Remember this little gem on trademark pronunciation from the DuetsBlog archives two years ago?
Judging from a search of Google, the JD Supra version of this post has gotten lots of traction.
Well, a few weeks ago the Court of Appeals for the Federal Circuit (CAFC) issued an interesting decision on trademark pronunciation in the likelihood of confusion analysis. John Welch reported on and discussed the CAFC’s Stoncor Group, Inc. v. Specialty Coatings, Inc. decision here.
So, how would you pronounce StonCor’s STONCLAD, STONHARD, and STONSHIELD marks, if you were shopping for epoxy coatings for use on concrete floors? Long “o” or short “o” sound?
This is what the Trademark Trial and Appeal Board (TTAB) said in StonCor’s 2012 opposition challenging ARMORSTONE for a competitor’s related goods, hearing no likelihood of confusion:
“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.’”
The CAFC heard the evidence differently, agreed with StonCor that the record evidence supported a long “o” sound, reminded the TTAB about the rules on trademark pronunciation, and held the TTAB erred by creating its own pronunciation rule (not supported by substantial evidence):
“There is no correct pronunciation of a trademark that is not a recognized word. . . . Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the [TTAB] to ignore this evidence entirely and supply its own pronunciation.”
In the end, however, the TTAB’s erroneous view on trademark pronunciation was considered harmless, because there was other substantial evidence to support no likelihood of confusion.
For brand owners that adopt marks not consisting of recognized words, this normally will yield a broader scope of protection when it comes to enforcing those rights, because of the variety of possible ways consumers and prospective consumers will perceive the prior mark.
As StonCor demonstrates, however, similar pronunciation of a portion of the marks at issue, alone, may not be enough to support a likelihood of confusion.