Friday, February 05, 2021

MAMA BEAR Fails to Function as a Trademark for Clothing, Says TTAB

The TTAB upheld yet another failure-to-function refusal, this time for the proposed mark MAMA BEAR for various clothing items, including t-shirts and sweatshirts. The Board recited its now-standard litany of f-to-f precedents and concluded that "[u]biquitous use of MAMA BEAR, emblazoned in an ornamental manner on the front of t-shirts and sweatshirts by Applicant and many third parties, supports a finding that the phrase MAMA BEAR will be perceived as a widely used message, and not as a unique source identifier." In re Sarah Marie Duncan d/b/a Loved by Hannah and Eli, Inc., Serial No. 86923714 (February 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Examining Attorney Steven W. Ferrell Jr. submitted dictionary definitions of MAMA BEAR ("A tough, aggressive, and protective mother. Often going to extreme lengths to protect her child, usually her son, and herself"), usage in literature (THE STORY OF GOLDILOCKS AND THE THREE BEARS) and in media ("The Problem with 'Mama Bear' Syndrome", PARENTING magazine), and third-party uses of MAMA BEAR on clothing (often depicted as being worn by pregnant women). 

Applicant pointed to some 19 issued registrations for marks comprising or containing MAMA BEAR for a variety of goods and services. She argued that the USPTO was acting in an inconsistent and arbitrary manner in rejecting her application. Applicant also pointed out that she uses MAMA BEAR in a trademark manner on hangtags, sewn-in labels, packaging, and invoices. The Examining Attorney maintained that MAMA BEAR is a commonplace message or expression that is widely used by a variety of sources, especially when displayed in an ornamental manner on clothing. 

 

The Board observed that the USPTO's policy regarding the registrability of widely used messages is summarized in TMEP § 1202.04(b):

Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function.


As to the registrations cited by Applicant, the Board pointed out once again that each case must be decided on its own record. In addition, the registrations (including one owned by Applicant for IT'S A MAMA BEAR THING) merited little probative value because the registered marks are distinguishable from the proposed mark. Moreover, all of the third-party registrations involved goods and services other than clothing.

Applicant claimed that her use of MAMA BEAR preceded that of the third-party marks, and that the sellers are vendors who copied her design. The Board was unmoved: "That Applicant may have been the first user of the ubiquitous MAMA BEAR designation is not dispositive on the issue of registrability where, as here, the evidence shows that the term indeed is ubiquitous."

As the manner of Applicant's use of MAMA BEAR, the Board noted that this usage was the same as others using the phrase on clothing. Moreover, Applicant's hang tag contains other words and designs that appear as trademarks. 

The Board found  from the evidence of record that "target consumers who purchase and wear this merchandise express to others that they exude protective maternal behavior. MAMA BEAR is therefore a common, widely used and generally understood term to convey a messages of an ordinary or familiar concept or sentiment – aggressive protective parenting."

Consequently, the Board concluded that MAMA BEAR does not serve as a designation of source for Applicant’s clothing products and is unregistrable under Sections 1, 2, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlogger comment: A letter of protest containing pictures of many clothing items was submitted (as I understand it) by Trademark Watch Dawgs, a self-described group of entrepreneurs in the e-commerce and print-on-demand space that specializes in letters of protest.

PS: Question for you: What sports figure is or was known as "Papa Bear?" 

Text Copyright John L. Welch 2021.

7 Comments:

At 7:35 AM, Anonymous Anonymous said...

George Halas of the Chicago Bears was called Papa Bear.

 
At 8:48 AM, Anonymous Anonymous said...

George Halas of the Chicago Staleys

 
At 9:36 AM, Anonymous Alex Butterman said...

David Ortiz

 
At 10:00 AM, Blogger Gene Bolmarcich, Esq. said...

Why would the TTAB look to "uses of MAMA BEAR in literature" to determine whether a term functions as a trademark? This is getting surreal. So, an examining attorney must review all literature for the term BUZZ when I apply for that word for cola? I suppose even if it's on a can in my specimen it doesn't function as a trademark because it's a commonly used term

 
At 10:09 AM, Blogger John L. Welch said...

Geroge Halas graduated from the University of Illinois and adopted the U of I's colors of orange and blue for the Chicago Bears. The TTABlog colors are likewise adopted from the U of I.

 
At 9:18 PM, Blogger Ken Reil said...

You may want to get up to speed with the real problems frivolous TM's are causing with ornamental use on clothing. The USPTO is a long ways off fixing the problem and have shown complete contempt to do so by instituting a fee to even file letters of protest. Mama Bear is a prime example of the cancer burning through the print on demand industry. If it took looking at literature to show common place use of the term then so be it. Millions of dollars are being stolen from content creators by trademark trolls gaming the system right in front of the examiners eyes.

Founder: Trademark Watch Dawgs

 
At 8:22 AM, Blogger John L. Welch said...

It has to be a "commonly used term" in the same field. "Apple" is a commonly used term, but not in the field of computers. MAMA BEAR is a commonly used term on t-shirts.

 

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