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[iplawprac]

Have an issue with a client re: moving forward with TM protection and was interested in any advice/opinions people wanted to throw out.

Client has a mark that is an acronym of what I'm pretty sure would be considered a merely descriptive phrase.  (The phrase is essentially [adjective] [adjective] [adjective] [noun], with noun being the generic name of the good.)  The acronym itself is a standard English word, but sufficiently un-linkable to the goods on which it appears to avail TM protection.  Client's use of the mark is negligible, but when doing so has always paired the acronym with the MDP.

A TM search turned up an ITU application for the acronym in the same class, and for the same general goods, so there is a definite likelihood of confusion.  However, 2nd Party's application does not specify that the acronym is shorthand for the MDP, and I would hazard a guess that the 2nd Party is interested in the acronym word itself, not the MDP.  The ITU application has gone through exam, and it looks like it will be published in the next month or so.

While Client did use its mark in commerce prior to the ITU filing date, and thus could assert common law rights to the acronym, its records are somewhat skimpy with respect to evidencing the use.  Consequently, both Client and I are hesitant to go down the Opposition path given the costs and likelihood of success.  Additionally, 2nd Party is unwilling to discuss an agreement transferring the mark or otherwise divesting its rights to the acronym.

So. . .given that Client has begun to build up name recognition by using the acronym/MDP combination, I was wondering if it would be viable to pair the MDP with another non-acronym word mark without running afoul of the 2nd Party's application.  For example, if we sought protection for [New Word], then, in labeling, brochures and related advertisements, noted it along the lines of "Company's [New Word] [MDP]," would 2nd Party have a reasonable cause of action against Client?

Ideally, Client would be able to receive secondary meaning for the MDP after the five years of use, but Client is nervous about 2nd Party (or any other entity, to be honest) using the MDP and undercutting its efforts.  Client began using the MDP in earnest a little over a year ago, and even when performing a simple Google search all 200+ hits are directed to Client's use of the phrase.

In any event, I've never encountered a situation like this previously in my practice, and was hoping someone could shed some light on my concerns.  Any and all opinions would be greatly appreciated.  Thanks.

[JSonnabend]

As you know, it's tough to give any useful opinion based on hypotheticals.

That said, if the phrase in question truly is merely descriptive, then there isn't real risk in using it (descriptively, that is).  If the client is interested in developing TM rights, he should understand that he'll have to develop secondary meaning before he can protect the phrase, and no amount of use will do that unless it's substantially exclusive use.

As for the acronym, I'm not aware of any rule that treats them differently from any other mark component.  If the acronym itself is descriptive, then it isn't distinctive, if not, it isn't.  The fact that some letters might be an acronym which, when expanded, is descriptive, doesn't necessarily render the acronym descriptive per se.

- Jeff

[iplawprac]

Thanks, Jeff.  I do recognize the vagaries inherent with dealing with hypos, but I appreciate your opinion on the situation.  It sounds like my client should be fine to go ahead and use its own new mark in conjunction with the descriptive phrase without great fear of issues from the other party.  I guess the concern is that, given that my client's mark clearly arose as an acronym from the descriptive phrase, whereas the ITU mark seems have been chosen solely for the meaning of the word, the ITU party would somehow claim that we were still butting up against their mark in an almost retroactive legal argument. 

One of the steps we've discussed is filing an application (which includes a logo) that contains both the new goods mark and the descriptive phrase, with the presumption that the Examiner will make the usual "No claim is made. . ." requirement with respect to the phrase (and thus further substantiating our position).  Is this something that's even worth doing?  I'm 99.9% confident that the phrase is in fact merely descriptive, but I also wouldn't mind having some sort of "official" notice of it being so.