A Trademark Battle is Raging Over the Word “Mullet”

When YT, Transition, Evil and Santa Cruz released mixed-wheel bikes in the past month, the word “mullet” was conspicuously absent from all of their branding and press communications. It gave me hope. Well before this rush of new models arrived, I’d been baiting my industry friends into tedious conversations about whether that word may be damaging the legitimacy of the mixed-wheel concept. I wondered if we were beginning to grow out of it. But then, one of those industry friends suggested that Mullet Cycles, perhaps history’s only exclusively mixed-wheel bike brand, might have something to do with the word’s sudden absence. They might–and should–have the word “mullet” trademarked. It turns out they do … sort of.

Mullet Cycles was founded in 2017, and in 2018 introduced a hardtail called the Honeymaker, followed in early 2021 by the full-suspension Peacemaker. Mullet Cycles are distinctive not just because every one of them is built around mixed wheel sizes, but because, so far, every one of Mullet Cycle’s models has elevated chainstays to make room for up to 3-inch tires while still having a remarkably short rear-center. We don’t know how short, though, because Mullet Cycles has been notoriously quiet about their geometry. You won’t find a head angle or wheelbase listed on their site either. Only the numbers that are essential to sizing are public. 

Reason being, Mullet Cycles has taken steps to protect their approach to the mixed-wheel concept, and that includes trademarking the name “Mullet” as it relates to bicycles. But if you know anything about trademark law, you know that it can get complicated. You might also know that it is all public record, and the back and forth between Mullet Cycles and the U.S. Patent and Trademark Office (USPTO) is pretty easy to search. 

On the USPTO website, you can find two “dead” trademarks using the word “mullet” originating from the bike industry. “Dead” means that they were abandoned by the holder or applicant and are up for grabs. One was owned by Trek which, along with Gary Fisher, had a dirt-jump bike in the mid 2000s called the Mullet, but they let that trademark die in 2012. The other is by Alchemy Bikes, which wanted to call the mixed-wheel version of the Arktos that they introduced in 2019, the “Mullet.” There’s even a photo on file with the USPTO of an Arktos frame with the word “Mullet” on the toptube. That application for trademark protection was refused for a few reasons, principal among them is that Alchemy’s application was predated by that of Mullet Cycles.

 

 

Mullet Cycles was founded by Michael Vidovich and Miles Schwartz. A while before the two met, Vidovich had been experimenting with mixing wheel sizes at his Colorado Springs bike shop. He had a design in mind, and eventually formed a relationship with Foes Racing in 2015, resulting in a mixed-wheel full-suspension bike called the Mixer. Vidovich parted ways with Foes Racing soon after, which is around when he met Schwartz. Originally from Brooklyn, Schwartz was running (and still runs) accessories brand Miles Wide Industries. He was on a dealer tour when he stopped by Vidovich’s shop, took a Foes Mixer out for a spin, and was immediately sold on the concept. The two then worked together to design their first frame and eventually christened it under the brand name Mullet Cycles.

Fast-forward to 2017, when Mullet first registered their domain name, mulletcycles.com along with a few other variations. All the URLs they could think of were available, and no other brand had used the name “Mullet” on any model, mixed wheel or otherwise, aside from the defunct Trek and Gary Fisher. In December of 2018, they began the process of applying for trademark protection for the name “Mullet,” and it was then published in the Trademark Official Gazette in May of 2019. The TMOG is essentially a message board where new marks are regularly posted for public review and, within 30 days, “Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board.”

That is exactly what happened. The notice of opposition, also called a letter of protest, is not readily available from the USPTO, and we would likely need to file a Freedom of Information Act request to know who sent the letter of protest and what it contained. But whoever sent it convinced the USPTO that the term “mullet” is “generic,” and the approval of trademark protection for the brand name “Mullet” was denied. Below is the most relevant portion of the refusal letter sent from the USPTO on September 15th, 2019.

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

The applicant has applied to register the mark MULLET (standard characters) for “bicycles”.

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 The examining attorney refers to the attached third party web pages showing that MULLET refers to bicycles that have wheels of different sizes in the front and back.  Most commonly, the bicycles will have a larger front wheel and a smaller rear wheel.  See attached third party web pages showing use of the mark in connection with a variety of bicycles.

 Since MULLET is a descriptive term of art in the bicycle industry, the term is merely descriptive within the meaning of Section 2(e)(1) of the Trademark Act because the average prospective purchaser of the service, when encountering the mark in connection with the services, would immediately perceive a feature of the services.  In re Omaha National Corporation 2 USPQ2d 1859 (Fed. Cir. 1987).

 For the foregoing reasons the wording of the mark merely describes a feature or characteristic of the goods and/or services being offered.  Accordingly, registration is refused under Section 2(e)(1) of the Act.

 Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

Looking at all this from out here in June of 2021, this seems like an open and shut case. Many of us have been using the word “mullet” to describe mixed-wheel bikes for years. Maybe even before mid-2017 when Mullet Cycles had its first timestamped evidence of taking Mullet as a brand name. I found a few forums and comment sections in 2016 that use the word pretty casually, with an apparent assumption that readers would already know that the word was referring to mixed-wheel bikes. Way back in 2010, there was an MTBR.com forum about 26 / 29 mixed-wheel bikes that calls them mullets in passing, and the following comments didn’t seem confused about what it meant.

Miles Schwartz, who is now at the helm at Mullet Cycles, doesn’t make any claims of having coined the phrase, “Mullet.” But Mullet Cycles is the first bike brand (aside from Trek) to have used it commercially. This is where we can see how murky the waters of trademark protection are. Yes, the word “mullet” has clearly become a generic term for mixed-wheel bikes in 2021, and generic terms are absolutely ineligible for trademark protection. But it was not that clear four years ago when Mullet Cycles was founded, especially to people at the USPTO who don’t regularly read 2,000-word thinkpieces about trends in mountain-bike wheel size. They judge based on an extensive but imperfect system of guidelines. One of those guidelines central to this case is the phrase “merely descriptive,” used in the above excerpt. The word “merely” means “only,” meaning they claim that “mullet” is only a description of a characteristic of a bicycle, and not “arbitrary” or “fanciful,” like, say, Ibis, Schwalbe or even Alchemy.

Somewhere between the two is what is called a “suggestive” mark that requires some imagination or explanation to connect it to the product. These aren’t as easy as arbitrary or fanciful marks to protect, but are easier than a merely descriptive one. These are the grounds on which Mullet Cycles are basing their defense. Their initial response to the refusal, written on October 18th, 2019, is much longer than the refusal itself, but below is an excerpt that covers a portion of Mullet Cycles’ position.

MULLET is defined as “a man’s hairstyle in which the hair is cut short at the front and sides and left long at the back,” see Exhibit A, attached hereto and incorporated by reference herein. If MULLET were truly descriptive of bicycles the evidence provided would demonstrate at least some combination of a smaller front wheel with a larger (longer) back wheel. This is clearly not the case. In fact the opposite appears to be true; evidence cited by the Examining Attorney seems to suggest “mullet” bikes have a larger front wheel with a smaller rear wheel. So for at least this reason, MULLET does not immediately convey a key, primary, intended or significant characteristic or feature of Applicant’s bicycles for there is no example of a bicycle with a rear wheel larger than the front wheel. 

Applicant asserts its MULLET mark is, at worst, suggestive of a bicycle with mis-matched parts. “[S]uggestive marks are those that, when applied to the goods or services at issue, require some imagination, thought or perception to reach a conclusion as to the nature of those goods or services. In re Atavio Inc., 25 U.S.P.Q. 2d 1361, 1362 (TTAB 1992); TMEP §1209.01(a). “Where such imagination or forethought is required to reach a conclusion as to the nature of a key characteristic of goods or services, a mark must be determined to be suggestive and not descriptive”. In re WSI Corp., 1 U.S.P.Q. 2d 1570, 1572 (TTAB 1986). Some imagination is required for a potential customer to see MULLET on a bicycle and conclude the wheels are not the same size.

These paragraphs were flanked by a dizzying list of legal precedents to back them up, but I’d need to speak the language to comb through them. The above argument actually kinda makes sense on its own, especially if you think back to before you ever heard a mixed-wheel bike be referred to as a mullet. The phrase was even below my radar when I built my first mixed-wheel bike, and that was just in the spring of 2019. 

I spoke with Schwartz ahead of this story, and he was surprisingly open about everything. “Mullet wasn’t common to hear back when we started. You’d only hear whisperings of it. This word, this name isn’t going to catch on as generic. So, it’s up for grabs. I figured they were going to call these 79ers or something.” (That happened to be exactly what I was calling it at the time). “To me, a mullet, it’s a hairstyle, it’s a fish, or it’s a big company.”

But if you look around, at least now, it seems that mullet is also a descriptive, generic term for a certain type of bicycle. That’s why all of the lingo used and all of the cases cited in Mullet Cycles’ appeals haven’t had any sway over the USPTO’s decisions. The September refusal letter listed above was only the first, and there have been three more since, the latest being only February 17th of this year.

But the thing is, nobody is telling Mullet Cycles they have to give up their name. They just may not be able to prevent other brands from using the word to name or describe their bikes. And more importantly, nobody is telling Mullet Cycles they have to cease doing business. And they don’t plan to. Anyway, Schwartz told me he’s expecting a re-supply of frames any day now.