Diageo, the Tanqueray brand owner is currently running billboard ads in the Twin Cities as part of its “Tonight We Tanqueray” ad campaign. A couple of years back when the campaign first was announced, Diageo explained it this way:

“One of the world’s most awarded gins, Tanqueray London Dry has just launched a substantial new global campaign ‘Tonight we Tanqueray’, positioning Tanqueray as the drink to set the tone to an evening, inviting consumers to start the night right.”

Did you notice the verbing of the Tanqueray brand and trademark? Nancy Friedman over at Fritinancy did last year. As risky as verbing can be for some brands, as we previously have discussed extensively here, here, here, here, and here, Diageo appears to have gotten this one right, making a number of choices consistent with our earlier checklist for mitigating the risk of genericide and avoiding a complete loss of trademark rights.

Diageo obtained federal registrations for TONIGHT WE TANQUERAY and the stylized version depicted in the ads shown above, two years ago. And, it appears another Tanqueray verbing tagline was federally-registered six years ago for READY TO TANQUERAY? — but unless a Section 8 & 15 Declaration is filed during the currently open grace period, it will die a natural death.

One of the non-legal consequences of using TANQUERAY as a verb in these taglines is that consumers naturally will fill in the blank on what the brand means to them so that they can ascribe meaning to the tagline. I suppose this invitation for engagement could be good or bad, depending on how the brand is perceived. Given the title of this blog post, I have filled in the blank for TANQUERAY to be synonymous with TOAST or CELEBRATE. What does the brand mean to you?

The ads shown above also depict something else we have written extensively about here: non-traditional trademarks. Note the classy and unspoken “look-for advertising” to promote the Tanqueray green/red color trade dress and bottle configuration (both federally-registered decades ago).

Last, for the history buffs out there, note the wonderful archive of product labels that can be obtained from the online records at the USPTO, here the front and back of a nearly century old product label for TANQUERAY gin, showing the USPTO’s mail room stamp from 1917:

Until seeing this specimen I hadn’t appreciated Tanqueray is the surname of the brand’s founder Charles Tanqueray.

It must be a very rare surname as the Diageo marks are the only ones in the entire USPTO database containing the term TANQUERAY. And, none of the registrations rely on Section 2(f) of Lanham Act for purposes of distinctiveness.

Have you ever met someone named Tanqueray?

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:

  1. Whether the surname is rare;
  2. Whether anyone connected with the applicant has the term as a surname;
  3. Whether the term has any other recognized meaning;
  4. Whether the term has the “look and sound” of a surname; and
  5. 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