ACRONYMS CAN BE POWERFUL TRADEMARKS
Perhaps a newly emerging company’s most challenging tasks is to determine how to effectively name, and thereby, brand its company. Names that are too long are invariably forgettable while names that are shorter in nature may not effectively communicate the scope of the business proposition.
Thus, in an effort to both convey both the purpose of the company while making the name amenable to consumer ears, companies will very often develop and market their company under a specific acronym. Why is this such a powerful strategy? Well, consider how many people know what the Bavarian Motor Works Company sells. Now, ask yourself, how many people know what BMW sells.
LIMITATIONS ON ACRONYM TRADEMARKS AND ABBREVIATION TRADEMARKS
Unfortunately, acronyms, abbreviations – or even initials – are not automatically granted trademark protection. To qualify for trademark protection, the acronym, abbreviations or initials must not be descriptive and consumers must not be able to recognize them as synonymous with a particular product. Indeed, Examiners at the United States Patent and Trademark Office and the Trademark Trial and Appeal Board (TTAB) have determined (and the United States Courts have upheld) that acronyms, abbreviations or initials must have a meaning that is distinct from the generic descriptive terms they represent. When that condition is met, the acronyms, abbreviations or initials may be identifiable to the trademark’s source. This allows acronyms, abbreviations or initials to be eligible for trademark protection even when the underlying terms or letters are not functioning as trademarks.
IMPORTANT COURT CASES DECIDED AGAINST TRADEMARK PROTECTIONS FOR ACRONYMS, ABREVIATIONS OR INITIALS
Modern Optics, Inc. v. Univis Lens Co.
In 1956, the courts heard the case Modern Optics, Inc. concerning the Applicant’s objective to obtain trademark protection for the use of the letters “CV.” What did “CV” stand for?
As described by the Examiner, “”The mark which the applicant seeks to register comprises a pictorial representation of an eye from which outwardly projecting lines radiate through a lens to and through the wording `Continuvis Lenses’ and the initials `CV’ said initials being shaded block letters much larger than any other lettering used in the mark, and more or less centrally positioned with respect to the mark whereby they form the most prominent part of the mark.” The goods to be covered by the trademark consisted of ophthalmic lens blanks, eyeglasses, and trifocal lenses.”
The crux of the case was the question of whether or not the letters “CV”, were sufficiently descriptive of the goods sold under Section 2(e) of the Lanham Act, Trade-Mark Act of 1946. While the court acknowledged that a mark is descriptive if it is “describes the function or use of the goods to which it is applied”, it was not swayed with the argument that “continuous vision” actually described the function of trifocal lenses.
For our purposes, the key takeaway is the Court’s analysis in determining whether or not initials (acronyms) are “descriptive”. According to the Court, “…It does not follow, however, that all initials of combinations of descriptive words are ipso facto unregistrable. While each case must be decided on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.”
Pre-Paid Legal Trademark Examination
In October of 2014, Pre-Paid Legal Services, Inc. applied for a trademark on the mark, “PPL” in CL 035 for “legal expense plan services, namely, arranging certain legal services covered by a membership contract for a member through provider or referral attorneys; arranging and conducting incentive or reward programs to promote the sale of pre-paid legal expense plans.” The trademark examiner who reviewed the application, however, issued an office action and rejected the application on the grounds that the mark “merely describes a feature, characteristic, or purpose of applicant’s services.” Specifically, the examiner cited the Trademark Manual of Examining Procedure’s section concerning acronym trademarks, §1209.03(h):
A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:
(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording;
(2) the specific wording is merely descriptive of applicant’s services; and
(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s services will recognize it as the equivalent of the merely descriptive wording it represents.
Critically, the generic nature and public-understanding of the acronym is not the dispositive factor in determining whether or not the acronym is descriptive. Instead, the trademark examiner explained “descriptiveness is determined in relation to the services offered. Thus, if applicant’s services feature pre-paid legal plans or are offered in connection with pre-paid legal plans, then consumers would understand that PPL stands for pre-paid legal…a relevant consumer viewing applicant’s mark in connection with the identified services would recognize it as the equivalent of the descriptive wording it represents because it is the subject matter of the services.”
Not ready to yield, Pre-Paid Legal had a rather long and extensive back-and forth of appeals and rejections before the case ultimately made it before the USPTO Trademark Trial and Appeal Board (TTAB) where the ruling came down that the acronym is indeed merely descriptive and therefore an impermissible mark for registration on the USPTO Principal Register.
CONTINUOUS USE, SUBSTANTIAL SALES AND ADVERTISING MAY CORROBORATE A CLAIM TO TRADEMARK PROTECTION OF AN ACRONYM, ABBREVIATION OR INITIALS
A mark can acquire distinctiveness within its market through long-term presence, advertising, and sales when its use is largely exclusive to a particular product or service. In re Thomas Nelson, Inc., the trademark applicant was granted trademark protection for NKJV, which represented the “New King James Version” bibles, since evidence proved substantial association between NKJV and one specific seller of that version of the bible. See In re Thomas Nelson, Inc. 97 USPQ2d 1712, 2011 WL 481341 (TTAB 2011). Initially, the trademark examining attorney refused to register the mark on grounds that the mark is “merely descriptive.” Specifically, the examining attorney submitted evidence from several dictionary websites in addition to the Acronymfinder.com website which purported to demonstrate that NKJV was merely an acronym for NEW KING JAMES VERSION.
The court, however, in tackling the question of whether or not NKJV directly conveys information about bibles to consumers, thus rendering NKJV, descriptive, asserted “If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term indentifies, the term is suggestive rather than merely descriptive.” In re Tennis 12 in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). Ultimately, the court held that the mark was descriptive BUT because the applicant was able to demonstrate that it obtained distinctiveness, the mark was allowed to publish.
TRADEMARK ACRONYMS AND ABREVIATIONS; FINAL THOUGHTS
In order for trademark protection to be extended to include abbreviations, acronyms, and initials, the trademark applicant must prove the letters hold a distinct meaning separate and apart from the underlying words it represents. The caveat is that when an acronym or abbreviation is already established within a particular industry, it is likely that consumers already view the descriptive wording as largely synonymous. In this scenario, the United States Patent and Trademark Office is unlikely to determine that the acronym or abbreviation is protectable.
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