Trademarks and Homophones: The Selection of Marks and Should Trademark Law React?

Producers of products and services choose particular trademarks for a variety of reasons—most of those reasons are related to conveying a particular message about a product or service and ensuring they receive some legal protection through trademark law.  Of course, some particularly favorable words are not allowed legal trademark protection in the U.S. because to do so would impede the ability of competitors to fairly use words to describe their own products or refer to a product class.  Thus, the spectrum of distinctiveness has served to ensure that certain words are never protected or only protected when there is a substantial danger of consumer confusion, an investment in goodwill by the producer, and competitors will have some alternatives to describe their products and services.  The spectrum has worked well for word marks, but occasionally does not work well for non-word marks such as trade dress (or the get-up).  Aesthetic functionality could be applied to word marks the use of which would put competitors at a significant non-reputation related disadvantage.  However, aesthetic functionality is usually not needed for word marks because the spectrum should filter out words that would put competitors at a disadvantage.  Moreover, a defense of fair use may also protect a competitor’s ability to use a word mark. 

But, what about homophones?  Homophones are words that are essentially pronounced similarly, but have different meanings and are spelled differently.  An example of a homophone is the words “bye” and “buy.”  In a recent article, by Derick F. Davis and Paul M. Herr titled, “From Bye to Buy: Homophones as a Phonological Route toPriming,” published in the Journal of Consumer Research in April of 2014, the authors find that consumers experiencing heavy “cognitive load” are essentially influenced by homophones.  Thus, a consumer, for example, shopping and reading a lot of text on the Internet, is susceptible to influence from the usage of a homophone.  The article provides the example of a person reading the word “bye” on a page of text, turning the page and seeing an advertisement.  The consumer could be influenced to purchase the advertised product because of the meaning of the word “buy” even though they read the word “bye.”  If you add the word “good” to the “bye”, then you provide even more priming for the consumer.  Two other examples are the words “weight” and “wait,” which could be effective in the weight loss field, and the words “right” and “write,” which apparently made people write longer papers.  Importantly, the article makes a distinction between homophones and other word types, which may not result in the same effect:

An important conceptual distinction is warranted. Homophones are related to but different from (1) homographs (words with identical spellings but different pronunciation and meanings; e.g., “lead” the metal vs. to lead others), (2) stress homographs (stress on different syllables, e.g., “refuse” as in rubbish vs. to reject), and (3) homonyms, words that are both homophones and homographs (e.g., “bank” as in river vs. a financial institution). We suggest homophones’ ability to prime is rooted in shared phonology, not shared orthography.

Trademark law does take into account the multiple meanings of words, but does the spectrum of distinctiveness do a good job of that?  Would aesthetic functionality do better?  Do you put competitors at a significant non-reputation related disadvantage when you trademark a word with other positive meanings related to your particular word from a phonetic perspective, such as “good-bye”?  What if you misspell a word to create a fanciful mark to obtain a particular meaning, as pharmaceutical companies often do?  In a discussion concerning the article in Real Simple, Derick Davis, one of the authors of the study, notes that “Alli, a diet drug[‘s] name, . . . may be intended to remind you of an ally who will help you achieve weight loss.”  (I suppose it wouldn’t really be a fanciful mark then, but a suggestive or descriptive one.)

The article, for sure, provides some interesting and helpful information for selecting trademarks--certainly an important choice impacting the value of the mark and the success in marketing the product.