficient factual matter, accepted
as true, to ‘state a claim to relief that is plausible on its
face.”’). However, since the supporting pleadings are devoid of
any allegations regarding opposer’s descriptiveness and genericness
claims, we find that opposer failed to properly plead these claims.
See Ashcroft v. Iqbal, 129 S. Ct. at 1949, citing Twombly, 550 U.S.
at 555 (“[t]hreadbare recitals of the elements of a cause of
action, supported by mere conclusory statements, do not suffice”).
We now turn to the issue of whether opposer’s
descriptiveness and genericness claims were tried by express or
implied consent. Fed. R. Civ. P. 15(b) provides, in pertinent
part, that when issues not raised by the pleadings are tried by
express or implied consent of the parties, they shall be treated
in all respects as if they had been raised in the pleadings.
Opposition No. 91187787
6
Implied consent to the trial of an unpleaded issue can be found
only where the nonoffering party (1) raised no objection to the
introduction of evidence on the issue, and (2) was fairly
apprised that the evidence was being offered in support of the
issue. TBMP § 507.03(b) (3d ed. 2011). See also Fed. R. Civ.
P. 15(b)(2); Morgan Creek Productions Inc. v. Foria
International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009); H.D. Lee
Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721 (TTAB 2008);
Boise Cascade Corp. v. Cascade Coach Co., 168 USPQ 795, 797
(TTAB 1970) (“Generally speaking, there is an implied consent to
contest an issue if there is no objection to the introduction of
evidence on the unpleaded issue, as long as the adverse party
was fairly informed that the evidence went to the unpleaded
issue”). The question of whether an issue was tried by consent
is basically one of fairness. The non-moving party must be
aware that the issue is being tried, and therefore there should
be no doubt on this matter. Morgan Creek Productions Inc. v.
Foria International Inc., 91 USPQ2d at 1139.
Clearly, applicant was aware that the descriptiveness claim
was tried because it specifically presented arguments against
this claim in its brief and did not object to such evidence
introduced during trial. See, e.g., Nexel Communications Inc.,
v. Motorola, Inc., 91 USPQ2d 1393, 1399 (TTAB 2009). However,
applicant did not address in its brief opposer’s claim of
Opposition No. 91187787
7
genericness due to widespread third-party use of applicant’s
mark. Moreover, opposer’s purported evidence of third-party use
submitted by notice of reliance could have easily been
interpreted by applicant as pertaining to opposer’s
descriptiveness claim. As such, it would be unfair to conclude
that applicant was apprised that such evidence related to
opposer’s genericness claim. See, e.g., Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628, 1630 (TTAB 1998). We therefore
find that while opposer’s descriptiveness claim was tried by
implied consent, opposer’s claim that third-party use renders
applicant’s mark generic was not tried in this manner.
In view of the foregoing, and as set forth below, we will
be deciding the following issues: (1) opposer’s motion to
strike, (2) whether opposer has standing to bring the instant
proceeding, and (3) whether oppose has met its burden of proof
on its Section 2(d) and descriptiveness claims.
II. Evidentiary Issues - Opposer’s Motion to Strike
Opposer has moved to strike Appendix A/Exhibit 1 attached
to applicant’s brief consisting of applicant’s request for
admissions purportedly served on opposer during discovery.9
Insofar as applicant failed to make its discovery requests of

