Can you trademark an acronym?
Acronyms are everywhere. They are like code language for those in the know. Even in the intellectual property world, our vernacular is filled with initialism. It can sound rather comical. “Yeah, my IP attorney said we got an OA with 101 and 103 rejections even though we filed PPH based on our PCT.” With brands that contain multiple words, the natural progression is to move towards an acronym. So can you register an acronym as a trademark?
Yes, acronyms can be registered as trademarks. As with any other mark, an acronym must meet certain conditions to be trademarkable. One common issue with acronyms is the risk of a merely descriptive rejection.
What is a merely descriptive acronym?
In any industry, certain abbreviations may be well known to stand for terms that describe a property or characteristic of the products in that sector. If an applicant attempted to trademark an acronym that would be commonly known to purchasers as referring to a feature of a particular product, then you may encounter a refusal based on the mark being merely descriptive.
It seems logical. If the words spelled out would be merely descriptive of the product, why shouldn’t a well known acronym of such words also be considered merely descriptive?
So how do you argue against such a refusal?
How to argue against refusal of acronym trademark
Start with the acronym itself. Is it really known as substantially synonymous with the wording found by the trademark examining attorney? What if the acronym has other meanings? For example, the abbreviation equally represent other wording that has nothing to do your goods or services.
Is the acronym combined with other terms? If so, the entire combination might be unique. Perhaps there’s an argument that the combination of the acronym with other terms gives the entirety of the mark a distinctive non-descriptive impression.
What evidence of descriptiveness has the trademark examining attorney presented? Often, an Office Action will contain merely a printout of a definition. Is a definition of an acronym sufficient evidence to support a merely descriptive refusal? Depending on the particular circumstances of each case, you might be able to take advantage of solid arguments against the sufficiency of the evidence.
What if you weren’t even trying to register an acronym?
This happens occasionally. For example, suppose a portion of your mark somehow contains an abbreviation that you didn’t even know. As a result, the examining attorney rejects your mark on the basis of it containing a merely descriptive acronym. In response, you exclaim, “What acronym!” In fact, you might not even be aware of the abbreviation or its meaning.
Don’t fret. You have options, and we can help.
Need to trademark an acronym?
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