Surnames and the Trademark Act
Last week, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the Trademark Office’s refusal of registration for MOTT’S applied for “baby food” and “packaged combinations consisting primarily of fresh fruit, namely fresh fruit and fresh fruit packaged in combination with cheese, granola, yogurt, and/or caramels.”
The well-known maker of applesauce and apple juice was unable to branch out into baby food and packaged foods because the Board found in a non-precedential decision that MOTT’S functions “merely as a surname,” is not rare, does not look like a coined term, and has no other meaning than that of a surname. This principle is well-codified in the Trademark Act under Section 2(e)(4) and in case law issued by the Board interpreting this Section.
The status of the law
Section 2(e)(4) of the Trademark Act and the various cases interpreting this Section are clear that absent a showing of acquired distinctiveness, terms that function “merely as a surname” shall be rejected. The primary significance to the purchasing public determines whether the mark is primarily merely a surname. In addition, the cases set forth a number of factors to help Trademark Examiners and Applicants determine whether a term is “merely a surname”: (i) whether the surname is a rare; (ii) whether anyone connected with the Applicant uses the term as a surname(if the term identifies a historical figure, the term may not be merely a surname); and (iii) whether the term has recognized meaning other than a surname.
Application of the law by the Trademark Office
However, upon review of some of America’s best known brands containing what appear to be surnames, the Trademark Office seems to be consistent only in its inconsistent application of Section 2(e)(4). For instance, McDonald’s was rejected for being “merely a surname” and the mark is registered on the Principal Register with an acquired distinctiveness and secondary meaning status, given the fact that consumers recognize the source of the McDONALD’S brand name associated with McDonald’s Corporation. The well-known children’s clothing brand CARTER’S, which is named after William Carter, was not required to claim acquired distinctiveness on its trademark application (and we were unable to find any dictionary definition for the term Carter outside of its reference to a surname). It seems reasonable that Mott is more rare a surname than Carter, but evidently, not on the day this application was examined. Can there possibly be that many Leinenkugels in the country? Evidently, the Trademark Office thinks so, since LEINENKUGEL’S beer was required to file its application with an acquired distinctiveness status. However, WRIGLEY’S filed for chewing gum registered is on the Principal Register without any further status claims. And lastly, HERSHEY’S candy required an acquired distinctiveness claim, but MARS candy did not (presumably because Mars has a dictionary definition in addition to being a surname, along with marks like FORD and FOX, for instance).
In the MOTT’S appeal, the Trademark Examiner mentions that a trademark like MILLER is not “merely a surname” since it also has a dictionary definition; however, MILLER is registered on the Principal Register with an acquired distinctiveness status. So, once again, the Trademark Office baffles in its inconsistent application of trademark law.
We understand Mott’s is working in cooperation with Beech-Nut® to produce a line of baby food featuring MOTT’S applesauce. The Trademark Office has made available the option of claiming “acquired distinctiveness” based on Mott’s prior registrations, since Mott’s has acquired secondary meaning in baby food, for instance, given its track record and consumer recognition over the past 150 years as the leading producer of applesauce , which is arguably related to baby food. Although a registration without the acquired distinctiveness status would be more broad, it is not clear from the record why Mott’s did not choose this option. It can refile its application with an acquired distinctiveness status, appeal this decision to the Federal Circuit, or give up on acquiring a Federal Registration, which is unlikely.
How do I get my surname registered?
If you are planning on filing a trademark application that includes a surname, here are some tips to help get around a “primarily merely a surname” refusal.
1. choose a term that also has a dictionary definition, e.g. miller, ford, fox, mars, etc.;
2. do not choose a term that is the surname of anyone associated with your business;
2. while not determinative, you are better off choosing a rare surname, as your mark;
3. combine the term with other words, e.g. JOHNSON & JOHNSON, CALVIN KLEIN, etc.; and/or
4. use the root of the surname and combine it to form a fanciful or coined term, e.g. if your name is Conway and you’re in the telecommunications business, your mark might be CONTEL (the mark is registered, by the way).
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Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.