Trademark Pronunciation

Suspended high above Chelsea Market in New York City are these eye-catching ads for OWYN:

That’s a new brand for me, I’m unsure how to pronounce it (Own, Owen or Oh Win), but OWYN apparently stands for Only What You Need — for dietary supplement protein products that “use nutritious, plant-based ingredients and leave out inflammatory animal products and allergens.”

Meanwhile, another kind of suspension has occured deep within the bowels of the USPTO, where the OWYN federal trademark application is presently suspended, because of a prior-filed pending intent-to-use application for EWYN, covering overlapping goods, including dietary supplements.

Fortunately for OWYN, it had filed an even earlier intent-to-use application for the spelled-out mark OWYN ONLY WHAT YOU NEED, beating the EWYN filing date by six months, giving OWYN the ability/leverage to file a Notice of Opposition against registration of the blocking EWYN application.

Actually though, had the OWYN application been filed when the earlier OWYN ONLY WHAT YOU NEED application was, the suspension and ITU log jam at the USPTO could have been avoided.

As it stands now, the OWYN application is suspended pending the outcome of the prior-filed EWYN application, which in turn is suspended pending the outcome of the opposition against it, which is suspended while the parties attempt to settle the conflict and discuss likelihood of confusion.

In the Opposition, OWYN contends there is likelihood of confusion between EWYN and OWYN ONLY WHAT YOU NEED, which is a bit dangerous to allege. If it loses that argument, it won’t be able to knock out the blocking EWYN application, making it difficult to then convincingly say there is no likelihood of confusion between the more similar OWYN and EWYN marks, for the same goods.

Working backwards, and as a practical matter, unless the parties are able to reach an agreement as to peaceful coexistence, the OWYN application likely will remain suspended unless and until the prior-filed EWYN application is knocked out of the way or otherwise abandoned.

This train of suspensions is a good reminder to file all pertinent intent-to-use applications sooner than later, once a bona fide intention exists to make commercial use of the mark in commerce.

It also illustrates how important intent-to-use application filing dates can be in determining priority, especially when there is a long period of time that elapses before actual use is made.

On a lighter and less technical note, and for any Lord of the Rings fans out there, do any of the marks in this discussion remind you of EOWYN (pronounced A-O-WIN)?

How, if at all, might you rely on the existence of EOWYN to argue either side of the likelihood of confusion argument between EWYN and OWYN?

Life is full of ups and downs. The world of trademarks often tends to mirror life. Yet, for the time being, the USPTO currently recognizes only one brand and mark as living solely on ups:

United_Parcel_Service_logo_2014_svgAs it turns out, those three letters form a pretty powerful brand and trademark. Although there may have been two previous federal registrations for the same letter-string, one covering socks and another covering “retail marketing programs for products of others,” those have long since expired, and the USPTO database now is surprisingly clear of any others, to the point where even goods like specialty metal pipes and carpet and rugs can’t find a path to registration.

 

United_Parcel_Service_logo_(1961–2003)

As a young child in the late sixties I recall a distinct curiosity about the brown delivery trucks called “ups” — as opposed to “downs,” I figured. Little did I know that “ups” should have been pronounced “u-p-s” not “ups,” so I can picture my imagination running wild, thinking the letters suggested the thrill of receiving packages from brown delivery vans (long before hearing about what Brown could do for me), then one day, my imagination probably was shattered to learn that UPS actually just meant United Parcel Service:

UnitedParcelServiceToyTruck

At the time, with UPS, I saw a word, and I probably didn’t appreciate what an acronym or initialism was, and I’m certain I didn’t appreciate the difference between them. Even more, I’m certain I knew nothing about the TMEP (initialism for Trademark Manual of Examining Procedure, not an acronym), explaining why a trademark savvy brand owner might not want to link its acronym or initialism trademark to the words it is derived from:

“As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents. A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents. Thus, without additional evidence, an applicant’s proprietary use of an acronym is not sufficient to establish that the acronym is readily understood to be substantially synonymous with the descriptive wording it represents.”

Does that help explain why the words United Parcel Service have either vanished or become far less conspicuous on those busy brown vans? From a trademark perspective, probably not, after all, United Parcel Service is not a merely descriptive phrase, as it was federally-registered without evidence of aquired distinctiveness. Any marketing types know or want to hazard a guess as to why the linkage is either gone or more subtle now?

