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PSL® Season Is Upon Us

Posted in Advertising, Branding

-Wes Anderson, Attorney

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer to call it.

In the spirit of the season, I sought to see if any zealous trademark applicants had sought to claim ownership over the phrasing “PUMPKIN SPICE” or “PUMPKIN SPICE LATTE.” Sure enough, there are a couple of notable marks – PUMPKIN SPICE CAPPUCCINO (a composite mark disclaiming all of the wording) and a pending application for YOU HAD ME AT PUMPKIN SPICE chief among them.

For its part, Starbucks itself seems to recognize the descriptive (if not generic) nature of the name for its most popular drink, a crucial spark to fall sales. But, it does hold a rather curious registration for PSL. The registration identifies “dairy-based food beverages; soy-based food beverages used as a milk substitute” and “coffee and espresso beverages; beverages made with a base of coffee and/or espresso.”

For its part, the Trademark Office did issue an information request during examination, asking Starbucks to “specify whether the letters ‘PSL’ have any significance in the foods or beverages trade or industry or as applied to the goods described in the application, or if such letters represent a ‘term of art’ within applicant’s industry.” Starbucks answered honestly enough, stating in its response:

The Examining Attorney has requested whether the letters PSL have any significance in the foods or beverages trade or as applied to the goods described in the application, or if such letters represent a “term of art” within Applicant’s industry. Applicant notes that the letters PSL stand for Pumpkin Spiced [sic] Latte.

Generally speaking, acronyms that connote descriptive wording are not registrable. According to the Trademark Manual of Examining Procedure:

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.

So here, Starbucks has made of record evidence that PSL stands for Pumpkin Spice[d] Latte. And there’s replete evidence online of Starbucks creating an association between the acronym and the descriptive wording. But what did the Trademark Office do? Nothing – it approved the application for registration. And come 2020, the registration will no longer be eligible for cancellation on grounds of mere descriptiveness.

Are there PSL lovers at the PTO? Quite possibly. We’ll have to keep our eyes out this fall to see if Starbucks finds any enforcement targets for its (arguably) descriptive acronym.