Inherent Elevated Level of Care and Sound Difference Overcome 2(d) Refusal

Overview

This case is a TTAB precedent.

Despite finding similarities in the services, trade channels, and classes of customers, the Board reversed the Section 2(d) refusal to register the mark. The TTAB determined that the distinct differences in sound, appearance, and commercial impression, when coupled with the elevated level of purchaser care inherent in the roofing industry, tipped the scale in favor of finding no likelihood of confusion.

In reaching this decision, the Board clarified that the "no-correct-pronunciation" rule generally applies only to coined or invented terms that lack an established meaning. Because the marks at issue involved recognized words and surnames with established dictionary definitions, the Board ruled that Examining Attorneys cannot arbitrarily supply their own pronunciations to assume that two marks are phonetically identical.

Background

The Applicant, Jason Jimenez, sought to register the standard character mark GASPER ROOFING on the Principal Register. The application covered a wide array of roofing-related services in International Class 37, including consultation, contracting, installation, maintenance, and repair. The Applicant disclaimed the descriptive wording “ROOFING.”

The Trademark Examining Attorney initially issued a final refusal under Section 2(e)(4), arguing the mark was primarily merely a surname, and under Section 2(d), citing a perceived likelihood of confusion with the registered standard character mark JASPER CONTRACTORS (which also covers "roofing services" in Class 37).

During the course of the appeal and subsequent remands, the case narrowed. The Examining Attorney accepted the Applicant's claim of acquired distinctiveness under Section 2(f), which obviated the surname refusal. Consequently, the only remaining issue for the Trademark Trial and Appeal Board (TTAB) to decide was the Section 2(d) likelihood of confusion refusal.

How the Board Analyzed the DuPont Factors

DuPont #2: Similarity of the Services

The Board first addressed the comparison of the services under the second DuPont factor. The cited registration for JASPER CONTRACTORS identifies "roofing services," while the Applicant’s mark covers various specific roofing tasks, such as "Roofing consultation," "Roofing contracting," and "Roofing installation."

The Board found that the Registrant’s broad identification of "roofing services" was "identical to the 'roofing services' identified in the application and encompasses each of the specific roofing services listed in the application." Because legally identical or encompassing services are presumed to travel through the same channels of trade to the same classes of consumers, the Board concluded that this DuPont factor heavily weighs in favor of finding a likelihood of confusion.

DuPont #3: Channels of Trade and Classes of Consumers

Following its finding of identical services, the Board turned to the third DuPont factor: trade channels and consumer classes. Because neither the application nor the cited registration contained any limitations on how or to whom the services are offered, the Board stated:

"Because the services are identical and unrestricted as to trade channels and consumer classes, we must presume that the services travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers."

As a result, this factor also weighed heavily in favor of a likelihood of confusion.

DuPont #1: Similarity of the Marks

Sound

The Examining Attorney argued that the marks were nearly identical in sound and appearance because the terms GASPER and JASPER are dominant. Specifically, the Examining Attorney asserted that "the surname GASPER and the term JASPER are phonetic equivalents because GASPER can be pronounced with a hard or soft letter 'g' sound."

The Board disagreed, explicitly clarifying the limits of pronunciation assumptions:

"Generally, the principle that there is no correct pronunciation of a mark applies with greater force when one of the marks involved is a coined mark without a specific meaning... In other words, this principle may apply to instances involving an invented term devoid of any known or understood meaning."

In this case, the Board found that neither GASPER nor JASPER are coined terms. "GASPER" was established in the record as a recognized surname, while the Board took judicial notice that "jasper" is a recognized English word for an opaque quartz.

Because both words have established meanings, the Board rejected the idea that they can be pronounced interchangeably. The Board reasoned:

"The record in this case establishes that 'Gasper' is a surname that begins with the letter strings 'G-a-s' and 'G-a-s-p,' each of which forms the words 'gas' and 'gasp' that are recognized in U.S. English, and pronounced with a hard letter 'g' sound."

Conversely, the dictionary definition of "jasper" showed it is universally pronounced with a soft "j" sound.

Appearance, Connotation & Commercial Impiression

Furthermore, the Board observed that the additional wording, "ROOFING" and "CONTRACTORS," contributed to the overall differences in sound and appearance between the marks. While both of these terms were disclaimed as descriptive, the Board emphasized that the "ultimate conclusion rests on a consideration of the marks in their entireties."

Taking the full marks into account, the Board found that GASPER ROOFING primarily conveys the commercial impression of a surname, while JASPER CONTRACTORS conveys the impression of a semi-precious stone.

The Board concluded:

"We find, in sum, that the marks in their entireties are different in appearance, pronunciation, connotation, and overall commercial impression which weighs against a finding of likelihood of confusion."

DuPont #4: Purchasing Conditions

The Board next evaluated the fourth DuPont factor: the degree of care exercised by consumers. It noted that while the services in the application were not restricted to commercial or residential use, the "intrinsic nature" of roofing services suggests they are not minor or impulse purchases.

The Board explicitly stated:

"Roofing services, by their intrinsic nature, are not impulse purchases but are relatively expensive and would ordinarily be purchased with a relatively high degree of care."

Evidence from the Applicant’s website and registration specimen further supported this conclusion. The Applicant’s website advertised financing options and invited consumers to schedule consultations, while the specimen showed the Applicant assisting customers with complex insurance claims.

The Board found that these elements indicated a deliberate purchase process involving multiple steps and a high level of consumer involvement. Consequently, the Board agreed that "even the least sophisticated consumer is likely to exercise an elevated level of care." This factor weighed heavily against a likelihood of confusion.

DuPont #5 & #8: Actual Confusion and Contemporaneous Use

The Applicant argued that the complete lack of actual confusion evidence over years of concurrent use indicated that the marks were sufficiently dissimilar.

The Board quickly dismissed this argument, noting that the Examining Attorney is under no obligation to adduce such evidence in an ex parte appeal. Consequently, the Board deemed the factors relating to actual confusion (DuPont factor five) and the length of contemporaneous use without confusion (DuPont factor eight) to be neutral.

Board’s Decision

Ultimately, the TTAB reversed the Section 2(d) refusal to register GASPER ROOFING.

In weighing the conflicting evidence, the Board acknowledged that while the identity of the services and trade channels weighed in favor of a likelihood of confusion, the "dissimilarity of the marks in sound, appearance, meaning and commercial impression is sufficiently great" that it overcame those factors. This distinct dissimilarity, when coupled with the "elevated level of purchaser care" inherent in the roofing industry, led the Board to conclude that confusion between the Applicant’s mark and the cited registration was not likely.