When Will Acronyms Be Considered Merely Descriptive?
Entrepreneurs and business owners are often attracted to acronyms for use in branding programs. Under certain circumstances, acronyms can acquire federal trademark protection through registration at the United States Patent and Trademark Office ("USPTO"). For general information concerning acronyms and branding, see our webpage entitled, Can Abbreviations And Acronyms Be Protected Under U.S. Trademark Law?
A recent case decided by the Trademark Trial and Appeal Board held that an acronym is merely descriptive of the applied goods or services if: (1) the abbreviation or acronym is for specific wording; (2) the specific wording is merely descriptive of the goods or services identified in the trademark application, and (3) if relevant consumers will recognize the acronym as the underlying merely descriptive wording it represents. All three elements must be present for a finding of merely descriptiveness. See In re Pre-Paid Legal Services, Inc. Serial No. 86423483 (May 11, 2017) [not precedential]. In this case, the applicant applied to register 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."
The Examining Attorney refused the application on the grounds that the mark was merely descriptive of the services. The applicant appealed the decision. The test for determining if a mark is merely descriptive of the goods or services is to ask the question, upon hearing the mark and knowing what the goods and services are, is there an immediate idea conveyed to the consumer regarding a feature, function, purpose, characteristic, quality, ingredient or use of the goods or services. If the answer to this question is yes, then the mark is merely descriptive.
Whether a term has other meanings in a different context is not controlling. However, if a consumer would need to use their imagination, thought, and perception to ascertain the nature of the goods or services than the answer is the mark is not merely descriptive, but most likely suggestive. Suggestive marks are permitted to register on the Principal Register of the USPTO. It is common for the Examiner to argue a mark is merely descriptive while the applicant argues the mark is suggestive. One way to demonstrate that a mark is suggestive is to show incongruity. For example the mark SNO RAKE was held not to be merely descriptive of a snow removal tool.
Focusing on the case at bar, how did the Examining Attorney build his case? First the Examiner asserted that the mark PPL was an acronym for "pre-paid legal" and pre-paid legal describes a feature of applicant's services. The Examining Attorney submitted evidence from AcronymFinder.com, AllAcronyms.com, and the FreeDictionary.com showing that the term PPL is an acronym for "pre-paid legal". In addition, there was evidence introduced into the record for a website offering a pre-paid legal provider law firm and a website referencing EMMACAL PPL (a pre-paid legal plan designed to protect the rights of medical marijuana patients in California), along with several other references on the Internet to PPL meaning "pre-paid legal". Moreover, the applicant in its identification of goods refers to promoting the sale of "pre-paid legal" expense plans. Once the underlying phrase is used in the identification of services, it is difficult to argue that consumers will not view the acronym (PPL) as referring to the underlying phrase (pre-paid legal).
The Board agreed with the Examining Attorney and affirmed the refusal to register the trademark PPL. In this case the applicant filed the application based on intent to use the mark in commerce in the future. However if a mark, albeit a merely descriptive acronym, was in use in commerce for over five years it could possibly register on the Principal Register based on acquiring distinctiveness. In other words, abbreviations or acronyms can acquire secondary meaning through continuous, extensive, and exclusive use. If you questions regarding merely descriptive refusals or other questions pertaining to trademarks, please feel free to contact our office for a courtesy consultation.