Acronyms as Trademarks

Guest author Jordon Trapnell, currently a second-year law student at Gonzaga, writes this nugget about trademarks embodied in acronyms:

Acronyms are very commonly used in the commercial world, but present a number of complications when it comes to trademark law. First, there would seem to be an increased likelihood of confusion (which inhibits the chances of registration) since the letters comprising an acronym could have any number of different meanings. Still, there is no law that completely prohibits registering an acronym as a trademark.

The USPTO does have a specific rule that affects how it decides if an acronym can qualify as a trademark. The rule states that “an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents” (TMEP 1209.03(h)). The key to understanding how acronyms can be trademarked therefore actually lies in understanding descriptiveness.

Potential trademarks are categorized along a continuum that ranges from distinctive to descriptive. Arbitrary or fanciful marks that are inherently distinctive are generally easiest to register; marks that are only descriptive are very difficult to register. A merely descriptive mark is one that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services it is used in connection with. An example could be a window company trying to trademark the name “Clear Glass Windows.” These marks are refused registration in order to prevent the owner of a mark from suppressing competition and to make sure the public is free to use the language involved. So in the context of the acronym rule, “considered descriptive” means the application would be denied.

Determining whether the wording is merely descriptive is relatively simple compared to determining if relevant purchasers usually perceive the acronym to be synonymous with that wording. In the 2003 case Capital Project Mgmt. Inc. v. IMDISI Inc., the Trademark Trial and Appeals Board upheld the objection and denied registration of the mark “TIA.” It was determined to be synonymous with the descriptive term “time impact analysis.” Time impact analysis is not a term that would be readily recognized by the general public, which shows how the wording “relative purchasers” refers to people in the field being discussed. An acronym “CPL” standing for computerized potential log – a term that appears comparable in descriptiveness to time impact analysis – was allowed registration by the TTAB because there was not enough evidence to suggest that relevant people would perceive it to be only an abbreviation for computerized potential log.

To summarize, there are a few questions that should be asked before filing a trademark application for an acronym. What does the acronym stand for, and does the term(s) directly describe the product or service with which the mark is used in connection? Do those who work in the same field have any familiarity with the term and its acronym? If the answer to both of these questions is yes, trademark registration may not be possible.