TTAB upholds ‘Mott’s’ trademark rejection
Trademark appeal judges at the US Patent and Trademark Office (USPTO) have upheld a decision that ‘Mott’s’ cannot be trademarked because it is “merely a surname”.
The judges, sitting on the Trademark Trial and Appeal Board (TTAB), were ruling on an appeal by US food and drink manufacturer Mott’s against two rejected applications covering baby foods.
Trademark examiner Thomas Manor had dismissed both applications, saying ‘Mott’s’ is primarily a surname and therefore should not be trademarked.
Some of the world’s most well-known brands, including McDonald’s, Heinz and Merck, do match surnames but are trademarked because they acquired distinctiveness through use.
Mott’s filed two ‘intent-to-use’ applications, meaning they predate any of use of a mark. It can be harder to show that such marks are not primarily surnames, as the mark has not built up any distinctiveness.
To determine whether a term is merely a surname, judges look at the surname’s rarity; whether anyone connected with the trademark applicant has the term as a surname; whether the term has another recognised meaning; and whether it has the “look and sound” of a surname.
Possessive or plural versions of names do not necessarily prevent them from equating to surnames.
Mott’s used 2000 census data to show that ‘Mott’ is the 1,941st most common US surname. While it was not among the most common surnames, said Judge Bergsman, writing for the TTAB, “we find that Mott is not a rare surname”.
The judge found that Mott’s had failed to establish the three remaining factors, noting in particular that it has the “look and feel” of a surname despite this concept being “very subjective”.
Though the judge noted that Mott’s cited existing trademarks, none of which claimed to have acquired distinctiveness, these marks did not help to “conclusively rebut” the rejection of ‘Mott’s’ two applications for baby foods, especially as each case is treated individually.
“Mott’s got boxed in because they filed ‘intent-to-use applications’,” said William Hansen, partner at Lathrop & Gage LLP in New York, adding that Mott’s should have relied on its existing trademarks that have acquired distinctiveness to better support its case.
“It’s a procedural oddity,” he said.
But Hansen said the decision won’t have a major adverse effect on the Mott’s brand, which he said has been very successful, adding that the company could reapply for the marks by showing acquired distinctiveness.
Alternatively, Mott’s could appeal against the current ‘intent-to-use’ applications to the US federal circuit.
Hansen noted that “one disturbing point” about the TTAB is that its decisions are not binding on future TTAB decisions, as it is an administrative tribunal, “which makes practising difficult”.
The TTAB, a body within the USPTO, hears appeals against rejected trademark applications or decides on oppositions against registrations.
