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B.O.A.T.: Beware of Acronym Trademarks

Acronym trademarks can seem like an attractive and simple solution to a branding problem. However, a recent decision by the United States Patent and Trademark Office (USPTO) illustrates the dangers of choosing an acronym or abbreviation as a trademark.

The Pre-Paid Legal Trademark Case

Pre-Paid Legal Services, Inc. provides…you guessed it, pre-paid legal services. They applied to register PPL as a trademark 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.”

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The USPTO Examining Attorney who was assigned to review the application rejected it on the grounds that PPL “merely describes a feature, characteristic, or purpose of applicant’s services.” She cited the Trademark Manual of Examining Procedure’s relevant section on acronym trademarks, §1209.03(h):

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:

(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording

(2) the specific wording is merely descriptive of applicant’s services; and

(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s services will recognize it as the equivalent of the merely descriptive wording it represents.

A natural response might be that someone encountering the term PPL wouldn’t necessarily leap to the conclusion that it was related to pre-paid legal services. PPL isn’t a common term like, say, CPR.

However, the Examining Attorney noted that: “descriptiveness is determined in relation to the services offered. Thus, if applicant’s services feature pre-paid legal plans or are offered in connection with pre-paid legal plans, then consumers would understand that PPL stands for pre-paid legal…a relevant consumer viewing applicant’s mark in connection with the identified services would recognize it as the equivalent of the descriptive wording it represents because it is the subject matter of the services.”

The fact that PPL is not a common acronym was not relevant in this case, as the TTAB had to consider the applicant’s proposed trademark in the context in which consumers would encounter it.

The applicant and the Examining Attorney went back and forth, and eventually the applicant appealed the ruling to the USPTO’s Trademark Trial and Appeal Board (TTAB.)

The TTAB considered the various factors and determined that the mark is, in fact, “merely descriptive,” and thus not eligible for placement on the USPTO’s Principal Register of trademarks. You can read the TTAB ruling here.

The Takeaway – When is an Acronym Trademark OK?

Think carefully about whether an acronym or abbreviation will work as a trademark for your business.

An acronym may be able to function as a trademark if it’s the shorter version of a phrase that qualifies for trademark protection (think “CPK” for “California Pizza Kitchen”). But if it’s the shorter version of a generic or descriptive term, then this case demonstrates the difficulty you will have in obtaining trademark protection.

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