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Trademark Abbreviations & The Public Use Doctrine

August 18, 2010 by
Filed under: Business, law, trademark, Trademark Articles 

Does trademark registration protect the nickname of the registered mark?  For example, if someone owned the mark PEANUT BUTTER & JELLY would the abbreviation PBJ or PB&J be protected?  Under the public use doctrine, abbreviations or nicknames used by the public can give rise to protectable trademark rights.  Nat’l Cable Television Ass’n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). That is, the terms “Coke”, “BUD, and “MAC” are protected under the respective registrations for Coca-Cola, Budweiser, and Macintosh Computers.

Under certain conditions, the public use doctrine will extend trademark rights to abbreviated or shortened version of a registered mark.  In the 2009 case of George & Co. v. Imagination Entertainment Ltd. et al., the Plaintiff sought to apply the public use doctrine in the reverse and use the doctrine to extend rights to the elongated word based on the registered abbreviation. 575 F.3d 383 (4th Cir. 2009).  The Plaintiff owned a trademark registration for the abbreviation LCR for a dice game, which stands for “Left Center Right.”  Id. at 390.  The Plaintiff filed suit claiming that the Defendant’s mark, LEFT CENTER RIGHT, was infringing upon its LCR mark. Id. at 392.

The Plaintiff claimed that the public use doctrine expanded trademark protection of the registered LCR mark to cover the mark’s elongated form, namely “LEFT CENTER RIGHT.” Id. at 403.

The Fourth Circuit disagreed with the Plaintiff, ruling that the public use doctrine should be narrowly construed to apply only where: (1) the formal mark that is the object the public nickname is well-known; and (2) the nickname “adds distinctiveness” to the formal mark.  And, that ruling is interpreted as finding that the public use doctrine only applies when the public abbreviates or nicknames a mark, not the other way around.  Id.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, the public use doctrine will not expand the scope of protection of these shorter forms to encompass their elongated counterparts.  At the same time, introducing a new product into the market with both an elongated name and an abbreviated name may cause confusion and interfere with the consumer identifying one brand with the product.  And, here is the ah-ha moment to recognize that branding is not always about strategic marketing, but also about how the public processes and associates nicknames or abbreviations. 

DISCLAIMER: This article is NOT intended to provide legal advice and is for informational purposes only.

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