Federal Circuit: no "correct" pronunciation for marks that are unrecognised words

United States of America

In StonCor Group Inc v Specialty Coatings Inc (Case No 13-1448, July 16 2014), the US Court of Appeals for the Federal Circuit, in affirming a Trademark Trial and Appeal Board (TTAB) ruling finding no likelihood of confusion between the trademarks STONSHIELD and ARMORSTONE, cautioned that the TTAB had improperly forced a pronunciation of the appellant’s mark that was unsupported by evidence. 

StonCor Group opposed Specialty Coatings application for the mark ARMORSTONE alleging, in part, that the mark is confusingly similar to StonCor’s registered mark STONSHIELD. The TTAB concluded that confusion between the parties’ marks was unlikely because the marks were distinct in sound, appearance and commercial impression. However, as part of the TTAB’s analysis, and despite StonCor presenting evidence that consumers would pronounce the 'ston' portion of its mark as 'stone', the TTAB reasoned that the parties’ marks were distinguishable in pronunciation because ordinary rules of English language construction indicate that the 'o' in 'ston' would be pronounced with a “short vowel” sound, as in 'on'. StonCor appealed.

On appeal, the Federal Circuit agreed with StonCor that the TTAB had erred by giving minimal weight to StonCor’s evidence about the pronunciation of its mark and instead supplying its own pronunciation. StonCor’s vice president of marketing testified that StonCor pronounces the 'ston' portion of its mark as 'stone' and promotes its products at trade shows by pronouncing 'ston' as 'stone', and that he had “very, very rarely” heard the mark pronounced in the manner suggested by the TTAB. 

The Federal Circuit held that the TTAB’s pronunciation analysis was not supported by substantial evidence and “there is no correct pronunciation of a trademark that is not a recognised word”. As 'ston' is not a word in the English language, it was error for the TTAB to ignore StonCor’s evidence and arrive at its own conclusion about how potential consumers would pronounce appellant’s mark.

Ultimately, however, the Federal Circuit considered the TTAB’s error “harmless” and affirmed the TTAB’s ruling, which the court concluded was supported by substantial evidence.

Elisabeth Morgan, McDermott Will & Emery LLP, Los Angeles 

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