Abbreviations, Initialisms and Acronyms as Trademarks

Abbreviations, Initialisms and Acronyms as Trademarks

Abbreviations, initialisms, and acronyms may or may not be registrable as trademarks. Whether or not the trademark laws in the U.S will protect them is a decision made by the USTPO examining attorneys, the Trademark Trial and Appeal Board (TTAB), and the courts. For these sorts of trademarks to be registered, the following conditions must be met.

1. The Abbreviation or Acronym Must Not Stand for Words That Are Merely Descriptive.

The wording represented by the abbreviation or acronym must not just describe the features or functions of the product or service. You should try to make it distinctive and indicative of the source or brand of the goods. This will increase the chances of such a mark being registered. For example, in the legal case of Univis Lens Company v. Modern Optics Incorporation in 1956, the mark being defended by the latter was “CV” which stood for “Continuous Vision”. The products that it represented were trifocal lenses for eyeglasses. The court ruled in favor of Modern Optics because it could not be proved that the term continuous vision was a commonly used term for such lenses in the industry. Moreover, it was held that the abbreviations of descriptive words are not always unregistrable. If the words describing the goods were generally not used to do so, it would be fine to use them in a mark.

2. If the Abbreviation or Acronym Does Stand for Descriptive Words or Phrase, the Initials Should Not Be Generally Understood as Representing the Descriptive Phrase.

If the unabbreviated phrase is descriptive, its abbreviation might be registered given that the phrase is not commonly abbreviated. In other words, it must not be commonly known that the abbreviation that is acting as a trademark stands for words descriptive of the goods. To elaborate on this point, some examples have been given below.

In the case of Harco Corp. in 1984,the mark under debate was “CPL” that stood for “Computerized Potential Log”. Although the phrase CPL stood for was descriptive, the evidence that the mark would be seen as merely an abbreviation of the descriptive words was insufficient. The examining attorneys at the USTPO were burdened with the duty of proving that the consumers knew what CPL was an abbreviation for and that CPL and the descriptive phrase it represented were understood to be synonymous by the relevant persons.

In re Sterling Plastic and Rubber Products Inc. v. SBS Products Inc., the subject mark was “SBS”, an abbreviation for “Stuffing Box Sealant”. According to the ruling, the mark was strong and was registrable even though it stood for descriptive words.

In the legal case of Bane-Clene Corporation v. Racine Industries Inc. in 1994, the phrase “Professional Cleaners Association” was found to be non-distinctive and descriptive. However, consumers did not generally recognize the abbreviation “PCA” to be synonymous with the words it stood for. Thus, it qualified as a registrable trademark.

3. If the Mark Fails to Fulfil Any of the Two Requirements Mentioned Above, It Might Be Registered Based on Acquired Distinctiveness.

If the abbreviation or acronym has acquired secondary meaning distinct from the descriptive words it stands for, it can be considered indicative of the source of the goods. In such a case, the mark has acquired distinctiveness that allows it to be registered. This general principle is further clarified by considering the following example.

In the legal case fought by Thomas Nelson Incorporation in 2011, the phrase “New King James Version” was abbreviated to “NKJV”. It was to be used as a trademark for bibles of this specific brand. The unabbreviated phrase was descriptive, and the mark was understood to be its abbreviation. However, it was declared registrable as it had developed secondary meaning, and the consumers associated it with a particular source. The case of Aloe Creme Labs, Inc. v. Aloe 99 Inc. fought in 1975, also proved the same point.

If you have any questions regarding the registration of your trademark, or anything related to trademark prosecution at the USTPO, just hop on live chat and connect with an attorney for a free consultation.