Trademarking An Acronym – What Do I Need To Know?

Is trademarking an acronym possible? Sometimes, yes. However, there are 3 questions you need to answer if you are considering trademarking an acronym: 1) Does your acronym stand for specific words? 2) Are those specific words generic or merely descriptive of your business’ products and/or services, which you will identify in your trademark application? 3) Will the public easily recognize your acronym as the descriptive terms it stands for? If the answer to these questions is yes, you will not be able to register your acronym on the Principal Register of the U.S. Patent and Trademark Office (USPTO). The first two questions are often easy to answer; and usually the answer is yes. The third question, however – whether consumers will easily recognize the subject acronym as the merely descriptive words it represents – is usually a bit more difficult to answer.

Trademarking an Acronym – Answering the Third Question

In a cancellation or opposition proceeding, the opposing party may rely on the fact that the subject trademark is merely descriptive, which could result in the mark’s cancellation, and would only need to provide evidence that they are in the same industry as the registrant or applicant. Typically, the USPTO introduces definitions for acronyms showing the underlying wording, as well as evidence that third parties are using the same acronym for the same underlying wording or to represent a term that identifies the same products and/or services, to prove that the answer to the third question is yes. On May 11, 2017, an applicant attempted to register the acronym “PPL.” The UPSTO refused the mark, and the Trademark Trial and Appeal Board affirmed the refusal because “PPL” is a well-recognized acronym for “pre-paid legal”.

As mentioned above, however, trademarking an acronym is sometimes possible. In 2012, the USPTO accepted the registration of the mark “CMS” for wine. The mark’s letters stood for “Cabernet,” “Merlot,” and “Syrah.” In other words, the acronym stood for words that described the product. This means the answer to the first two questions of the 3-question test was yes. However, the answer to the third question was no. The USPTO did not consider “CMS” to be a descriptive mark because people would not easily be able to tell what the acronym stands for.

In addition, the petitioner’s own evidence helped prove this by showing that there are many grape varietals whose names begin with those letters. According to the board, some people could perhaps figure out that the letters “CMS” stood for the above-mentioned ingredients but only after a bit of thinking, which meant the mark was a suggestive trademark. In other words, the petitioner was not able to demonstrate that the acronym was merely descriptive of the applicant’s product, and the applicant was able to register the mark.

Trademarking an acronym is not always possible. If you are looking to trademark an acronym, we can help you determine whether it would pass the 3-question test. If it does not, we can help you create a new mark that does. Once we are certain you have a mark that is suggestive and, therefore, strong enough to be on the Principal Register, we will help you apply for trademark registration with the USPTO and represent you should anyone file an opposition against your application. We will help you build your brand and protect it once we have built it. When it comes to intellectual property protection, Jurado & Farshchian, P.L. is among the best Florida law firms you can find. Call us at (305) 921-0440 or tell us about your case via email: [email protected].