Many clients inquire about whether an acronym or an abbreviation can function as a trademark. The answer to this inquiry will depend on several factors. The first question is does the acronym or abbreviation stand for specific wording. If it does, is the specific underlying wording merely descriptive of the services or goods identified in the trademark application? If it is, will the relevant purchasers recognize the acronym or abbreviation as the merely descriptive underlying wording it represents. If the answer to all three questions is yes, then it is probable that the Acronym or abbreviation will be found to be merely descriptive of the goods or services. Merely descriptive marks will be refused on the Principal Register of the United States Patent and Trademark Office (“USPTO”). For more on this topic see our firm page entitled, When Will Acronyms Be Considered Merely Descriptive?
The issue of whether an acronym is merely descriptive or not may arise in an Office Action if the Examining Attorney refused the application on this basis, or it may arise in a proceeding before the Trademark Trial and Appeal Board (the “Board”). An opposition or cancellation proceeding may cite merely descriptive grounds as the basis to oppose or cancel the mark. To have standing to bring such a proceeding, the Opposer or Petitioner would only need to prove that they are in the same business as the applicant or registrant and are competitors. Often, the answers to the first two questions are an easy yes, and cannot be disputed. However, the difficult inquiry is whether the relevant consumers will readily recognize the acronym as the descriptive underlying wording. In other words, the purchasers have to immediately understand upon seeing the mark with the goods or services, that the mark/acronym stands for the underlying phrase, and that it is substantially synonymous for the words it represents.
Examining Attorneys will introduce definitions for the acronym that show the underlying term, in an effort to prove the third element of the test is satisfied. In addition, Examiners will introduce evidence that third parties are also using the acronym in conjunction with the underlying phrase or to represent the underlying term for the same goods or services. See In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential], where the applicant filed for the mark PPL for “business administration of legal expense plan services, namely, arranging certain legal services covered by a membership contract for a member through a provider or referral third-party attorneys; arranging and conducting incentive or reward programs to promote the sale of pre-paid legal expense plans”, and the mark was refused. The Board affirmed the refusal, finding the mark PPL merely descriptive of the Applicant’s services since it was a well-recognized acronym for “pre-paid legal”. One obstacle in this case was that the applicant used the underlying phrase in its identification of services in the trademark application.
To see a contrary finding by the Board, see Baroness Small Estates, Inc. v. American Wine Trade Inc., 104 USPQ2d 1224 (TTAB 2012) [precedential], where the acronym CMS registered for wines. Applicant’s mark CMS was derived based on the first letters of the grape varietals contained in the wine, cabernet, merlot, and syrah (all ingredients of the wine). Thus, the underlying terms are descriptive of the goods. The first two prongs of the test were met.
But CMS cannot be considered merely descriptive of the wine unless, relevant consumers would immediately understand when encountering the wine with the branding that CMS stands for the underlying words (in other words, CMS has to be a recognized abbreviation for cabernet, merlot, and syrah). See Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956). Petitioner’s own evidence showed that there were several varietals beginning with the letters “c”, “m”, and “s”. The Board noted that perhaps some consumers could figure out that the mark was based on the three noted ingredients, but this would require some thought, and that is the essence of a suggestive mark. Therefore, the petitioner failed to prove that CMS was merely descriptive of wine and the mark registered. If you have questions regarding trademarks and acronyms or abbreviations, please feel free to contact the firm for a courtesy consultation.