If you are Samuel R. Mott, founder of Mott’s LLP, apparently the answer is no. Mott’s LLP filed applications to register “MOTT’S” for “baby foods” and “packaged combinations consisting of fresh fruit.” (Serial Nos. 85/374,805 & 85/436,615)
The Trademark Trial and Appeal Board (“the Board”) refused to register the marks set forth in these applications because Samuel R. Mott was not famous enough to fall within the historical figure exception which allows registration of surnames as trademarks. The Board found “Mott” to be merely a surname.
You may also want to check out fellow blogger John Welch’s post as he has also written on this surname refusal.
In determining whether a mark is a mere surname, the Board looks at:
- Whether the surname is rare;
- Whether anyone connected with the applicant has the term as a surname;
- Whether the term has any other recognized meaning;
- Whether the term has the “look and sound” of a surname; and
- Whether the manner in which the mark is displayed might negate any surname significance.
In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332, 1332-33 (T.T.A.B. 1995).
With respect to “MOTT’S,” the Board found the surname was not rare. Indeed, “Mott” had appeared over 5,000 times in a nationwide directory of names and over 17,000 times in United States Census Data. Second, the company was founded by Samuel R. Motts (although no one with the surname currently worked there). Third, “Mott” had no significance other than as a surname. In contrast, a term such as “KING” could be a surname (e.g., Martin Luther King, Jr.) or it could signify the ruler of a country. Fourth, “Mott” looked and sounded like a surname. It did not look like an acronym or a unique coined term. The Board found that the fifth factor did not apply because Mott’s LLP sought to registration of “MOTT’S” in standard character form.
To overcome the initial refusal based on being a surname, Mott argued that Samuel R. Mott is a historical figure under the exception to a surname refusal. The Board disagreed, finding that Samuel R. Mott did not do anything extraordinary to achieve notoriety. However, Samuel Mott is in good company. The Board also found Ronald McDonald did not achieve notoriety to overcome a surname refusal for the mark “McDonald’s”.
Who would be considered famous by the Board? DA VINCI fell within the historical figure exception. The Board found that the painter Leonardo Da Vinci had achieved notoriety to allow registration of the mark. Likewise, SOUSA was registered as a mark because John Phillips Sousa had achieved notoriety as a composer of patriotic music.
Who do you think would be considered a historic figure? What about Mehlin & Sons? (No.) Pickett? (Yes – Pickett was a Famous civil war general.) Watson? (No.) McKinley? (No, his presidency was not seen as having particular significance.) Which Presidents do you believe the Board would say had historical significance? Which ones did not?
I doubt that my last name Blofield has any historical significance. I have not done enough research to know if the surname is rare. It does, however, have significance other than as a surname—namely, as a village and civil parish in Norfolk, England. Indeed, my relatives hale from there. Accordingly, if I tried to register my surname the Board could also affirm a denial on the basis of it being a geographically descriptive mark (a topic for another day.)
It would be interesting to see if the Board would affirm a denial of “Blofeld” as a surname. If the Board determined it was primarily a surname, the applicant could argue that Ernst Stavro Blofeld had achieved historical significance as a super villain from the James Bond novels and films.
My mother’s maiden name DUCHAMP has a handful of registrations. The Duchamp Holdings Limited Company in the United Kingdom has registered the DUCHAMP mark for cuff-links, shirts, ties and scarves, among other things. It is likely that if there had been a surname refusal (I have not studied the applications and histories so I do not know if it was argued), the French-American painter, sculptor and writer Marcel Duchamp would likely qualify for historical significance. I saw several of his pieces of work when I was at the Guggenheim Museum in Venice (I am not sure if the one pictured below was the exact version but it was one of them).
Do you think your surname would be able to be registered as a trademark?
Nude Descending a Staircase, No. 2
French: Nu descendant un escalier n° 2