Tomato? Tomahto? Is There One Right Way to Pronounce a Trademark?

Tomato Trademark PronunciationFederal Circuit Says No When Trademark is Not a Recognized Word

The case arose out of a dispute between StonCor and Specialty Coatings, competitors in the market for “epoxy coatings used on concrete floors.”

In 1992, StonCor registered the mark STONSHIELD with the US Patent and Trademark Office in connection with “floors and flooring systems comprised of epoxy resins . . . for use in industrial and institutional applications,” among other products.

In 2008, Specialty Coatings applied to register the trademark “ARMORSTONE” in connection with “[e]poxy coating for use on concrete industrial floors,” among other products. StonCor opposed registration of the ARMORSTONE mark on six grounds.  Among other things, it argued that:

  • The USPTO should not allow registration of the ARMORSTONE mark because consumers would likely confuse it with STONSHIELD when used in connection with epoxy floor products.
  • ARMORSTONE is not eligible for registration because the mark is merely descriptive.

The Trademark Trial and Appeal Board (TTAB) analyzed the likelihood of confusion based on thirteen factors, the relevant ones being:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, and
  • The number and nature of similar marks in use on similar goods.

With regard to the first factor, the TTAB considered how consumers would pronounce “STONSHIELD.”

StonCor presented evidence that “ston” would be pronounced like “stone.”

However, the TTAB reasoned that the spelling of the word and “ordinary rules of English” dictated that the word would be pronounced with a short “o” as in “on.”

Taking this and other factors into consideration, the TTAB found there was no likelihood of confusion.

See Also:  Monetize Your Ideas — Trademarks

StonCor appealed.

The Federal Circuit found that the TTAB had erred by failing to credit StonCor’s evidence that consumer would pronounce “STON” as “stone”:

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 Board to ignore this evidence entirely and supply its own pronunciation.

However, the court concluded that this was harmless error and that other factors supported the TTAB’s conclusions.   The Federal Circuit held that there is no single correct way to pronounce a trademark that is not a recognized word.

If you have questions about your whether your trademarks would be considered confusingly similar to a competitor’s, contact our office for a free initial consultation.

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Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
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Photo Attribution:  “Flash-lit Macro Tomatoes” by The Ewan is licensed by CC BY-SA 2.0 Generic.


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