Tuesday, May 28, 2013

TTAB Affirms Surname Refusal of MOTT'S for Baby Food

Finding that MOTT is not a rare surname, the Board affirmed Section 2(e)(4) refusals of MOTT'S for "baby foods" and for "packaged combinations consisting primarily of fresh fruit, namely, fresh fruit and fresh fruit packaged in combination with cheese, granola, yogurt, and/or caramels." Applicant argued that MOTT primarily identifies Samuel R. Mott, an historical figure. Applesauce! said the Board. In re Mott’s LLP, Serial Nos. 85374805 and 85436615 (April 30, 2013) [not precedential].

The Board applied its conventional Section 2(e)(4) analysis. It first observed that the "surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form."

Examining Attorney Thomas M. Manor submitted LexisNexis evidence showing that MOTT appears 5,819 times as a surname in a nationwide directory. According to Applicant's 2010 census evidence, there are 17,013 persons surnamed MOTT, ranking MOTT as the 1,941st most common surname in the USA. The Board concluded that MOTT is not a rare surname.

Next the Board noted that Applicant has no current officer or employee named Mott (although Samuel R. Mott founded the company in 1842). In any case, this factor alone is not dispositive.

The evidence indicated that there is no meaning of "mott" other than as a surname. Applicant asserted that "Mott" is a reference to Samuel R. Mott, who is "so widely recognized, revered, and celebrated that use of the term MOTT has lost any surname significance." See, e.g., In re Pyro-Spectaculars, Inc., 63 USPQ2d 222, 2024 (TTAB 2002) [SOUSA not primarily merely a surname for fireworks]. The Board was unconvinced: "Applicant’s argument would have carried more weight had it been supported by a reference other than applicant’s website and had Samuel Mott been identified in any of the [cited] dictionaries." Mr. Mott's personal history is not "in any way so extraordinary that he warrants treatment under the 'historical person' exception to the surname refusal."

Finally, the Board found that Mott has the look and sound of a surname. It has no other meaning and does not look like a coined term. Moreover, the possessive form "Mott's" reinforces its impression as a surname.

Finally, Applicant pointed to its ownership of ten Principal Registrations for the mark MOTT'S or combinations thereof, all registered without resort to Section 2(f). However, the marks that combine MOTT'S with other words, like MINI MOTT'S, are not relevant because they are not primarily merely surnames. Only three registrations involved the word MOTT'S by itself. However, these prior registrations "do not conclusively rebut" the Section 2(e)(4) refusal. "Even if some prior registration had some characteristics similar to the subject matter of this application, the PTO's allowance of such prior registrations does not bind the Board."

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note: For a collection of TTABlog postings on Section 2(e)(4) cases, go here.

Text Copyright John L. Welch 2013.


At 9:18 AM, Anonymous Anonymous said...


At 10:58 PM, Blogger Dan said...

Then how come "McDonald's" is a trademark?

At 8:38 AM, Blogger Robert said...


McDonald's is primarily a surname, but it is registered with a claim of acquired distinctiveness. See Reg. No. 0743572 http://tsdr.uspto.gov/#caseNumber=0743572&caseType=US_REGISTRATION_NO&searchType=statusSearch Basically McDonald's was able to show that through its use that consumers had come to recognize the name as a trademark.

Mott's is also an old trademark. I remember eating Mott's applesauce as a child in the 70s. However, it has only used Mott's in connection with baby food for about 18 months. So perhaps it felt it could not produce evidence of acquired distinctiveness or it could not rely on its other uses of the mark to support of a claim of acquired distinctiveness in connection with baby food. Maybe it simply hoped that it could register the mark without the faint taint of acquired distinctiveness.

At 9:14 AM, Anonymous Orrin A. Falby said...

I think an argument could be made that applesauce is related to baby, and thus, the acquired distinctiveness will established in the mar MOTTS mark will transfer to the related goods. Not sure why they choose to have this fight.

At 9:40 AM, Anonymous Anonymous said...

"the faint taint of acquired distinctiveness"

I am not so inclined to see it as a taint. I see it more as at least a stepping-stone to "famousness"

At 2:18 PM, Anonymous Mark Jaffe said...

I don't think that this opinion exists in the real world.


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