Can Abbreviations and Acronyms Be Protected Under U.S Trademark Law?
Under certain circumstances abbreviations, acronyms, or initialism can be protected as trademarks. As a general rule, an acronym or an abbreviation cannot be considered descriptive unless the wording it represents is merely descriptive of the goods or services, and the acronym or abbreviation is immediately understood by relevant consumers to be substantially synonymous with the merely descriptive wording it stands for. See Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (C.C.P.A. 1956). The subject trademark in Modern Optics was "CV" representing the words "continuous vision" and the goods were trifocal eyeglass lens. The CCPA held that CV was not itself descriptive for lenses because there was insufficient evidence that it was a generally recognized term for multifocal lens. The Court further held that "it does not follow, however, that all initials of combinations of descriptive words are ipso facto unregistrable". Id. at 506.
Courts, United States Patent & Trademark Office ("USPTO") Examiners, and the Trademark Trial and Appeal Board (the "Board") will determine if an acronym, abbreviation, or initialism can be protected as a trademark by examining whether there is a meaning that is distinct or separate from the underlying generic or descriptive term it represents. Therefore, it is possible that the acronym, abbreviation or initialism may be able to serve as a source identifier, even if the underlying words or term does not function as a trademark.
See In re Harco Corp., 220 USPQ 1075 (TTAB 1984), another case that has been influential in developing a body of law in this area. In this case, the Board held that the subject mark "CPL" (standing for computerized potential log) was arbitrary even though the underlying phrase was descriptive. The Court held that the evidence was not convincing that that persons coming into contact with the mark CPL would perceive it, as no more than an abbreviation for the underlying phase. The Board in Harco placed the burden of proof directly on the Examining Attorney to demonstrate that not only did consumers recognize what CPL stood for, but also to show it was perceived to be substantially synonymous with the words it represents.
There have been other cases finding that an acronym or an abbreviation was protectable as a trademark, see Racine Indus. Inc. v. Bane-Clene Corp., 35 USPQ2d 1832 (TTAB 1994) where it was held that although "Professional Cleaners Association" is descriptive or generic, PCA is not understood by the relevant consumers to be synonymous therewith. There was also the case of Sbs Products Inc. v. Sterling Plastic and Rubber Products Inc., 8 USPQ2d 1147 TTAB (1988), where it was held that the mark SBS was not weak even though it was derived from the words "stuffing box sealant".
Acronyms that are descriptive can also acquire distinctiveness through continuous, extensive and substantially exclusive use. See Aloe Creme Labs, Inc. v. Aloe 99 Inc., 188 USPQ 316 (TTAB 1975); See also In re Thomas Nelson, Inc. 97 USPQ2d 1712, 2011 WL 481341 (TTAB 2011). In the latter case, it was determined that the mark NKJV was merely descriptive of applicant's "New King James Version" bibles since the initials NKJV were used as an abbreviation. However, the evidence showed that the mark acquired distinctiveness over time through continuous use and substantial sales and advertising expenditures.
Entities wishing to protect abbreviations, acronyms, and intialism may succeed in doing so if they undertake efforts to develop a distinct meaning in the mark separate and apart from the underlying words it represents. However, if the acronym or abbreviation is already widely used in a particular industry, then it is likely a consumer will view it to be substantially synonymous with the descriptive wording it represents and it would be unlikely that a court would find the acronym or abbreviation to be protectable under those circumstances. If you have a question regarding a trademark or the trademark registration process, please feel free to contact our office for a courtesy consultation.