March 2025
Over the past 4 years, ACBS has been involved in a trademark assertion that the Board became aware of when ACBS members from multiple countries were told that they could not discuss or share particular science and practice information because a trademark application was currently pending in the USA and already approved in other countries. As this action was seemingly in direct contradiction to trademark law, as we understand it, and in conflict with the mission of ACBS, we took steps to clarify this issue by first having lengthy discussions with the applicants, then ultimately, filing an opposition.
ACBS’s full protest can be found here:
It is linked to the filing record here:
Trademark Status & Document Retrieval (uspto.gov)
As a result of this action, ACBS arrived at a settlement with the applicants. The public terms of the settlement are below:
1. Deletion of International Class 042. Perspectives Ireland will amend the '111 Application by deleting from the application the services applied for in connection with and identified under International Class 042.
2. Disclaimer of "PBT." Perspectives Ireland will amend the '111 Application by adding a disclaimer of the term "PBT" apart from the mark as shown in the ’111 Application. It is understood by the Parties that in the event that the Board, the Trademark Examining Attorney responsible for examining the '111 Application, or any other responsible entity or person at the United States Patent and Trademark Office ("USPTO") does not allow, denies, or refuses to enter the requested disclaimer, then no further action in connection with said disclaimer is required of Perspectives Ireland. For the avoidance of doubt, the Parties agree that Perspectives Ireland is not required by the terms of this Agreement to disclaim "PBBT," with or without the first "B" being backwards, or the individual letters "P," "B," and "T."
3. Withdrawal of Present Opposition. In order to implement the terms set out in the Paragraphs 1 and 2 of this Agreement, the Parties agree and undertake that, upon execution of this Agreement, they shall enter into a joint motion to the Trademark Trial and Appeal Board for express abandonment of International Class 042 of the ’111 Application with prejudice, amendment of the ‘111 Application to disclaim “PBT” apart from the mark as shown, and withdrawal of the Proceeding without prejudice in the form of such joint motion constituting Exhibit A, which joint motion is incorporated by reference herein, and to be submitted with the consent of each Party. Perspectives Ireland will transmit to Opposers’ attorney as designated in the joint motion a copy of Perspectives Ireland’s signed joint motion within seven (7) days of the Effective Date of this Agreement, and Opposers’ attorney will file a copy of the fully signed joint motion with the Trademark Trial and Appeal Board within five (5) business days of receipt of Perspectives Ireland’s signed joint motion by Opposers’ attorney as designated in the joint motion.
Subsequent to this settlement, the party filed an additional USA trademark application, which ACBS protested as descriptive, but ACBS was ultimately unsuccessful in our opposition. Trademark Status & Document Retrieval
The party has also registered similar trademarks in other countries and regions. For example: EUIPO - eSearch
Search for a trade mark - Intellectual Property Office
Search for a trade mark - Intellectual Property Office
While we hoped for a different outcome, the complex nature of this situation made it difficult for ACBS to show a legal basis for harm (as we were not arguing that ACBS was the rightful trademark holder). We are satisfied that we did our best to protect scientific discourse.
We would like to be able to provide ACBS members with clarity regarding the legality of using trademarked acronyms and logos; however, ACBS does not provide legal advice, and what is legal varies by country and whether you are publishing research versus advertising a training, among other factors. A few public resources (although incomplete) to learn some basic information about trademarks according to US law, are here: Trademark basics | USPTO
You can also learn more about European trademark law here: Trademarks in the EU: How to register & what they protect - Your Europe
You can learn more about UK trademark law here: Intellectual property: Trade marks (https://www.gov.uk/government/collections/intellectual-property-trade-marks)
Also, please note, whenever you attend a training (virtually, in-person, asynchronous, live, etc.), regardless of the topic, you should always read the terms and conditions. To our knowledge, these terms are legally binding and can extend beyond any relevant trademark protection.
We hope this information has been helpful,
ACBS Board