-Martha Engel, Attorney
Today’s offices treat acronyms like linguistic yoga (TOTALLY).
ICYMI, they’re popular also in texts, tweets, and other “thumb-talking” activities. LOL. SMH.
Legislators are having fun with them lately too, for example the Personal Rights in Names Can Endure Act (PRINCE Act), the Uniting and Strengthening America by Providing Appropriate Tools Required to Intercept and Obstruct Terrorism Act (USA PATRIOT Act), the Brewers Excise and Economic Relief Act (BEER Act), the Jumpstarting Our Business Sector Act (JOBS Act), the Value Our Time Elections Act (VOTE Act), and last but not least the Accountability and Congressional Responsibility On Naming Your Motions Act (ACRONYM Act). If you find these as amusing as I do, check out more of them in this article.
Acronyms are often abbreviations formed from the first initials of the words of a descriptive phrase. Nevertheless, acronyms may be registerable unless (1) “the wording it stands for is merely descriptive of the goods or services” and (2) it “is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents.” TMEP 1209.03. An acronym will be considered “substantially synonymous” if it is an acronym for specific wording, the specific wording is merely descriptive of applicant’s goods or services, and the relevant consumer viewing the mark in connection with those goods or services will recognize it as an acronym of the descriptive wording. Id. So two important considerations that affect registerability of an acronym are the listing of the goods or services and the perception of the mark created by product packaging and/or marketing material relative to these goods or services.
A recent TTAB decision illustrates this concern. The Trademark Trial and Appeal Board recently affirmed a refusal of CARS for “Computer software used for capturing road data and determining safe curve speeds for automobiles; Computer hardware used for capturing telemetry and road data” and “Software as a service featuring software for capturing road data and determining safe curve speeds for automobiles” on the basis that the mark is merely descriptive of the listed goods and services. The specimen filed with this use-based application showed CARS as being an acronym for “Curve Advisory Reporting System.” Given the use of the synonymous “automobiles” in this goods and services description, as well as the use on the specimen, the examiner found the mark to be descriptive and the Board agreed. Perhaps if the application did not include “automobiles” in the description and the example of use provided with the application did not so directly tie the meaning of the acronym to the listed goods and services, this may have been allowed.
With the popularity of acronyms, marketing teams working together with their legal friends can develop a suitable strategy for the application for the mark and the mark’s use that can help guide an acronym towards federal protection.