(949)829-2186 sean@lynchllp.com

I often answer questions on Quora — I’ll be posting them on my site as a part of an ongoing Q&A to help you understand the basics of intellectual property.

Q:

Can acronyms get trademark protection? For example, “BMW” which stands for Bavarian Motor Works in English. Can the BMW trademark be registered? BMW can stand for anything. I was wondering if I bought the domain name biemw or beemdubyo.com (as an example) would they have a case? You don’t have to use the example BMW — it can be anything abbreviated.

A:

You absolutely can register an acronym as a trademark, and in fact, BMW has indeed done so.

What you’re curious about is a case for trademark infringement. Courts look at whether there is a “likelihood of confusion” to determine whether one trademark infringes another. So if you were to start selling cars using the mark “BieMW”s or some other variation of “BMW,” you can rest assured the company would work to stop you. Without getting into too much detail, courts will look at the sight, sound, and connotation of a mark when determining whether there is a likelihood of confusion. So any mark that would make consumers think “hey is that the BMW?” would likely be problematic.

Another aspect of your question appears to relate to domain name registrations. A domain name is not necessarily a trademark unless it is being used as such. Learn more about the trademark use requirement here. In instances where a party registers a domain name that is the same or confusingly similar to another person or company’s trademark, that person or company can initiate what is known as a UDRP proceeding.

The elements that a complainant must describe in a UDRP complaint are:

  1. the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
  2. why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
  3. why the domain name(s) should be considered as having been registered and being used in bad faith

Learn more here.

So if you were to register beemdubyo.com, BMW would likely have a case to take over the domain from you, costing you money and time. I don’t recommend it.