9 Opposer contends that applicant’s requests for admission were never
served on opposer by electronic service as agreed upon by the parties;
and even if they were served, they were not received. Applicant in its
brief maintains that because opposer failed to respond, the requests are
deemed admitted. However, as explained above, because applicant failed
to properly make them of record, we need not reach these issues.
Opposition No. 91187787
8
record in this proceeding by notice of reliance during its
assigned testimony period, opposer’s motion is granted; the
requests for admission have been given no consideration. See
Trademark Rule 2.120(j)(3)(i).
III. The Record
Pursuant to Trademark Rule 2.122(b), the record includes
applicant's application file and the pleadings. In addition,
opposer introduced the following evidence: opposer’s pleaded
registrations; opposer’s first and second notices of reliance
(June 11, 2010) comprised of screen-prints from opposer’s
website; opposer’s third and fourth notices of reliance (June
11, 2010), opposer’s fifth notice of reliance (July 27, 2010)
and opposer’s sixth notice of reliance (August 24, 2010), each
comprised of screen-prints from third-party websites; and the
testimony deposition of Mr. Michael Jewell, Vice President of
Marketing, (“Jewell Deposition”) and exhibits attached thereto.
Applicant introduced no evidence during its assigned
testimony period. Both parties filed briefs, and both parties
were represented by counsel at an oral hearing.
IV. Standing
Applicant has challenged opposer’s standing to bring this
opposition. Specifically applicant contends that opposer’s
ownership of registrations for marks incorporating the prefix
“STON-” does not constitute a basis for opposer to believe it
Opposition No. 91187787
9
would be harmed by the registration of applicant’s ARMORSTONE
mark, because the letters “STON-” “comprise less than half (40%)
of the entirety of” applicant’s mark and “are found in the
latter-half of the mark.” Applicant’s Brief, p. 19.
In the case of a notice of opposition, the standing
requirement has its basis in Section 13 of the Trademark Act
which provides in relevant part that “[a]ny person who believes
that he would be damaged by the registration of a mark upon the
principal register, … may, upon payment of the prescribed fee,
file an opposition in the Patent and Trademark Office, stating
the grounds therefor… .” An opposer must also satisfy two
judicially-created requirements in order to have standing: the
opposer (1) must have a “real interest” in the proceedings, and
(2) must have a “reasonable” basis for his belief of damage.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999).
We disagree with applicant and find that opposer has
demonstrated a “real interest” in this case and a “reasonable”
basis for its belief in damage by properly making its pleaded
registrations of record. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
Opposition No. 91187787
10
213 USPQ 185 (CCPA 1982). Opposer’s pleaded registrations,
which were properly made of record with the notice of
opposition, are sufficient to confer standing to bring this
proceeding. As to applicant’s objections, we find that
opposer’s pleaded marks and applicant’s applied-for mark are not
so distinct as to render opposer’s belief in damage as
“unreasonable.” Each incorporates the same element of the four
letters “STON.” Whether or not the marks at issue are
sufficiently similar is a matter to be determined under our
analysis of likelihood of confusion, and not standing.
V. Section 2(d) Claim
We will first consider opposer’s Section 2(d) claim.
A. Priority
Priority is not in issue in view of opposer's ownership of
valid and subsisting registrations. King Candy, Inc. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
B. Likelihood of Confusion
Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence. We base our
determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Opposition No. 91187787
11
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the
marks and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These factors, and the other
relevant du Pont factors are discussed below.
1. The Marks10
We first turn to the du Pont likelihood of confusion factor
regarding the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial
impression. Opposer in its brief focuses on its three
registrations for the marks STONCLAD, STONHARD, and STONSHIELD.
As such, we will focus our analysis on these three registered
marks.
Opposer relies primarily on the testimony of Mr. Jewell who
stated that in his view, the typical general contractor would
mistakenly believe that flooring material bearing the mark
ARMORSTONE, would identify a product manufactured by opposer.11
Opposer argues that based on his testimony and the fact that
applicant failed to cross-examine Mr. Jewell on this subject,

