Friday, June 10, 2022

TTAB Reverses Genericness Refusal of "MULLET" for Bicycles Due to Mixed Evidentiary Record

The Board reversed a genericness refusal to register the mark MULLET for "bicycles," on the Supplemental Register, giving the applicant the benefit of the doubt in light of the mixed evidentiary record. "[T]he evidence of record, when viewed in its entirety, fails to establish that the primary significance of MULLET to the relevant public is a type of bicycle, rather than a bicycle provided by a particular entity." In re Mr. Bator LLC, Serial No. 88244852 (June 7, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

"A mark proposed for registration on the Supplemental Register must be capable of distinguishing the applicant’s goods or services. 15 U.S.C. § 1091. 'Generic terms do not so qualify.'" Evidence of the relevant public’s understanding of a term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.

However, if the evidence of record, when viewed in its totality, constitutes a mixed use of a term as both the generic name of the goods or services and as a source indicator for such goods or services, then such evidence would not demonstrate that the primary significance of the term is the generic name of the goods or services. See Merrill Lynch, 4 USPQ2d at 1143.

Not surprisingly, the Board found the genus at issue to be "bicycles" and the relevant consuming public to be the general public - i.e., consumers who purchase bicycles. Based on numerous website reference, the Examining Attorney maintained that MULLET refers to a specific type or subcategory of bicycles, namely, a bicycle with two different sized wheels: typically a 29" diameter wheel in front and a 27.5" wheel in back.

Applicant submitted third-party online articles and blog posts referring to its new product launch as a "mixed-wheel" bike, not as a "mullet" bike. The articles also included text demonstrating trade name and trademark use of MULLET, as well as photographs of applicant’s goods bearing the term MULLET, showing valid trademark use of the term. Three purported bicycle industry experts averred that this type of bike is referred to as an MX or "mixed wheels." Finally, applicant pointed to a now-expired registration owned by Trek Bicycle for the mark MULLET for bicycles, as proof of the term's registrability.

The Board dismissed the prior Trek registration as irrelevant, since "[t]rademark rights are not static," and "[a] term that might not have been considered merely descriptive or generic in the past may now be considered so due to the frequency of its use over time." Moreover, eligibility for registration must be determined based on the record of the case at hand.

The Board concluded that the Examining Attorney "failed to establish that the designation MULLET would be perceived by consumers as the generic name for a subcategory of bicycles." Instead, the record consisted of mixed uses of MULLET, some in trademark form and some not.

More specifically, while the Examining Attorney submitted evidence demonstrating that the term MULLET is the generic name of a type of bicycle, Applicant offset such evidence by submitting approximately the same amount of evidence, i.e., third party websites in the biking industry and declarations from persons familiar with the mountain bike industry, showing the term as Applicant’s trade name or trademark used in connection with bicycles.

The mixed record made it unclear whether MULLET is generic for a subcategory of bicycles. Although the Board had "concerns about the genericness of Applicant’s designation, it is the record evidence bearing on purchasers perceptions that controls the determination, not general legal rules or our own subjective opinions."

Recognizing that any doubts raised by the lack of evidence must be resolved in applicant's favor, the Board reversed the refusal, but it noted that "on a different and more complete record, such as might be adduced by a competitor in an opposition proceeding, we might arrive at a different result on the issue of genericness, but we must base our determination herein on the record now before us."

Read comments and post your comment here.

TTABlogger comment: I should ask my friend, Ian Mullet, what he thinks about this.

Text Copyright John L. Welch 2022.


At 8:35 AM, Anonymous Anonymous said...

Pennyfarthing is the generic term for a bike with an oversized front wheel. Popular in 1890's. Mullet is the generic term for the "Business up front. Party in the back." hairstyle. Popular in the 1980's. Any questions?

At 11:02 AM, Blogger Ian Mullet said...

Hi John, Thanks for the shoutout! - Ian

At 11:31 AM, Anonymous Anonymous said...

As a long-standing member of the relevant public, this is the wrong outcome. Everyone in the mountain biking community knows mullet means a hybrid wheel configuration. Every bike shop would show you different brands with that configuration, if you asked for a mullet. Never heard of the term used for bicycle branding, an obscure brand for sure. The examiner could have done a better job here.

At 12:13 PM, Anonymous Anonymous said...

There are also "mullet" drivetrains for bikes, particular for gravel bikes. These mullet bikes do not have different sizes of front and rear wheels. Instead, they mix road and mountain bike (MTB) drive components. These mullet bikes have a road bike drop handlebar, a single chainring (the one the pedals are connected to), a wide-range MTB cassette (the gears on the rear wheel), an MTB derailleur on the rear, and road bike shifters up front. The wide-range cassette and MTB derailleur are the "party" and the road handlebar and shift levers are the "business" - hence the mullet name (all business up front, party in the back).

At 6:44 PM, Anonymous Anonymous said...

According to the evidence, Mullet was using the mark and adopting two different wheel sizes on their bikes long before everyone else. It also seems like more established brands were trying to enforce genericide while the litigation was ongoing. Many other established brands are naming this configuration MX or mixed wheel bike. Why not call it a 79er like the 29er and 26er since that's the descriptive terminology. The most important evidence provided seemed to be the established secondary use of the mark, which nullifies the likelihood for genericness.

I assume TREK regrets abandoning the trademark for Mullet.


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