OMG or NBD: Procter & Gamble's quest to trademark acronyms
In August 2018, the global household products company Procter & Gamble filed trademark applications for terms including “LOL” (Laughing Out Loud) and “NBD” (No Big Deal). The owner of the well known brands Fairy, Febreze and Mr Clean has taken a different stance on its approach to appealing to a variety of customers, stating that consumers look for an ‘emotional attachment’ to products they are purchasing. Attempting to pull away from a ‘one-size-fits-all’ tactic, the company is aiming to target a younger audience who they hope to attract with more ‘repeatable’ marketing techniques.
Efforts to trademark acronyms is not a new phenomenon: for example, the attempt to trademark WTF by the company What Tax Form. Furthermore, the US and EU databases already demonstrate numerous trademarks “OMG” registered for a range of products, from electronic cigarettes to clothing. Nevertheless, it remains subject to debate whether such trademark applications ought to be accepted, and the difficulties that trademark applicants face in the process of registering such terms.
Although it may be questioned whether parties should be awarded a monopoly right on abbreviations for terms so commonly used in day-to-day interactions, under US law, as long as the acronyms are not descriptive of the products in question, it is possible that their registration will be accepted. If an applicant is able to demonstrate that the acronym has, or could, develop a meaning separate from the underlying term for which it stands, then such an application can be accepted.
Within the EU, the Court of Justice has maintained that acronyms which consist ‘exclusively of signs or indications which may serve, in trade, to designate characteristics of the services concerned’ cannot be subject to trademark protection (C-90/11). It is important to note that the Court accepted trademark registrations for acronyms that formed part of a sign composed of the terms that were abbreviated. Indeed, the Court stated that acronyms can be used where they have the purpose of clarifying the terms to which they are linked.
Therefore, although it is possible for acronyms to be subject to trademark protection, it is crucial for trademark applicants to consider that possible risks for rejection can be avoided if acronyms bear a strong distinctive character in relation to the products and services to which they are applied to (possibly the case for Procter & Gamble’s registration applications). The success of the company’s registration attempt remains to be seen, as the US Office has requested clarification with regards to their application. However, from prior cases it appears that if conditions regarding distinctive character are met, registering an acronym as a trademark should be NBD.