If I register my full business name as a trademark, but then we start more often using an abbreviation or acronym of that name, can I stop businesses that use that abbreviation or acronym from doing so?
A registered trademark confers upon you a monopoly to use your registered mark in the classes in which you have registered it and in accordance with the specification in your application.
This means that if you registered the name Small Business Legal Academy as a word mark in a certain territory eg the UK and then somebody else starts using Small Business Legal Academy in the same or similar field in the same territory in which you have registered the mark, you would be able to prevent them from doing so.
However, if you only register the full name as a word mark and another similar business starts using an abbreviation or acronym of that registered name, eg SBLA, you would not be able to prevent them from using it, as you do not have a registered trademark for that name.
There is a chance that you could have an unregistered trademark in that abbreviated name or acronym – if it had built up sufficient goodwill in that abbreviated name or acronym – and that a claim for passing off could potentially be brought – but that would be a lot more time-consuming, costly and difficult to bring than a claim for infringement of a registered trademark.
So if it does become the case that the abbreviated version of your name or acronym of your business name is becoming more associated with your brand, and it is something that you want to protect, you should consider trademarking that abbreviated name or acronym, in addition to the full name.
Savvy Shay Business Club members have full access to our trademark course, in which we explain whether it is worth trademarking (or indeed it is possible to trademark) your business name or other brand assets and walk you step by step through the application.
If you're interested to know more and to ask your own questions to top business lawyer Suzanne Dibble and learn from the experience of lots of other small business owners, then click here to apply to join our thriving membership for just £1 for your first month!
© Suzanne Dibble 2013-2022
The information contained above is provided for information purposes only. The contents of this article are not intended to amount to advice and you should not rely on any of the contents of this article. Professional advice should be obtained before taking or refraining from taking any action as a result of the contents of this article. We disclaim all liability and responsibility arising from any reliance placed on any of the contents of this article.
