Tuesday, May 16, 2017

TTAB Test: Is "PPL" Merely Descriptive of Pre-Paid Legal Services?

The USPTO refused registration of the mark PPL, finding it to be merely descriptive of "business administration of legal expense plan services .... [and] reward programs to promote the sale of pre-paid legal expense plans." Applicant Pre-Paid Legal Services, Inc. argued that PPL would not be viewed as referring to "pre-paid legal" because there are other possible definitions of the abbreviation or acronym. How do you think this came out? In re Pre-Paid Legal Services, Inc., Serial No. 86423483 (May 11, 2017) [not precedential] (Opinion by Judge Ritchie).

Examining Attorney Kathy Wang contended that PPL is an acronym for "pre-paid legal" services, which is a feature of characteristic of applicant's services. The Board observed that an acronym mark is considered merely descriptive if:

1. The applied-for mark is an abbreviation or acronym for specific wording;
2. The specific wording is merely descriptive of the recited services; and'
3. The relevant consumers will recognize the abbreviation or acronym as the merely descriptive wording it represents.

The Examining Attorney provided website evidence and online dictionary entries, persuading the Board that PPL is a recognized acronym or abbreviation for "pre-paid legal."

The term "pre-paid legal" immediately conveys to customers a significant feature of applicant's business administration and reward services, and so the phrase is merely descriptive of the services.

Applicant maintained consumers will not view PPL as referring to "pre-paid legal" since there are 71 other meanings for PPL at acronymfinder.com, and PPL received 0 out of 5 stars on that website. It pointed to Baroness v. American Wine Trade, wherein CMS was found to be not merely descriptive of wine. [TTABlogged here]. The Board noted, however, that there the acronym CMS did not "directly and immediately convey the meaning of the three varietals," cabernet, merlot, and syrah. Instead, some thought was required to discern the derivation of that mark. Moreover, the mark at issue here must be considered in relation to the recited services, not in a vacuum.

Considering the entire record, the Board found the applied-for mark to be merely descriptive of applicant's services, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2017.


At 3:16 PM, Blogger Unknown said...

Isn't the standard "substantial synonymy," meaning the acronym/initialism must be substantially synonymous with the descriptive phrase it represents? Given that the Examining Attorney bears the burden on a descriptiveness refusal, the record does not seem to support the outcome in this case.


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