Failure to Function as a Trademark?

Each case brought before the Trademark Trial and Appeal Board (“TTAB”) raises a unique issue of trademark law, and provides new insight into how trademark questions are decided.  Recently, the refusal to register the mark MAMA BEAR, applied for in connection with various clothing products, was appealed to the TTAB. The resulting analysis focused on whether or not the phrase MAMA BEAR functions as a trademark. In short, is it eligible for the protection of registration? Or is it a message which “merely conveys ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace?”

The Trademark Examining Attorney had denied the original application for registration on the grounds that the mark was not a trademark, as it failed to, “…indicate the source of Applicant’s goods and to identify and distinguish them from the goods of others.”

In order to be entitled to the protection of registration, a trademark must identify the applicant as the source of particular goods or services. Here, the TTAB had to conduct a failure-to-function analysis. This analysis looked at whether or not the mark did identify the applicant as the source of the goods in the mind of the consumers, or if the mark was simply a common, widely-used phrase that didn’t identify any particular source. A failure-to-function analysis examines all of the evidence on the record. Often times, this will include the Applicant’s use, dictionary definitions, and third-party uses of the term, to determine how potential consumers are likely to view the product.

The TTAB found, once all evidence had been reviewed and an analysis conducted, that MAMA BEAR was a “…common, widely used and generally understood term to convey a message of an ordinary or familiar concept or sentiment – aggressive protective parenting.” The phrase is one that consumers would expect to see on clothing items, but not necessarily to identify any particular brand. Thus, the TTAB determined that the mark did not serve as a designation of applicant as the source of the clothing. Therefore, the mark was not entitled to registration.

Ultimately, in this case, the TTAB denied the applicant’s appeal to register the mark MAMA BEAR.

So does this mean that the phrase MAMA BEAR can never serve as a trademark or be entitled to the protection of a USPTO registration? Not necessarily. Throughout these proceedings, the applicant brought up several examples where the phrase MAMA BEAR is present within registered marks. However, each of those marks either contains additional words, phrases, or images making it distinctive, or is arbitrary when applied to the respective goods and services set forth in those registrations. These may seem like small or unimportant distinctions, but they can be crucial when determining issues of trademark law.

Kloss Stenger & Gormley LLP is a firm with experienced attorneys ready and able to help you with any trademark questions or concerns. Contact us today to get started.

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