Trademark Office approves one, two and three-letter marks for publication

The Puerto Rico Trademark Office has recently approved for publication a number of trademarks consisting of arbitrary arrangements of one, two or three letters (Official Online Gazette, July 2015). Due to their arbitrary nature, these marks qualify for trademark protection without need for proof of secondary meaning.

Like any other mark, the principal requirement for one, two or three-letter marks is that they must serve to identify a source of goods or services. Additionally, the marks should not be descriptive of the goods or services or be an abbreviation of a descriptive or generic term associated with the goods or services. Some examples of generic or descriptive marks would be ALM for aluminum-based products, O for orange-flavoured vodka (Star Indus Inc v Bacardi & Co Corp (2003 WL 23109750), at *4 (SDNY December 31 2003) aff'd sub nom; Star Indus Inc v Bacardi & Co (412 F3d 373 (2d Cir 2005))) and V2 for vitamin-enriched 2% butterfat milk (East Side Jersey Dairy Inc v Jewel Cos (197 USPQ 535 (SD Ind 1977))).

One benefit of arbitrary one, two or three-letter marks is that they may easily qualify for protection under a wide range of product classes. Indeed, one of the marks approved by the Trademark Office claims such disparate product categories as scientific equipment, jewellery, bleach, sunscreen lotion, paper products, textiles and clothing.

Another benefit of marks consisting of arbitrary arrangement of letters is that they have generally been given a wide scope of protection. Courts have awarded this increased protection because it is assumed that “it is more difficult for buyers to remember a series of arbitrarily arranged letters than marks which consist of pictures or recognisable words” (EA Eng'g Sci & Tech Inc v Envtl Audit Inc (703 F Supp 853, 856 (CD Cal 1989)), citing "McCarthy on Trademarks and Unfair Competition" § 7:2 (2d ed)). Therefore, courts have reasoned that consumers are more susceptible to confusion or mistake between arbitrary word marks than with recognisable word marks (The BVD Licensing Corp (83 USP Q2d 1500 (PTO February 21 2007))). This increased confusion between arbitrary marks has been attributed to the lack of difference in meaning between the marks (Kos Pharm Inc v Andrx Corp (369 F3d 700, 713 (3d Cir 2004)) ("Two names that look and sound similar will naturally seem even more similar where there are no differences in meaning to distinguish them.")).

In the absence of literal meaning, courts have focused on the overall appearance of the marks to evaluate any likelihood of confusion. In general, there is less likelihood of confusion the more stylised an arbitrary letter mark is. Conversely, use of letter marks with less stylisation tends to result in findings of likelihood of confusion.

In conclusion, when considering the use of arbitrary one, two or three-letter trademarks, business owners will benefit from knowing that a senior user of an arbitrary arrangement of letters will enjoy wide protection if the trademark is portrayed with little or no stylisation. In opposition, a junior user may avoid likelihood of confusion by adopting a highly stylised trademark.

Ariel C Rivera, Ferraiuoli LLC, Puerto Rico