Sarah Duncan d/b/a Loved by Hannah and Eli, Inc. (“Duncan”) applied to register the mark MAMA BEAR for clothing in Class 25. The Examiner refused registration. Registration refused on the basis the mark fails to function as a trademark to indicate the source of the goods. The Examiner noted the mark also fails to identify and distinguish the goods from others. Duncan appealed the rejection to the Trademark Trial and Appeal Board (TTAB).
Regarding the mark functioning as a trademark, the threshold inquiry is whether purchasers or potential purchasers perceive the goods as a source identifier or as merely communicating the ordinary meaning of the words. The more commonly used the phrase, the less likely the public will use it to identify only one seller. Accordingly, the less likely the mark can achieve trademark status.
The Examiner argued that MAMA BEAR is a commonplace expression used by a wide variety of sources. Accordingly, he provided evidence supporting his assertion from a variety of dictionary definitions and references in literature. The definitions include a female bear rearing bear cubs. Alternatively, the slang defines the phrase as a woman who is extremely protective of her children. In addition, he provided several third party websites selling clothing and other personal items with MAMA BEAR or variants thereof. Finally, he asserted this widespread use of the phrase shows consumers perceive the phrase as conveying a message as opposed to indicating the source of the goods.
Duncan argued there are several third party MAMA BEAR trademark registrations. Accordingly, the Trademark Office acted in an inconsistent and arbitrary manner in denying her application. Duncan also argued her mark is not merely informational and her use on hangtags proves use as a trademark.
TTAB opinion on MAMA BEAR
The TTAB found that Duncan provided no restriction on the channels of trade or classes of consumers, except to exclude babies and children. Accordingly, the consuming public comprises all potential purchasers of clothing worn by adults. They noted the evidence of widespread third party use supports a finding the broader class of consumers would perceive only the common meaning of the phrase of aggressive protective parenting.
The phrase is used by many different sources on T-shirts such that the display of the words itself are an important component of the reason consumers purchase the product, not associating it with a particular source. Such common use makes it less likely the public would associate the phrase with a single common source. Accordingly, the TTAB found the mark fails to function as a trademark.
This case exemplifies commonplace expressions are unlikely to function as a source identifier, particularly if many different third party sources use the phrase in an ornamental sense. Consumers purchase the goods for the message conveyed, not as a source identifier.
The more commonly used the phrase, the less likely it qualifies for trademark protection.