Initials corresponding to generic description of services are not protectable

In Welding Services Inc v Forman (509 F3d 1351, December 17 2007), the US Court of Appeals for the Eleventh Circuit has affirmed a district court decision holding that a mark describing the nature of the services provided by the trademark holder was generic and that the trademark holder could not demonstrate a likelihood of confusion based on a stylized logo.

Welding Services Inc and Welding Technologies Inc are rival companies providing services for maintaining heavy equipment. Welding Services has been using the abbreviation WSI since 1990; a stylized logo consisting of the abbreviation WSI surrounded by a circle has been in use since February 1994. In 2003 former employees of Welding Services (including defendant Terry Forman) formed a rival company, Welding Technologies. They began using a logo consisting of the company's initials (WTI) with an orange 'rotational symbol'. Welding Services brought suit alleging infringement of its abbreviation and stylized logo, as well as other causes of action.

The Eleventh Circuit stated that the first issue was whether the WSI abbreviation was generic. The court held that:

"a would-be proprietor's use of the words in the mark to refer to the kind of services it and its competitors provide is powerful evidence that the words in the putative mark are being used generically."

The court found that both Welding Services and Welding Technologies provide welding services and that the words 'welding services' are part of the WSI mark. The court held that abbreviations of generic words may become protectable if the abbreviation has a meaning distinct from the underlying words in the mind of the public. However, the abbreviation WSI was not found to be distinct from the generic wording.

The court also considered whether the stylized logo was eligible for protection. The court found that there was no likelihood of confusion between the WSI logo (which consists of stylized letters in a circle) and the WTI logo (which consists of plain block letters with an orange 'swoosh' design, meant to convey rotational movement).

The court thus affirmed the district court's grant of summary judgment against Welding Services.

Jeremy T Elman, McDermott Will & Emery, Miami

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