TTAB Rejects MOTT’S Trademark Registration

The Trademark Trial and Appeal Board (TTAB) issued a notable refusal of a trademark application for MOTT’S in connection with baby food, holding that the term functions primarily as a surname under Section 2(e)(4) of the Lanham Act and therefore cannot be registered on the Principal Register without proof of acquired distinctiveness. The decision illustrates an important but often misunderstood doctrine in trademark law: surnames receive trademark protection only under specific circumstances, and even famous family-name brands can face registration challenges for new product categories.

The TTAB’s Section 2(e)(4) Analysis

Section 2(e)(4) of the Lanham Act, 15 U.S.C. § 1052(e)(4), bars registration of a mark that is primarily merely a surname. The TTAB’s analysis of whether a term functions primarily as a surname involves several factors: whether the term is a surname found in telephone directories or surname databases, whether the term has any non-surname meaning, whether the term has a look or feel of a surname, and whether the term is rare or common as a surname.

In the MOTT’S case, the TTAB found that the surname Mott appears 5,819 times in a public surname database. This frequency—while not placing Mott among the most common American surnames—was sufficient to establish that a significant portion of the public would perceive MOTT’S primarily as a surname. The possessive form (MOTT’S rather than MOTT) does not transform a surname into a protectable mark; the possessive inflection simply identifies the product as belonging to or associated with a person of that name.

The Famous Surname Exception: Why It Didn’t Apply

There is a limited exception to the Section 2(e)(4) bar for surnames that have become famous. Under this doctrine, if a surname has achieved such widespread public recognition—through extensive commercial use over many years—that its primary significance to the relevant public is as a trademark rather than as a personal name, registration may be permitted. Famous examples include FORD (automobiles), HEINZ (condiments), and CAMPBELL’S (soup).

Mott’s apple products (applesauce, apple juice, and similar goods) have been sold under the MOTT’S brand since the 19th century, building substantial consumer recognition. However, the TTAB declined to apply the famous surname exception to the baby food application for two reasons. First, the applicant’s evidence of Samuel Mott’s historical prominence was insufficient—the TTAB requires that the founding family member’s personal history be notable enough to constitute a “historical personage” who would prevent a surname refusal. Second, and more fundamentally, the MOTT’S mark’s fame was established in connection with apple products, not baby food. Fame in one product category does not automatically transfer to a new and distinct product category.

Acquired Distinctiveness as an Alternative Path

Even if a surname term cannot be registered as inherently distinctive, it may achieve registration through proof of acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). Acquired distinctiveness—also called secondary meaning—exists when the relevant consuming public has come to recognize the term as identifying the source of particular goods or services, rather than simply as a personal name.

Proving secondary meaning requires evidence such as: long and exclusive use of the mark in commerce, advertising expenditures, sales volume, consumer survey evidence showing that consumers associate the mark with a particular source, and declarations from industry members. For a brand seeking to expand into a new product category, the secondary meaning established in the original category does not automatically carry over—the applicant must establish acquired distinctiveness in the new category.

Practical Implications for Trademark Applicants

The MOTT’S decision has several practical lessons for companies seeking trademark registration:

New Product Categories Require New Evidence

A well-established brand seeking to register its mark for new product categories should not assume that existing trademark registrations will provide a shortcut. Each new product category requires independent analysis of whether the mark is inherently distinctive or has acquired distinctiveness in that category.

Surname Marks Require Careful Strategy

Companies founded by individuals whose surnames form the core brand identity should work with trademark counsel to build the evidentiary record needed to support a Section 2(f) claim—documentation of use, advertising spend, sales figures, and consumer recognition data—before facing a USPTO surname refusal.

Supplemental Register as a Bridge

Marks refused registration on the Principal Register due to Section 2(e)(4) may be eligible for the Supplemental Register, which provides some trademark benefits (the ability to use the ® symbol internationally and block later confusingly similar applications) while the mark builds the secondary meaning needed for Principal Register registration.

If you are navigating a trademark office action involving a surname refusal or need help building the acquired distinctiveness record for your brand, Revision Legal’s trademark attorneys have the experience to guide you through the process. Contact us today for a consultation.

Descriptiveness and the Principal Register: TTAB Practice

The Trademark Trial and Appeal Board (TTAB) is the administrative tribunal within the USPTO that adjudicates ex parte appeals from examining attorney refusals and inter partes proceedings including oppositions, cancellations, and concurrent use proceedings. A Section 2(e)(1) refusal — refusal on grounds of mere descriptiveness — is one of the most common bases for rejection, and the TTAB’s analysis of such refusals is a foundational area of trademark practice.

Under 15 U.S.C. § 1052(e)(1), a mark is not registrable on the Principal Register if it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s goods or services. The test is whether the mark, as applied to the goods or services in question, immediately conveys to consumers a significant quality or characteristic of those goods or services without requiring imagination or mental leap. A mark that requires a consumer to exercise any imagination to connect the mark to the product is suggestive, not descriptive, and is entitled to Principal Register protection without proof of acquired distinctiveness.

Applicants who receive a Section 2(e)(1) refusal have several paths: amend to the Supplemental Register, disclaim the descriptive term within a larger mark, or present evidence of acquired distinctiveness under § 2(f). The TTAB’s MOTT’S analysis illustrates how even a well-known house mark may face registration challenges for specific goods or services when the descriptive connotations are strong.

Acquired Distinctiveness and the Supplemental Register

A mark that is merely descriptive can achieve registrability on the Principal Register by demonstrating acquired distinctiveness — that is, through long and exclusive use, the relevant consuming public has come to identify the mark as a source indicator for the applicant’s goods or services, rather than as a description of those goods or services. Evidence of acquired distinctiveness includes advertising expenditures, sales volume, consumer survey evidence, length and exclusivity of use, and unsolicited media coverage associating the mark with the applicant.

The Supplemental Register provides an alternative path. Marks on the Supplemental Register do not carry the presumptions of validity, ownership, and exclusive right to use that come with Principal Register registration, but Supplemental Register registration does allow use of the ® symbol, provides a basis for foreign registration in countries that require a home registration, and may build toward a future claim of acquired distinctiveness. Supplemental Register marks can be opposed or cancelled only on grounds of fraud in registration, and they do not block conflicting applications from proceeding to the Principal Register.