Initial Impressions : Trademark Protection for Abbreviations of Generic or Descriptive Terms

A wide variety of abbreviations are currently in use as trademarks. These may consist of initialisms, acronyms, or other truncated versions of underlying words or phrases. In some cases, the underlying words or phrases may be either generic or descriptive. While it is well settled that trademark protection does not apply to generic terms, or to descriptive terms in the absence of secondary meaning, courts have failed to reach a consensus on whether, and under what circumstances, trademark protection can apply to abbreviations for such terms. Instead, the circuits have evolved widely disparate approaches to this problem. In most circuits, the decisional law has failed to cohere into any kind of guiding principle; this is true even in the Second Circuit, traditionally a leader in matters of trademark law. The only consistent and carefully-reasoned decisions have come from the Court of Customs and Patent Appeals (CCPA) and the Seventh Circuit, yet the approaches of these courts are polar opposites. As a predecessor of the Federal Circuit, the CCPA’s decisions on trademark law ordinarily would be influential in other circuits. On the matter of abbreviations, however, this influence is notably absent. While the application of federal trademark law should be consistent across the circuits, when it comes to the trademark status of abbreviations, disharmony is the order of the day