In re Jason Jimenez, Serial No. 97551823 (TTAB Nov. 5, 2025) (precedential)
A roofing contractor named Jason Jimenez had been running his business under the name GASPER ROOFING since 1972. When he finally applied to register the mark with the USPTO, he hit a wall. The examining attorney refused registration on the grounds that GASPER ROOFING was likely to be confused with an already-registered mark: JASPER CONTRACTORS.
The difference between the two marks, at least according to the examiner, was not meaningful enough. GASPER and JASPER, the examiner argued, were phonetic equivalents. One letter apart, and allegedly pronounced the same way.
The Trademark Trial and Appeal Board disagreed. In a decision now designated as a TTAB precedent, the Board reversed the refusal. The reasoning has useful implications for anyone building a brand around a personal name.
What Happened
Jimenez applied to register GASPER ROOFING in standard characters for a full range of roofing services, claiming January 1, 1972 as his date of first use. ROOFING was disclaimed as a generic term, meaning the protectable part of the mark was GASPER alone.
The examining attorney refused registration on two grounds. First, that GASPER was primarily merely a surname under Section 2(e)(4) of the Trademark Act. Second, that GASPER ROOFING was likely to cause confusion with the registered mark JASPER CONTRACTORS for roofing services.
The surname refusal was eventually resolved. Jimenez submitted evidence of acquired distinctiveness under Section 2(f), demonstrating that GASPER ROOFING had built up enough consumer recognition over decades that customers associate it with his business specifically, not just with the Gasper family name. The examining attorney accepted this evidence, and the surname issue was dropped.
That left only the likelihood of confusion refusal. The Board reversed it.
The Phonetic Equivalents Argument
The examining attorney's core argument was that GASPER and JASPER sound the same. The letter G, the examiner argued, can be pronounced with either a hard sound (as in "go") or a soft sound (as in "gem"), and when pronounced softly, GASPER sounds like JASPER.
The examiner supported this with a line of trademark case law holding that there is no single correct pronunciation of a trademark. Under this principle, if a mark can plausibly be pronounced in multiple ways, the examiner can find similarity in sound even if the most natural pronunciation would be distinct.
The Board found that this argument pushed the principle too far.
When the "No Correct Pronunciation" Rule Does and Does Not Apply
The principle that there is no correct pronunciation of a trademark was developed primarily for coined or invented marks. A coined mark is a word with no recognized meaning in any language, like KODAK, PEPSI, or EXXON. Because these words carry no inherent pronunciation rules, consumers may say them differently, and the USPTO accounts for that variability when assessing similarity in sound.
But GASPER is not a coined term. It is a recognized surname. And JASPER is not coined either. It is a real English word referring to a type of semi-precious stone, as well as a given name and a place name. Both words have established, natural pronunciations in U.S. English.
GASPER starts with the letter string G-A-S, which forms the word "gas," pronounced with a hard G. JASPER is pronounced with a soft J sound, like "jass-per." These are phonetically distinct. The Board found that the examiner had no evidentiary basis for concluding they would be pronounced the same, and that merely speculating about a possible soft-G pronunciation was not enough to establish phonetic equivalence.
This distinction matters beyond roofing. If you are trying to register a mark that contains a real English word or a recognized surname, the USPTO cannot simply assume your mark might be mispronounced in a way that makes it sound like a competitor's mark. The "no correct pronunciation" rule applies to invented terms, not to words that carry established sounds.
The Role of the Disclaimed Words
The Board also found that the full marks, considered as a whole, pointed away from confusion. GASPER ROOFING and JASPER CONTRACTORS differ not just in their first words but in their second words as well. ROOFING and CONTRACTORS look different, sound different, and create different impressions of the business. One suggests a company focused specifically on roofing. The other suggests a general contracting operation.
A disclaimed word cannot be used to establish trademark rights on its own, but it still contributes to how a consumer perceives the mark as a whole. The Board found that the different secondary terms reinforced the overall distinction between the marks in both appearance and commercial impression.
Purchaser Care Weighed Against Confusion
Beyond the marks themselves, the Board considered how carefully consumers shop for roofing services. Unlike candy or a cup of coffee, a roofing job is a significant purchase. It often involves multiple consultations, insurance coordination, and financing. Jimenez's own website advertised consultation scheduling and financing options, which the Board cited as evidence that the purchasing process is deliberate and multi-step.
When consumers exercise a high degree of care before buying, they are less likely to be confused by marks that share superficial similarities. The Board found that even the least sophisticated roofing customer would take time to research and vet a contractor before hiring one, which reduced the risk that anyone would mix up GASPER ROOFING and JASPER CONTRACTORS.
The Bottom Line
The services in this case were legally identical. Both marks covered roofing services, and there were no restrictions on trade channels or consumer types. Those factors favored a finding of confusion. But the Board found that the dissimilarity of the marks, combined with elevated purchaser care, was sufficient to outweigh them.
A few takeaways worth keeping in mind.
One-letter differences can be meaningful. The USPTO sometimes treats marks that differ by a single letter as phonetically equivalent, but that argument has limits. When the marks involved are real words or recognized surnames with established pronunciations, the examiner needs actual evidence to support a claim of phonetic equivalence, not just speculation about possible alternative pronunciations.
Acquired distinctiveness can rescue a surname mark. If your business name is your family name and the USPTO refuses it as primarily merely a surname, that is not necessarily the end of the road. Long-term, exclusive use that causes consumers to associate the name with your specific business can satisfy the acquired distinctiveness standard. Jimenez had been using GASPER ROOFING since 1972. That kind of history carries real weight.
The nature of your services affects the confusion analysis. High-consideration purchases like roofing, legal services, financial planning, or medical care reduce the likelihood of consumer confusion because buyers do their homework. If your services fall into this category, that is a factor that can work in your favor in a likelihood of confusion analysis.
Disclaimed terms still shape the overall impression of a mark. Even though ROOFING and CONTRACTORS were both disclaimed, the Board considered them in comparing the marks as a whole. Disclaimed terms cannot be ignored just because they lack independent trademark significance.
If you have received a likelihood of confusion refusal or are trying to register a mark that includes your name, Five Dogs Law offers a free consultation. There is no obligation and no pressure.
Book a free consultation with Jared Spindel.
This post is for general informational purposes only and does not constitute legal advice. Trademark clearance requires a fact-specific analysis of your specific mark and situation. Contact an attorney for advice about your particular circumstances.
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