A frequently asked question in our practice is, can an acronym register at the United States Patent & Trademark Office (USPTO) and be protected as a federal trademark? The answer is it depends on the circumstances, but under the right circumstances acronyms as well as abbreviations can function as trademarks. See our web page entitled, Can Abbreviations And Acronyms Be protected Under U.S. Trademark Law, for a summary of the treatment of abbreviations, acronyms, and initialism by the USPTO. A recent case from the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) supports the use of acronyms as trademarks as long as they satisfy the standard enunciated in the case of Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956).
See In re Life Cycle Engineering, Inc. Serial No. 85692710 (August 4, 2014) [not precedential], where the Board reversed a refusal of an acronym based on merely descriptiveness. The applicant filed for registration of the acronym RBAM for business management and consultation in the field of engineering and maintenance of industrial, military, and marine equipment in addition to some other related services. The applicant filed a request for reconsideration after the final refusal but that was denied and this appeal followed.
The merely descriptiveness refusal is based on Section 2(e)(1) of the Trademark Act. This section mandates refusal on the Principal Register if the mark immediately conveys information regarding a function, feature, purpose, characteristic, quality, ingredient or use of the goods or services. This determination is a finding of fact and must be based on substantial evidence. An acronym is merely descriptive of the goods and services only if it has become so generally understood by the relevant consumers that it is representative of the descriptive words and it is accepted as substantially synonymous therewith. In other words, a consumer or user of the services when viewing the acronym in connection with the services would recognize it as an abbreviation for the descriptive wording.
The Acronym RBAM stands for the phrase “risk-based asset management”. The applicant in this case used the phrase, repeatedly in the text of his advertising in a way that meant to imply its commonly understood meaning. In addition, the Examining Attorney introduced into evidence third-party use for the phrase “risk-based asset management” to describe similar processes. However, use of the descriptive phrase by third parties and by the applicant is not a bar to registration. In fact, here it did not present an obstacle to registration. Although the Board concludes that the phrase “risk-based asset management” is descriptive of a feature of the applicant’s services that is only part of the test for an acronym.
The Board then considered the acronym RBAM when viewed by relevant purchasers and whether it would be generally understood to represent the underlying descriptive words “risk-based management” and accepted as substantially synonymous therewith. The Examining Attorney presented examples of use by third-parties, approximately 8-10 examples were submitted in the various office actions. The Board noted that the number of examples was objectively small. The Board also noted that with just one exception, the examples only showed the acronym used with the descriptive wording and did not show the acronym alone in use.
Based on this evidence, the Board concluded that since the third-party use of the acronym was accompanied by the descriptive wording, the authors must not have expected the readers to understand the acronym without the explanation of the descriptive wording. This is a significant finding. The Board concluded that there was doubt regarding how relevant consumers perceived the the term RBAM and doubt must be weighed in favor of the applicant. In the end, the Board did not find the acronym RBAM to be generally understood by the relevant consumers to mean “risk-based asset management” to the extent that it was synonymous with the descriptive language. If you have questions about use of an abbreviation or acronym as a trademark, please feel free to contact our office for a courtesy consultation.