There is no way to gauge how consumers will pronounce a trademark that is not a recognized word. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“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 Board to ignore this evidence entirely and supply its own pronunciation.” Id.

Thus, “all reasonable possibilities based on normal English pronunciation” are to be considered. In re Disciplina Excellentiae LLC, Ser. Nos. 90426395 and 90426435 (TTAB Mar. 31, 2023).

HIP and HIPE

In an appeal of a Section 2(d) refusal of HIPE FIT and HIPE FITNESS in view of prior HIP registrations for similar services, the the In re Disciplina Excellentiae decision by the Trademark Trial and Appeal Board (“TTAB”) held that “hipe” and “hip” are not phonetic equivalents.

In standard English pronunciation, when a vowel and single consonant are followed by an “e” in a single syllable word, the “e” is almost always silent, and the preceding vowel is long (e.g., bike). Although as stated, there is no correct pronunciation for a term that is not a recognized word, in view of the ending silent “e,” in “hipe,” we find that it is more probable that the average consumer in the United States will pronounce “hipe” with a long “i,” rather than short “i,” as the Examining Attorney suggests (e.g., kit/kite, rip/ripe, fin/fine, hid/hide, spin/spine, fir/fire). In addition, as reflected by the dictionary definition provided by Applicant for “hype,” most one-syllable words in the English language composed of a consonant plus the letter ‘y' (e.g., by, my, try, fly) create a word pronounced with the long “i” vowel sound. In the term “hipe” Applicant has substituted the letter “i” for the letter “y.” Therefore, we find that “hipe” in Applicant's mark is the phonetic equivalent of “hype.”

The TTAB also noted that HIP and HIPE (“hype”) have different meanings.

Thus, the TTAB concluded that the dissimilarity of the marks under the first DuPont factor outweighed the other DuPont factors in this case. Accordingly, the refusals to register applied-for HIPE FIT and HIPE FITNESS marks were reversed.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.