10 In its reply brief, opposer stated that it was no longer arguing that
it had established a “STON-” family of marks, the ninth du Pont factor.
Opposer’s Reply Brief, p. 15. This was confirmed by counsel for opposer
during oral argument.
11 Jewell Deposition, pp. 72-73.
Opposition No. 91187787
12
“it is undisputed” that a prospective consumer would confuse
applicant’s ARMORSTONE mark with opposer’s STONCLAD, STONHARD,
and STONSHIELD marks. Opposer’s Brief, p. 18.
Aside from the fact that Mr. Jewell’s testimony is hearsay,
it is at best speculative, and therefore accorded minimal
probative value. Furthermore, the fact that applicant elected
not to cross-examine Mr. Jewell on this topic does not make his
testimony dispositive of the issue. Instead, we will examine
the marks themselves to reach a determination on this first du
Pont factor.
At the outset, we note several key distinctions between
applicant’s ARMORSTONE and each of opposer’s STONCLAD, STONHARD,
and STONSHIELD marks. Applicant’s mark incorporates the
grammatically correct spelling of the word “stone.” Opposer’s
marks, while pronounced by counsel for opposer at oral argument
as “stoneclad,” “stonehard,” and “stoneshield,” are not spelled
in a manner consistent with this pronunciation. Rather,
according to the spelling of each mark, the letter “o” is
pronounced as a short vowel sound as opposed to the long vowel
sound. Opposer did not introduce any evidence at trial that
“STON-” would be pronounced and perceived by prospective
consumers as the equivalent of the word “stone.”
In addition, the placement of the terms “-STONE” and
Opposition No. 91187787
13
“STON-” differs in each mark – opposer’s appearing at the
beginning while applicant’s appearing at the end. Applicant’s
mark is three syllables; opposer’s is two. We find these
differences in sound and appearance to be substantial.
Opposer argues in its brief that applicant’s mark
ARMORSTONE and opposer’s STONCLAD, STONHARD, and STONSHIELD
marks all connote “protection of or by stone.” Opposer’s Brief,
p. 19. However, during trial opposer introduced no dictionary
definitions or other objective type evidence (e.g. excerpts from
articles retrieved from the Nexis® database)12 that applicant’s
and opposer’s marks have the same connotation or commercial
impression. Instead, opposer relies on the testimony of Mr.
Jewell that opposer’s marks are well known in the construction
field by contractors and as the recipient of a Reader’s Choice
Award.13 Mr. Jewell’s testimony again is not particularly
probative on this issue. The fact that opposer’s STON-

12 In opposer’s brief, opposer refers to the dictionary definitions of
“armor,” “clad,” and “shield” from Webster’s New Collegiate Dictionary,
but did not make such definitions of record during its assigned testimony
period, nor request that the Board take judicial notice thereof.
Nonetheless, in order to be complete in our analysis, we sua sponte take
judicial notice of the dictionary definitions of “armor,” “shield,”
“clad,” and “hard” from the online version of Merriam-Webster Dictionary,
www.merriam-webster.com. See University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed Cir. 1983). The Board may take judicial notice
of dictionary definitions obtained through an Internet web site which
exist in printed format. See e.g. Osmotica Holdings Corp., 95 USPQ2d
1666, 1668 (TTAB 2010).

13 Jewell Deposition, p. 28; Opposer’s Brief, p. 21.
Opposition No. 91187787
14
formative marks may enjoy third-party recognition in the
construction field has no bearing on the commercial impression
of the mark. Moreover, even if we were to find the words
“shield,” “clad,” and “hard” similar in meaning to “armor,”
given the dissimilarities noted above in the presentation and
pronunciation of the terms “STON” and “STONE,” we find that the
marks create different commercial impressions when considered as
a whole. As such, we find that the first du Pont factor weighs
against finding a likelihood of confusion.
2. The Goods, Trade Channels, and Consumers
The issue of likelihood of confusion herein must be
determined based on an analysis of the goods recited in
applicant's application vis-à-vis the goods identified in
opposer's pleaded registrations. Cunningham v. Laser Golf
Corp., 55 USPQ2d at 1846; and Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). In
this case, applicant’s identified goods include “glazes” and
“epoxy coating for use on concrete industrial floors;” opposer’s
registrations for the marks STONSHIELD and STONCLAD include
“floors and flooring systems comprised of epoxy resins,
hardeners/curing agents for use with epoxy resins;” and
opposer’s registration for the mark STONHARD includes “two
component epoxies.” Mr. Jewell testified that opposer’s goods
are epoxies, and epoxy coatings, that the coatings are for use
Opposition No. 91187787
15
on concrete floors, and that these goods are competitive or
complementary with applicant’s glazes and coatings.14 Based on
this the identification of goods, as well as the testimony of
Mr. Jewell, we therefor find that opposer’s expoxies and expoxy
coatings are related to applicant’s glazes and coatings.
Regarding the purchasers and conditions of sale, opposer
presented testimony that its products are sold to building
contractors, facility managers and building owners.15 In
addition, because the goods are competitive and/or closely
related and, as identified, there are no restrictions as to
their channels of trade or classes of purchasers, we must
presume that opposer’s and applicant’s goods are offered in the
same channels of trade and provided to the same relevant
purchasers under the same conditions. Paula Payne Products Co.
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA
1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ
139 (CCPA 1958); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
Consequently, these du Pont factors favor finding a likelihood
of confusion.
3. Fame
We now consider the fifth du Pont factor of fame. Fame of
the prior mark plays a dominant role in likelihood of confusion

