Can an acronym derived from a generic phrase be protected as a trademark? In the United States, the answer is yes, it can be, but only if the acronym has developed a distinct meaning, separate and apart from the underlying generic phrase. That this protection exists is helpful for many companies, which often select generic terms as the names of their businesses. They find that it is difficult to protect the business name as a trademark, so they look instead to develop a protectable brand in the company name’s acronym.
Acronyms of Generic Terms
Whether an acronym can be protected is particularly difficult if it is an abbreviation of a nonprotectable term, such as a generic phrase. This struggle is something that companies have dealt with in U.S. courts and before the U.S. Patent and Trademark Office for years. To resolve the question, courts typically will look at whether the acronym—even if it is an abbreviation of a generic term—has a meaning that is distinct or separate from the underlying generic words. In other words, can the acronym serve to identify a unique source, even if the underlying term does not?
A recent case in the U.S. Court of Appeals for the Eleventh Circuit, Welding Services Inc. v. Forman, illustrates the nature of this problem. 509 F.3d 1351 (11th Cir. 2007). In that case, the court analyzed whether an acronym for a generic term could be protected. It recognized that while in some instances acronyms for generic terms could be protected, on the facts before it, Welding Services had failed to meet its burden. The court cited cases from the Seventh and Eighth Circuits (G. Heilman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir. 1989) and Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631 (8th Cir. 1984)), in which those courts had held that acronyms for generic terms could be protected. However, even in the earlier cases on which the Eleventh Circuit relied, acronyms were not always found to be protectable. For example, LA was found not to be a protectable mark, as it had not developed—and could never develop—a separate meaning from the underlying term for which it stood, namely, “low alcohol,” for low-alcohol beer. G. Heilman, 873 F.2d at 992.
Similarly, in a more recent case, the U.S. Court of Appeals for the Second Circuit found that based on the evidence provided during the case, PM was commonly used to describe a time of day and was often used in connection with painkillers. Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1002 (2d Cir. 1992). Thus, because PM was a descriptive term, in order for it to be protectable, the plaintiff (the manufacturer of EXCEDRIN PM) would need to establish that it had developed a secondary meaning in PM in order to stop the defendant’s use of the term in connection with its painkiller (the product TYLENOL PM). The court found that the plaintiff had not established such secondary meaning, and thus the term was found not protectable.
Establishing Meaning Apart from the Underlying Term
In the Welding Services case, at issue was whether WTI, as used in the welding industry, was likely to cause confusion with the earlier-used acronym WSI. The court held that the acronym would be protectable as a trademark only if “the party claiming protection for such an abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public.” Welding Services, 509 F.3d at 1359. The court found that Welding Services had not met its burden and had not shown that WSI had a meaning distinct from the underlying generic term. Id. at 1360. As part of the record analyzed by the court, Welding Services alleged that it had used WSI for nine years before the defendant began use of WTI, had spent US $5 million advertising its mark and had earned almost $1 billion in revenue. The Eleventh Circuit, however, did not find this evidence persuasive to show that Welding Services had established that WSI had meaning separate and apart from the underlying term. In particular, it noted that the company had failed to establish that any of that money was spent advertising WSI apart from the name “Welding Services Inc.” It found troublesome the fact that the acronym WSI was always used in connection with the generic term. As a result, the court concluded, it was unlikely that the use of WSI “would give rise to a meaning distinct from” the generic words. Id.
Perhaps if Welding Services had submitted more evidence demonstrating that the marketplace recognized it as WSI—and thus the term was serving as an indicator of source, not merely as an abbreviation of a generic term—the outcome may have been different. Indeed, in a similar case, Martahaus v. Video Duplication Services Inc., the court concluded that VDS was protectable even though the defendant company used the full name Video Duplication Services in conjunction with the acronym VDS on its materials. 3 F.3d 417, 421 (Fed. Cir. 1993). The court looked at how the public viewed the term, and noted that the plaintiff had submitted evidence that the public referred to the company as VDS. Unlike in the Welding Services case, the court in Martahaus was not persuaded by the defendant’s argument that VDS had been used in connection with the underlying term.
Entities that wish to protect acronyms of generic terms as trademarks may be able to do so, provided they take care to develop in such acronyms a distinct meaning, separate and apart from the underlying term. Even if care is taken to use the term independently of the underlying term, it goes without saying that if the acronym is already generally recognized and widely used in a particular industry (i.e., it is itself viewed as a generic term), it is not likely that a court will find the acronym to be a protectable mark.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.