UPSTruck

My sense, from a trademark perspective, is that ambiguity as to precise meaning and pronunciation probably help to broaden the scope of trademark rights. Assuming distinctiveness exists, to the extent all three — word, acronym, and initialism — plausibly apply to UPS, it may help explain, in part, why more marks of others might be snared in the trademark owner’s likelihood of confusion net.

So, if you’re planning on creating a brand based on the letter-string UPS as an acronym or initialism derived from a company name or some other phrase, it’s best to first confirm the acronym isn’t descriptive or generic, and then show UPS in a graphically distinct manner while keeping it closely linked to the fully spelled out words, as this one did:

UnitedPropertiesSouthwestIn case you’re wondering what inspired this delivery of information to our loyal readers today, it hasn’t escaped me that UPS is now apparently linking the meaning of UPS to United Problem Solvers in television advertisements, so some digging seemed appropriate. Perhaps having multiple possible meanings to UPS encouraged by the trademark owner is yet one more way to broaden the scope of rights in UPS. What do you think?

As always, stay tuned, as it turns out, UPS’ United Problem Solvers federal trademark applications may be refused registration by the USPTO (another initialism, not acronym, for United States Patent and Trademark Office) based on another’s prior pending trademark application for Problem Solvers in connection with highly similar services: “Freight logistics management; Transportation logistics services, namely, arranging the transportation of goods for others; Transportation logistics services, namely, planning and scheduling shipments for users of transportation services.”

Anyway, it looks like Big Brown is solving this problem by opposing registration of Problem Solvers, alleging likelihood of confusion with its prior registration for Packaging Problem Solvers.

To the extent you’re also all about brands and trademarks, and you imagine a trademark story with each brand you might encounter, I suppose there are an infinite number of ways, right?

One of the Peace Coffee shops in our office building offers K’UL chocolate, and the point of sale display caught my eye, so I snapped this cool pic, to engage in a little trademark storytelling:

 

KULChocolate

K’UL Chocolate appears to be a new brand, founded in Minneapolis, so that’s also pretty cool. Actually, even more than cool today, since it’s been downright frigid here the last few days!

So, as I suspected, the brand name is intended to be pronounced the same as “cool” — and it has an interesting and creative origin, according to the company’s website:

“We create great tasting, good for you, functional chocolate and energy bars with the finest all natural ingredients. The name, K’ul (pronounced cool), comes from the Mayan word for energy, which is what our bars provide you with – the ability to do more and do it better.”

A review of the USPTO’s file history for the K’UL trademark application for nutritional supplement energy bars and cocoa based energy bars is as surprisingly simple as the product’s ingredient listings. The only issue that the USPTO flagged related to the description of goods; no mere descriptiveness refusal based on foreign equivalency (Mayan languages apparently aren’t dead); and no likelihood of confusion refusals, despite these other phonetically similar federally-registered marks for similar goods (so, perhaps a crowded field with narrow individual rights):

  1. KÜL FUEL for sports drinks;
  2. COOL MINT CHOCOLATE for grain-based ready to eat energy bars (MINT CHOCOLATE disclaimed);
  3. COOL ENERGY for nutritional supplements for boosting energy;
  4. COOL RUNNINGS for energy drinks;
  5. COOL CONFIDENCE for energy mints; and
  6. ICE COOL for energy drinks.

I’m thinking K’ul Chocolate probably thought it was pretty cool the USPTO’s assigned examining attorney didn’t gum up the chocolate with arguments like these that prevented registration (just last year) of KÜL HANDBAGS for fashion handbags, based on the prior registered mark for COOL HANDBAGS (stylized) in connection with backpacks, beach bags; book bags; and gym bags:

“Applicant’s mark and the registered mark are similar in sound, appearance, and commercial impression. In this case, the marks contain terms that look and sound similar. KÜL and COOL look similar because the terms seem to suggest the same word – “cool”. The marks also sound the same, as the KÜL is pronounced the same as “cool”. Thus this term and COOL paired with the term “Handbags” as the main components of the marks. The commercial impression created by the marks is also similar in that the combination of terms immediately names the type of goods identified, as well as suggesting a quality of the goods. Consumers would experience confusion when speaking about or observing the marks based upon the similarities detailed above.”

KULHandbagLet’s just say, it would be even cooler for K’ul Chocolate, if the other COOL energy food and beverage brands were to view their rights narrowly, and chill on raising any objections as well.

Perhaps there’s an added intentional and subliminal benefit of K’ul Chocolate being for sale in the ever-so-tranquil Peace Coffee shops?

Suppose you’re a brand manager or trademark counsel for one of the previous COOL brands, would you chill or start to melt down, and why?

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.