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Originally posted 2014-06-09 12:58:31.
By Eliana Rocchi | amdlawgroup.com
There are many acronyms in fashion talk, including VPL (visible panty line), RTW (ready to wear), VBL (visible bra line), and even more: http://www.popsugar.com.au/fashion/Fashion-Acronyms-6901131
… but what about using an acronym as a brand trademark?
An acronym may be eligible for trademark protection. In fact, many famous brands chose to adopt acronyms as their trademarks: think of DKNY*, BCBG*, or LBD*.
If a company wishes to adopt an acronym as a trademark, it must follow all standard trademark rules. Some considerations, though, are specific to acronyms:
The acronym should be actually used to identify the company’s goods or services and must have sufficient distinctiveness in itself. It should be neither merely descriptive or generic in relation to the product. Acronyms might be considered descriptive if either the resulting word or the underlying words are descriptive, even if some or all of the words are replaced by a foreign equivalent and if some or all of the words are misspelled.
For determining whether an acronym is generic depends not on the meaning of the underlying words, but on the meaning of the acronym itself. So, the acronym of a generic phrase might still be considered strong as a trademark if it serves to uniquely identify the company to which it refers. In other words, if the acronym still proves to be sufficiently distinctive even if the underlying words are not, it will make for a strong trademark. For establishing such distinctiveness, the party claiming protection must show that the acronym “has a meaning distinct from the underlying words in the mind of the public.” (Welding Services Inc. v. Forman 509 F.3d at 1359, 11th Cir. 2007, where Welding Services failed to demonstrate the different meaning).
On the other hand, an acronym that consists itself in a generic word or sequence of words would normally be considered generic, but it could still be protected as a trademark if sufficiently distinctive. An example would be a case in which it is constituted an arbitrary mark with no relation to the company’s product.
PUBLIC USE DOCTRINE
Trademark protection for an acronym has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa. In fact, trademark rights do not extend to an acronym of a registered mark or to the extensive version of a registered acronym.
The only way for a company to extend trademark rights to the acronym of its registered mark, even if the company did not use it, is to resort to the “public use doctrine”. Under this doctrine, trademark rights on acronyms, nicknames, or abbreviated versions of a trademark, might rise thanks to the use by the public that refers those abbreviated version to the products of the company (for example the trademark “Coke” for “Coca Cola” was born this way). For an acronym to gain protection this way, there are two requirements: 1. the registered mark it abbreviates must be well-known, and 2. the acronym must add distinctiveness to the registered mark (4th Circuit in the George & Co. v. Imagination Entertainment Ltd. et al., 2009).
The public use doctrine applies to acronyms that abbreviate a trademark, but it does not work the other way around. In other words, it will not extend trademark rights to the extensive version of a registered acronym (for example in the case supra, George & Co. claimed that, even if it abandoned the trademark “Left Center Right” in favor of the acronym “LCR”, the public still used the extensive version. The 4th Circuit rejected the argument because: 1. LCR was not well-known, and 2. the extensive version did not add distinctiveness to LCR).
LIKELIHOOD OF CONFUSION
The use of an acronym together with its extensive version might create confusion and interfere with the customers’ identification of the brand. Therefore, it is important to either choose one univocal trademark or to seek registration for both the acronym and the extensive version independently. This problem arose in the Martahaus v. Video Duplication Services Inc. case, for example, where the court eventually decided that the acronym VDS was protectable even if the defendant company had used its extensive name together with the acronym. The decision was founded on the evidence that the public was not confused by the use of the two different trademarks, but identified the company with its acronym VDS.
A company that seeks trademark protection for an acronym should abide by the standard trademark requirements and consider the strength of the word that the acronym constitutes. A company should also be mindful of how the public perceives and uses its trademarks and, even better, seek federal registration for both the acronym and its extensive version.
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