Saturday, November 22, 2008

Can my initials be a trademark?

Dear Rich: I have a question. I use a generic term as the name for my business. The U.S. Patent and Trademark Office refused my trademark registration. Can I register the initials instead? As you noted, the USPTO won't register a generic term as a trademark, and it uses a two-pronged test to make that determination. (Keep in mind, of course, that some terms can be generic in one field of goods but not in another -- for example, 'arrow' for archery equipment versus for men's shirts.) Using initials instead of the generic term will not guarantee you registration unless you can prove that -- in the public's mind -- the abbreviation has a meaning distinct from the underlying generic terms. So, for example, Welding Services, Inc., a company that offers welding services, will have a hard time registering 'WSI' if customers associate those initials with welding services. And as WSI recently learned in a court battle, even if the company could get protection for a stylized version of WSI, it can't stop a competitor, Welding Technology, from using its WTI logo (above). Sound complicated? Hey, when it comes to generics, even lawyers get confused.