14 Jewell Deposition, p. 84, lines 4-21.
15 Jewell Deposition, p. 71, line 16 to p. 72, line 3.
Opposition No. 91187787
16
cases featuring a famous mark. Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000);
and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Because of the
extreme deference accorded to a famous mark in terms of the wide
latitude of legal protection it receives, and the dominant role
fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting fame to clearly prove it. Lacoste
Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009);
and Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer asserts that its marks have achieved substantial
fame and recognition as a result of its advertising, trade show
participation, website hits and sales calls made by opposer’s
sales representatives. Opposer’s Brief, p. 33. According to
the testimony of Mr. Jewell, opposer spends approximately
$200,000 annually on advertising expenditures for its STON-
formative marks16 and attends approximately 12-15 trade shows per
year.17 He also testified that opposer’s web site receives
approximately 5 to 9000 hits per month and points to reader
surveys conducted by the magazine Food Processing showing that

16 Jewell Deposition, p. 69, lines 11-19.
17 Id., p. 57, line 16 to p. 58, line 5.
Opposition No. 91187787
17
opposer's flooring ranked first in as the flooring of choice
among readers.18 Opposer also notes that it sells and completes
approximately 5000 epoxy flooring projects per year. In
addition, opposer argues that applicant has failed to introduce
any evidence of fame of its applied-for ARMORSTONE mark.
Initially we note that the lack of evidence of fame of
applicant’s mark is not relevant to the du Pont factor of fame
since that factor refers to the prior mark. As explained above,
opposer has priority in this case. We therefore focus our
analysis on whether opposer, as the prior user, has “clearly”
established fame of any of its marks.
We find that on this record, opposer has failed to meet its
burden. It is problematic that opposer’s advertising figures
pertain to all STON- formative marks and are not broken down for
each individual STONCLAD, STONHARD, and STONSHIELD mark.
Equally problematic, opposer has not submitted evidence of sales
figures under each mark. Apart from these deficiencies,
opposer’s advertising figures, promotional efforts and media
exposure are not at the level required for fame. See, e.g, Miss
Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562, 1566
(TTAB 2007). Notably, opposer has not submitted evidence
regarding advertising figures of competitors so that we can
place opposer’s evidence in proper context. See Bose Corp. v.

