A trademark is occasionally varied by the public in both speech and written usage to an abbreviation of or a nickname for a company’s name or trademark. A company can claim trademark ownership of such a name even if the company neither created it nor publicized it. This protection coincides with the rationale behind trademark law, which is protecting against consumer confusion. Sometimes the public modifies recognized names and marks either by shortening a longer mark for purposes of convenience, such as the use of “Coke” for a Coca-Cola beverage or by adopting a nickname because of the appearance of a product and/or a desire to colloquialize a trademark, such as “Bug” for the Volkswagen Beetle automobile. A company can secure trademark protection for an abbreviation, acronym, or nickname conferred by the public if it can show that the purchasing public associates that nickname with the company or identifies the company as the source of products bearing that nickname. The company may prevent another entity from using a mark that is confusingly similar to the new term even though the company itself has not made public use of it.
Secondary Meaning and Unfair Competition Law
When a nickname has attained secondary meaning so that the purchasing public associates it with the source of the product or with the business and its use by another would be likely to cause confusion, it becomes protectable under the law of unfair competition in the same manner as a trademark. In many instances where legal protection has been granted, the nickname has carried components of the original mark or trade name and there is an obvious association between the two. This association, as well as the nickname secondary meaning, may create a clear likelihood of confusion.
Concurrent Use of Original Mark and Nickname
Protection of nicknames where the nickname itself is neither used nor registered as a trademark, is a well-established facet of unfair competition law. However, a nickname not used on products as a trademark is not eligible for federal trademark registration. For this reason, the trademark owner who finds that a variant of his or her mark is becoming widely used as a nickname by the public frequently begins to use the variant as a trademark on his or her products in order to qualify for registration. When this level of popularity is reached, the value of the nickname is ordinarily considerable and maximum legal protection for it is usually desirable. Also, failure to make actual trademark use of a nickname may result in a competitor obtaining rights in the variant or an inability to obtain injunctive relief in those few jurisdictions where the nickname principle may not be fully embraced. Making trademark use of and registering a nickname also simplifies problems of proof and may even eliminate the need to establish secondary meaning if and when trademark litigation arises. Inasmuch as there is no legal prohibition against the use of two or more trademarks on a single product, both the original mark and the nickname may be used concurrently and legal rights claimed in both as separate trademarks.