The U.S. Patent and Trademark Office (USPTO) evaluates trademark disputes by assessing similarities in appearance, sound, connotation, and commercial impression. While the Trademark Trial and Appeal Board (TTAB) has long maintained that trademarks lack a definitive pronunciation, recent rulings highlight exceptions when marks are coined or invented terms. This distinction carries significant implications for businesses seeking to register trademarks, particularly in distinguishing between real words and arbitrary names.
The Role of Pronunciation in Trademark Confusability
The TTAB’s approach to pronunciation is multifaced. For coined terms - such as “MEGO” or “AKEA” - the absence of a fixed pronunciation often leads to broader assumptions about similarity. These terms, lacking inherent meaning or established articulation, are more susceptible to confusion with existing marks. Conversely, real words or surnames with recognized pronunciations may offer clearer differentiation.
In In re Jason Jimenez, the TTAB emphasized that established pronunciation rules for recognized words - such as the hard “g” in “Gasper” versus the soft “j” in “Jasper” - should inform likelihood-of-confusion analyses. This ruling underscores the importance of linguistic clarity in trademark disputes.
Coined Terms and the Risk of Confusability
The TTAB has consistently ruled that coined terms face heightened scrutiny. For example:
- LEGO and MEGO: Both lack a fixed pronunciation, leading to confusion despite the latter’s claimed “me go” articulation.
- IKEA and AKEA: Their similar sounds and lack of meaningful connection in any language heighten confusion.
- CRESCO and KRESSCO: Both are arbitrary names with no inherent meaning, making their similarity more likely to mislead consumers.
These cases underscore that invented terms are subject to stricter evaluation, as their ambiguity permits broader interpretations.
Strategic Implications for Brand Owners
For businesses, the TTAB’s rulings offer strategic guidance. Marks based on real words or surnames benefit from established pronunciation rules, which can reduce the risk of confusion. Conversely, coined terms may require proactive monitoring to address potential overlaps.
Trademark monitoring is critical, particularly for brands using invented terms. By anticipating how courts might interpret pronunciation and meaning, companies can refine applications or defend against refusals. Understanding these nuances enables businesses to navigate the complexities of trademark law with greater clarity and foresight.
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Conclusion
The TTAB’s evolving standards reflect a balance between safeguarding existing trademarks and accommodating new ones. While coined terms face stricter scrutiny, recognized words and surnames offer clearer distinctions. For brand owners, this means leveraging linguistic clarity and strategic planning to strengthen trademark applications and mitigate conflicts. As the legal landscape continues to shift, staying informed about these nuances is essential for navigating the intricacies of trademark law.