When evaluating if two trademarks are confusingly similar, the U.S. Patent and Trademark Office will consider any similarities in the marks’ appearance, sound, connotation, and commercial impression. The Trademark Trial and Appeal Board (TTAB) of the Trademark Office has frequently held that there is no “correct” pronunciation of a trademark. But the TTAB recently provided an important nuance: This principle applies more strongly to terms that have been coined or invented than terms with a specific pronunciation and an understood meaning.
In a recent opinion, In re Jason Jimenez, a trademark applicant sought to register “Gasper Roofing” as a trademark, but the Trademark Examining Attorney refused to register the mark. The refusal was in part because “Gasper Roofing” resembles another trademark that was already registered in the roofing industry, “Jasper Contractors.” Even though Gasper and Jasper do not look the same, the Examining Attorney found that they may sound the same because Gasper can be pronounced with either a hard or soft “g” sound. The Examining Attorney relied on the established principle that there is no “correct” way to pronounce a trademark.
The trademark applicant appealed the Examining Attorney’s refusal to register “Gasper Roofing” and, upon reviewing the case, the TTAB reversed the Examining Attorney’s refusal and held that it was not bound by precedent to find that Gasper and Jasper may be pronounced the same. Instead, the TTAB held that the principle stating there is no “correct” pronunciation for a trademark applies more strongly in instances where the mark is an invented or coined term rather than a term with a specific pronunciation and a known meaning.
The TTAB has found many invented or coined terms to be confusingly similar to existing marks because there is no correct pronunciation or specific meaning. LEGO and MEGO are too similar because neither has a “correct” pronunciation, even though the applicant for the MEGO mark claimed the mark should be pronounced as “me go.” Interlego Ag v. Abrams/Gentile Ent. Inc., 63 U.S.P.Q.2d 1862, at *2 (TTAB. 2002). IKEA and AKEA are too similar because they look and sound alike, and they have no apparent meaning in any language. Inter Ikea Sys. B.V. v. Akea, LLC, No. 91196527, 110 U.S.P.Q.2d 1734, at *6-7 (TTAB 2014). CRESCO and KRESSCO are too similar because they sound the same and they are both arbitrary names for their products. In Re Cresco Mfg. Co., 138 U.S.P.Q. 401, at *1 (TTAB 1963).
But Gasper and Jasper are real words with real, recognized pronunciations, and those pronunciations are different. “Gasper” is a surname, and “Jasper” is a word with a specific definition. They both have actual, correct pronunciations, so the TTAB decided that the precedent relied on by the Examining Attorney did not require the TTAB to find that the two words would be pronounced identically. Gasper is pronounced with a hard “g,” while Jasper is pronounced with a soft “j,” so the two marks do not sound the same.
This decision underscores that the “no correct pronunciation” rule is not absolute. When a mark is a recognized word or a surname, and standard rules of English establish a particular pronunciation, the TTAB can and will factor that into the likelihood-of-confusion analysis. This means that pronunciation evidence and context, like whether a term is coined or if it is commonly understood, may carry more weight in future disputes. For brand owners, this means that invented or coined terms may face broader assumptions about pronunciations, while marks grounded in common or recognizable words may benefit from being limited to the more commonly understood pronunciation. By understanding how the TTAB approaches these nuances, businesses can more strategically position their applications to avoid or overcome refusals.