OMG, LOL – can you trademark textspeak acronyms?

By Miriam Stiel
Industrials Intellectual Property Patents & Trade Marks

In brief

American consumer goods corporation Procter & Gamble is attempting to trade mark abbreviations common to textspeak. Is this NBD, a LOL for the courts, or simply WTF? Lawyer Phoebe St John reports.

In true sci-fi fashion, we may soon see the words we text on our smartphones on our everyday household products. Yes, the US multinational consumer goods corporation Procter & Gamble has filed applications with the US Patent and Trademark Office to register abbreviations common in textspeak, such as 'LOL', 'WTF', 'NBD' and 'FML', as trade marks. This appears to be an attempt to rebrand its traditional household products – famous for brands such as Gillette, Pantene, Oral-B and Fairy – to appeal to its younger, millennial, consumers.

Letter trade marks that are publicly recognisable abbreviations for words incapable of distinguishing themselves are not prima face capable of registration. However, in certain circumstances, acronyms, abbreviations or initials can be protected as registered trade marks. Indeed, companies wishing to register these types of trade marks may be successful if the mark is adapted to distinguish – ie if it is not likely that other persons trading in the same, relevant kind of goods will also want to use that abbreviation in connection with their goods. That is to say, the trade mark must be sufficiently distinctive, and not just a descriptive term ordinarily applied to the goods or services, or a mark that other traders would need to use. Eg 'BYO' (bring your own) is not inherently adapted to distinguish restaurant services, and 'OJ' (orange juice) is not inherently adapted to distinguish soft drinks.

With that in mind, textspeak acronyms may well be registrable on Australian soil if a company can prove that its use of the abbreviation in connection with a certain kind of goods is distinctive. In Procter & Gamble's case, a common textspeak abbreviation, eg 'LOL' (laugh out loud), could potentially be inherently adapted to distinguish household products such as detergents, toothpaste and air fresheners, despite being widely used in multiple industries and contexts.

The stance on trademarking abbreviations is quite similar across the pond in the US. You can trade mark an acronym provided that you use it as the brand name for your products or services (eg 'NBN' or 'SBS'). But in order to trade mark an acronym, your company must use it to identify its goods or services, and it must be distinct enough not to qualify as a generic acronym. Indeed, the US Patent and Trade Mark Office Examiners will need to determine if the textspeak abbreviations have meaning that is distinct or separate from the underlying generic or descriptive term that acronyms such as 'LOL' represent. Perhaps this is why the Office has requested further clarification from Procter & Gamble, which is due next January.

Procter & Gamble is not the first company that has attempted to trade mark well-known terms. Facebook has successfully trademarked the word 'face' in relation to telecommunication services, celebrity Paris Hilton has trademarked the words 'that's hot', and stylist Rachel Zoe has trademarked the expression 'bananas'. So, what does the future hold for textspeak? Well, IDK. It's TBC.