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UPS: Word, Acronym or Initialism Trademark?

Posted in Advertising, Articles, Branding, Infringement, Marketing, Television, Trademarks, USPTO

Life is full of ups and downs. The world of trademarks often tends to mirror life. Yet, for the time being, the USPTO currently recognizes only one brand and mark as living solely on ups:

United_Parcel_Service_logo_2014_svgAs it turns out, those three letters form a pretty powerful brand and trademark. Although there may have been two previous federal registrations for the same letter-string, one covering socks and another covering “retail marketing programs for products of others,” those have long since expired, and the USPTO database now is surprisingly clear of any others, to the point where even goods like specialty metal pipes and carpet and rugs can’t find a path to registration.

 

United_Parcel_Service_logo_(1961–2003)

As a young child in the late sixties I recall a distinct curiosity about the brown delivery trucks called “ups” — as opposed to “downs,” I figured. Little did I know that “ups” should have been pronounced “u-p-s” not “ups,” so I can picture my imagination running wild, thinking the letters suggested the thrill of receiving packages from brown delivery vans (long before hearing about what Brown could do for me), then one day, my imagination probably was shattered to learn that UPS actually just meant United Parcel Service:

UnitedParcelServiceToyTruck

At the time, with UPS, I saw a word, and I probably didn’t appreciate what an acronym or initialism was, and I’m certain I didn’t appreciate the difference between them. Even more, I’m certain I knew nothing about the TMEP (initialism for Trademark Manual of Examining Procedure, not an acronym), explaining why a trademark savvy brand owner might not want to link its acronym or initialism trademark to the words it is derived from:

“As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents. 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 goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents. Thus, without additional evidence, an applicant’s proprietary use of an acronym is not sufficient to establish that the acronym is readily understood to be substantially synonymous with the descriptive wording it represents.”

Does that help explain why the words United Parcel Service have either vanished or become far less conspicuous on those busy brown vans? From a trademark perspective, probably not, after all, United Parcel Service is not a merely descriptive phrase, as it was federally-registered without evidence of aquired distinctiveness. Any marketing types know or want to hazard a guess as to why the linkage is either gone or more subtle now?

UPSTruck

My sense, from a trademark perspective, is that ambiguity as to precise meaning and pronunciation probably help to broaden the scope of trademark rights. Assuming distinctiveness exists, to the extent all three — word, acronym, and initialism — plausibly apply to UPS, it may help explain, in part, why more marks of others might be snared in the trademark owner’s likelihood of confusion net.

So, if you’re planning on creating a brand based on the letter-string UPS as an acronym or initialism derived from a company name or some other phrase, it’s best to first confirm the acronym isn’t descriptive or generic, and then show UPS in a graphically distinct manner while keeping it closely linked to the fully spelled out words, as this one did:

UnitedPropertiesSouthwestIn case you’re wondering what inspired this delivery of information to our loyal readers today, it hasn’t escaped me that UPS is now apparently linking the meaning of UPS to United Problem Solvers in television advertisements, so some digging seemed appropriate. Perhaps having multiple possible meanings to UPS encouraged by the trademark owner is yet one more way to broaden the scope of rights in UPS. What do you think?

As always, stay tuned, as it turns out, UPS’ United Problem Solvers federal trademark applications may be refused registration by the USPTO (another initialism, not acronym, for United States Patent and Trademark Office) based on another’s prior pending trademark application for Problem Solvers in connection with highly similar services: “Freight logistics management; Transportation logistics services, namely, arranging the transportation of goods for others; Transportation logistics services, namely, planning and scheduling shipments for users of transportation services.”

Anyway, it looks like Big Brown is solving this problem by opposing registration of Problem Solvers, alleging likelihood of confusion with its prior registration for Packaging Problem Solvers.