Precedential No. 10: TTAB Explains How to Submit Video Evidence, Reverses 2(d) Refusal of GASPER ROOFING Over JASPER CONTRACTORS

In a rather lackluster Section 2(d) ruling, the Board reversed a refusal to register the (standard character) mark GASPER ROOFING [ROOFING disclaimed], finding confusion unlikely with the registered mark JASPER CONTRACTORS [CONTRACTORS disclaimed], both for roofing services. The Board rejected the examining attorney's argument that GASPER and JASPER might be pronounced the same, and concluded that the differences in the marks and the "elevated level of purchaser care" outweighed the identity of the services and presumed channels of trade. Preliminarily, after rejecting Applicant Jimenez's attempt to submit YouTube videos, the Board explained how best to submit video evidence in connection with an ex parte appeal. In re Jason Jimenez, Serial No. 97551823 (November 5, 2025) [precedential] (Opinion by Judge Angela Lykos).

Video Evidence: An applicant may make video files of record during prosecution by submitting them in one of the formats designated as acceptable by the USPTO (see TMEP 904.03). However, once the TTAB has jurisdiction over an ex parte appeal and the time for filing a request for reconsideration has lapsed, "the only way to make a new video of record is to file with the Board a separately captioned written request for remand with a showing of good cause prior to the deadline for filing an applicant’s main appeal brief."

Practitioners should note that unlike during prosecution with TMEO (the Trademark Examining Operation electronic filing system), ESTTA, the Board’s filing system for uploading submissions via TTABVUE does not have the technical capacity to accept video files. Applicants should, if possible, file a transcript of the video content to support the request for remand with the Board, and indicate that if and when the remand request is granted and jurisdiction is restored to the examining attorney, the applicant will submit the video file through TMEO’s electronic filing system so that it can be uploaded to TSDR. This is another reason why applicants should not wait until after the filing of a notice of appeal to attempt to make video evidence of record.

Section 2(d): Relying on the line of case law holding that there is no correct pronunciation of a trademark, the examining attorney maintained 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 was unimpressed: "Because neither GASPER or JASPER is a coined term, case law . . . does not require us to find that these two terms may be pronounced in an identical manner."

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. * * * The dictionary entry for “jasper” further shows that it is pronounced as “ˈja-spər” with the soft letter “j” sound and not with the hard letter “g” sound. Therefore, contrary to the Examining Attorney’s argument, we find that “Gasper” would be pronounced with a hard letter “g” sound and that “Jasper” would be pronounced with a soft “j” sound, consistent with the rules of pronunciation for U.S. English. We find that “Gasper” and “Jasper” sound different when verbalized.

Further considering the differences in appearance and sound of the marks in their entireties, and the differences in connotation and overall commercial impression, the Board found that the first DuPont factor weighed against a finding of likelihood of confusion.

Moreover, the evidence supported a finding that "roofing service purchases may involve multiple steps and may be complex. As a result, even the least sophisticated consumer is likely to exercise an elevated level of care." The fourth DuPont factor therefore weighed against a likelihood of confusion.

Applicant Jiminez pointed to the lack of evidence of actual confusion, but the Board observed that "[t]he Examining Attorney is under no obligation to adduce such evidence in an ex parte appeal." In any event, “[t]he relevant test is likelihood of confusion, not actual confusion.”

Conclusion: The Board found that "the dissimilarity of the marks in sound, appearance, meaning and commercial impression is sufficiently great that, coupled with an elevated level of purchaser care, [it] outweighs the identical nature of the services, trade channels and classes of consumers." And so, the Board concluded that there is no likelihood of confusion, and it reversed the refusal.

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TTABlogger comment: What about filings in inter partes proceedings? Since the TTAB's ESTTA electronic filing system is unable to accept audio or video files, a party must record the materials on an appropriate medium, such as a CD-ROM or DVD, and physically file that medium with the Board. See TBMP 106.03; Hunter Industries, Inc. v. The Toro Company, 110 USPQ2d 1651 (TTAB 2014) pdf here.

Text Copyright John L. Welch 2025.