Can I Trademark an Acronym?

In order to trademark an acronym, your company must use the acronym to identify its goods or services. The acronym mark must be used in connection with the applicant's business activities, establishing a clear connection with applicants and its products or services. The acronym must be distinct to qualify; a generic acronym will likely be rejected by the United States Patent and Trademark Office.

An infamous case of a company trying to trademark an acronym is Pre-Paid Legal Services, Inc., which sought to register a mark for the acronym "PPL" in 2017. The mark was to cover "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." However, the mark was denied by the Examining Attorney on the grounds that the mark was a descriptive term and merely descriptive of the services. The case went back and forth through numerous appeals and rejections, with the Examining Attorney finding more evidence that other pre-paid legal plan providers used "PPL" on their websites as well as other references on the internet of "PPL" meaning "Pre-Paid Legal". The trademark applicant faced challenges due to the impermissible mark and the likelihood of consumer confusion. This highlights the importance of understanding the subject matter as a trademark owner and preparing a robust case when dealing with a trademark examiner when trying to protect a mark in connection with a business. In some instances, pursuing trademark rights may involve legal action to defend the mark's validity.

Acronyms can fall into different categories based on their nature. A descriptive acronym directly describes the goods or services, while a suggestive mark requires some imagination from the relevant consumer to connect it with the product. A generic term, however, cannot be trademarked. The distinct meaning of the acronym plays a crucial role in its acceptance, as it must be a distinctive mark.

Examples of Acronym Trademarks

Businesses that you've likely heard of many times are great examples of trademarked acronyms. Let's take a look at a few examples.

CVS

With locations across the country, it's likely you've seen a CVS. The Wikipedia page gives a great summary: "CVS sells prescription drugs and a wide assortment of general merchandise, including over-the-counter drugs, beauty products and cosmetics, film and photo finishing services, seasonal merchandise, greeting cards, and convenience foods through their CVS Pharmacy and Longs Drugs retail stores and online through CVS.com. It also provides healthcare services through its more than 1,100 MinuteClinic medical clinics as well as their Diabetes Care Centers. Most of these clinics are located within CVS stores." (Source) CVS has registered a series of marks to protect their brand, from "CVS Health" to "CVS Specialty." But the name, with all its current forms, started out as Customers Value Service. CVS also implements reward programs and membership contracts to enhance customer loyalty.

DHL

From their Wikipedia page, "Founded in the United States in 1969 to deliver documents between San Francisco and Honolulu; the company expanded its service throughout the world by the late 1970s. The company was primarily interested in offshore and inter-continental deliveries, but the success of FedEx prompted their own intra-US expansion starting in 1983." (Source)

Before it was a shipping company known around the globe, DHL started out as the collaboration between Larry Hillblom and his friends Adrian Dalsey and Robert Lynn. When it came time to name the company, they simply looked to their last names. The initial letters of their last names formed the acronym DHL, which now enjoys robust trademark protection and has become an acronym in connection with DHL's goods and services.

In some cases, an acronym may gain secondary meaning, where consumers associate the acronym with a specific source over time, enhancing its trademark protection. The scope of protection for such trademarks can be extensive, depending on their established use and recognition.

Other Common Trademark Topics for Business Owners

• Branding for Freelancers
• Trademarking a Logo
• Requirements for the Amazon Brand Registry
• Trademarks vs Service Marks - What's the Difference?
• Trademarks and Domain Names
• Can Your Trademark a DBA?
• Can You Trademark Packaging
• Can You Trademark a Business Model
• Can You Trademark a Company Name
• Can You Trademark a QR Code
• Can You Trademark a Business Concept
• Can You Trademark a Product

Ready to Register Your Trademark?

Understanding the requirements for trademark registration is crucial in the trademark registration process. When you are considering trademarking an acronym, it is important to check if there is an outstanding trademark on a similar acronym. A comprehensive trademark search can help identify potential conflicts and avoid confusion among consumers. If there is a similar trademark, the United States Patent and Trademark Office will likely reject your application. Receiving an Office Action may prompt arguments or further evidence to support your trademark application. Sufficient evidence is required to prove the distinct association of the acronym with your brand. If you trademark an acronym, it will not prevent conversational use as trademarks protect a company from imitation by competitors.

Trademark attorneys can assist in navigating the complexities of trademark law and the trademark application process, ensuring that you have a valid trademark that meets all legal protections. If you would like to evaluate and review your acronym trademarking options, contact our associates today. Our experts can provide legal advice, guide you through the application process, help you understand the implications of intellectual property law, and assist in building a strong trademark portfolio. Consulting an intellectual property attorney can provide the necessary guidance to secure intellectual property protection for your brand.

If you would like to evaluate and review your acronym trademarking options, contact our associates today.

The Process for Securing a Mark