Initials Corresponding To Generic Description Of Service Found Not To Be Protectable

Addressing issues of trademark infringement and Florida's Deceptive and Unfair Trade Practices Act, the U.S. Court of Appeals for the Eleventh Circuit affirmed a summary judgment ruling that a mark describing the nature of the services provided by the trademark holder was generic and that the trademark holder could not demonstrate a likelihood of confusion based on a stylized logo. Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir., 2007) (Gibson, J.).

Plaintiff Welding Services and defendants Terry Forman and Welding Technologies are rival companies providing services for maintaining heavy equipment. Since 1990, Welding Services has used the abbreviation "WSI." A stylized logo consisting of the "WSI" initials surrounded by a circle has been in use since February 1994. In 2003, former Welding Services employees, including Forman, formed a rival company, Welding Technologies, in 2003. They began using a logo with the company's initials "WTI" with an orange "rotational symbol." Welding brought suit alleging trademark infringement on its abbreviation and stylized logo, as well as other causes of action.

The Eleventh Circuit stated that the first issue was whether the "WSI" abbreviation was generic. The court held that "a would-be proprietor's use of the words in the mark to refer to the kind of services it and its competitors provided is powerful evidence that the words in the putative mark are being used generically. Both Welding and Forman provide "welding" services and it is part of the "WSI" mark. The Court held, however, that abbreviations of generic words may become protectable abbreviation has a meaning distinct...