Lynch LLP Advises on Registering Acronyms as Trademarks

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Lynch LLP helps clients large and small protect their inventions across a wide range of practice areas. We have specialized expertise in a wide range of technical fields and focus our practice on providing strategic guidance and services including patent prosecution as well as strategic patent counseling. We also have experience with clearance searching, prior art searching, product licensing, as well as litigation and enforcement of patent and other intellectual property rights.

“We regularly get this question: Can acronyms get trademark protection?” said Sean Lynch, partner at Lynch LLP. “For example, ‘BMW’ could stand for many things in English. But Bavarian Motor Works was successful in securing trademark protection for BMW. It can be done!”

Lynch LLP advises clients to consider a variety of things before pursuing trademark protection for an acronym, however.

What’s the case for trademark infringement? Courts look at whether there is a “likelihood of confusion” to determine whether one trademark infringes another. So if one were to start selling cars using the mark “BeeMW”s or some other variation of “BMW,” rest assured the company would work to stop anyone doing so. Without getting into too much detail, courts will look at the sight, sound, and connotation of a mark when determining whether there is a likelihood of confusion. So any mark that would make consumers think “hey is that the BMW?” would likely be problematic.

Another aspect of the question appears to relate to domain name registrations. A domain name is not necessarily a trademark unless it is being used as such. To learn more about the use requirement, talk to a lawyer. In instances where a party registers a domain name that is the same or confusingly similar to another person or company’s trademark, that person or company can initiate what is known as a UDRP proceeding.

The elements that a complainant must describe in a UDRP complaint are:

– the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
– why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
– why the domain name(s) should be considered as having been registered and being used in bad faith

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“So, if you were to register, BMW would likely have a case to take over the domain from you,” said Lynch. “And that would cost you money and time. I don’t recommend it.”


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