18 Id., p. 70, lines 6 – 10.
Opposition No. 91187787
18
QSC Audio Products Inc., 63 USPQ2d at 1309. Thus, while opposer
has enjoyed some degree of recognition in the construction
industry, opposer’s evidence noted above falls short of
establishing the fame of any of opposer's marks as required
under the fifth du Pont factor. This factor is therefore
neutral.
4. Third-Party Uses
The sixth du Pont factor focuses on the number and nature
of similar marks in use on similar goods. Opposer contends that
because it actively opposes third-party marks similar to any of
its “STON-” formative marks, the “number and nature of marks
that are arguably similar to any of StonCor’s marks in
substantial actual use on similar or related goods is small.”
Opposer’s Brief, p. 33. We simply cannot draw this conclusion
based on the number of oppositions filed by opposer. Although
the record does reflect opposer’s numerous filing of oppositions
against applied-for marks before this tribunal, it is devoid of
any evidence regarding the number of similar third-party
registrations or uses of similar marks for similar goods. As
such, this factor is neutral.
5. Actual Confusion
Regarding the seventh du Pont factor, opposer contends that
because opposer is the “registrant and senior user,” even though
there is no evidence of actual confusion, this factor favors
Opposition No. 91187787
19
opposer. Opposer’s Brief, p. 34. This factor considers the
nature and extent of any actual confusion, and since there is no
evidence of any actual confusion in this case, this factor is
neutral.
6. Contemporaneous Use
Opposer argues that because applicant has presented no
evidence regarding this eighth du Pont factor and because
opposer has “completed over thousands of projects over the last
decade,” this factor favors opposer. Opposer’s Brief, pp. 34-
35. We are not persuaded. Based on this evidence alone, we are
unable to gauge whether there has been a meaningful opportunity
for confusion to occur in the marketplace. Accordingly, the
eighth du Pont factor of the length of time during and
conditions under which there has been contemporaneous use
without evidence of actual confusion is considered neutral.
7. Market Interface Between the Parties
The tenth du Pont factor requires us to consider evidence
pertaining to the “market interface” between the parties,
including evidence of any past dealings between the parties
which might be indicative of a lack of confusion in the present
case. As opposer states, there is no evidence of any type of
consent agreement or arrangement between the parties.
Consequently, this factor is neutral.
8. Applicant’s Right to Exclude
Opposition No. 91187787
20
Regarding the eleventh du Pont evidentiary factor, “the
extent to which applicant has a right to exclude others from use
of its mark on its goods,” opposer contends that by virtue of
ownership of its uncontestable registrations, opposer has the
right to exclude others from use of its marks. Opposer’s
argument is misplaced. This factor requires us to consider
evidence pertaining to the applicant's right to exclude others
from use of its mark, not as to the opposer's right to exclude
others. There is no such evidence in the record with respect to
applicant, and the eleventh du Pont factor therefore is neutral
in this case.
9. Balancing the Factors
Considering all of the evidence of record as it pertains to
the relevant du Pont factors, we conclude that while the goods
are related, the marks are too distinct in sound, appearance and
commercial impression to find a likelihood of confusion.
VI. Descriptiveness Claim
We now turn to opposer’s claim that applicant’s mark is
merely descriptive. Opposer, relying on applicant’s own
advertising materials,19 argues that because applicant’s mark
ARMORSTONE incorporates the term “stone” to name one of the key
components of applicant’s “epoxy coating for use on concrete

19 During oral argument, opposer clarified that the evidence of third-
party brand name use of the term ARMORSTONE submitted by notice of
reliance was not in support of opposer’s descriptiveness claim.
Opposition No. 91187787
21
industrial floors,” applicant’s mark as a whole is merely
descriptive. As opposer maintains:
Since “stone” is the second half of ARMORSTONE, Specialty
Coatings mark ARMORSTONE describes the “stone” appearance
resulting when using Specialty Coatings’ “epoxy coating for
use on concrete industrial floors” product. Such
description of a characteristic, namely the “stone”
appearance resulting when using the ARMORSTONE product,
renders ARMORSTONE descriptive and unregistrable.

Opposer’s Brief, p. 39.
Opposer’s position represents a misunderstanding of the
legal standard for descriptiveness. A mark is merely
descriptive if it immediately conveys information concerning a
significant quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). The entire mark,
not just a single component, must be considered. In this
particular case, applicant has applied to register a unitary
mark – ARMORSTONE. Opposer has introduced no evidence (for
example, dictionary definitions, excerpts from news databases or
the Internet) that the combination of the terms “armor” and
“stone” are merely descriptive of applicant’s goods. While
applicant’s mark may be suggestive of the quality of applicant’s
goods, there is nothing in the record to establish that it is
Opposition No. 91187787
22
merely descriptive. Accordingly, opposer has also failed to
sustain its burden of proof on this claim.
DECISION: The opposition is dismissed.