A Family of Trademarks

What is a Family of Trademarks?: A family of marks is defined as “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.

At the trademark application stage, a family of marks is not a concept that an applicant can use to help them refute a likelihood of confusion issue:

TMEP 1207.01(d)(xi)    Family of Marks

A family of marks is defined as "a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner." J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a phrase, or a component in the nature of a prefix or suffix.

The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB), amended by 1992 TTAB LEXIS 27 (TTAB 1992).

Moreover, a family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding; instead, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) ; see also In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965) ("[I]n view of the specific prohibition of Section 2(d) . . ., the fact that applicant may possess a ‘family’ of marks characterized by the term ‘ALD’ is of no particular significance herein if the mark for which applicant now seeks registration . . . is confusingly similar to the previously registered mark . . . .").

It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chem. Co., 166 USPQ 218, 219 (TTAB 1970) . Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. See In re Hitachi High-Techs. Corp., 109 USPQ2d 1769, 1772 (TTAB 2014) ; In re Mobay Chem. Co., 166 USPQ at 219.

See TMEP §1212.06(e)(v) regarding the use of evidence of a family of marks to support of a claim of acquired distinctiveness.

As the Trademark Board observed: “In comparing [the senior user's] family of marks with [the junior user's] mark, the question is not whether [the junior user's] mark is similar to [the senior user's] individual marks, but whether [the junior user's] mark would be likely to be viewed as a member of [the senior user's] family of marks.”§ 23:61.The family of marks rule, 4 McCarthy on Trademarks and Unfair Competition § 23:61 (5th ed.)

Why use a family of marks? Broader protection and a sharing of goodwill between products. Family marks can promote a positive spillover of the presumption of quality and authenticity that can remove some of the barriers to purchasing unknown products or services. The total protection afforded a family of trademarks may be greater than the sum of the trademarks in the family.

“The classic example is Eastman Kodak Company's family of KODA marks including Kodacolor and Kodachrome.” Other famous companies which have benefitted notably from the “family of marks” doctrine are McDonald's and Toys “R” Us.

Thus Aussie Pro was held confusingly similar because it appeared to be another member of the family of marks which included Aussie Curing Muddy Conditioner, Aussie Dry Climate Mousse, Aussie Gelloteen Gel, Aussie Hair Insurance Conditioner, Aussie High Humidity Mousse, Aussie Instant Conditioner, Aussie Mega Shampoo, Aussie Mega Styling Spray, Aussie Moist Shampoo, Aussie Permanent Wave Insurance , Aussie Scould Spray Gel, Aussie Sprunch Spray, Aussie Styling Gel, Gramma Redmond's Aussie Natural Baby Shampoo, Australian Hair Citrifier, Australian Hair Salad Remoisturizer, and The Australian 3 Minute Miracle.

Similarly, Sundance was held confusingly similar to the family of marks which included Sun, Sunsoft, Sun Site, Sunexpress, Sun Workstation, Sun Microsystems, Sun (stylized), Sun (and logo), Sunlink, Sunpics, Sunstart, Sunspectrum, Sunservice, Sun Microsystems Computer Company, Sun Microelectronics, Sundials, Sunergy, Sun Shield, Sunbuttons, Sunnet Manager, Sun Netra, Sunos, Sun Ultra, and Sunphigs.

§ 21:47.Comparisons between marks—Influence of a “family” of marks; comment on nature of a family of marks, 5 Callmann on Unfair Comp., Tr. & Mono. § 21:47 (4th Ed.) (Internal citations omitted)

How to Establish a Family of Marks: Use and promote distinctive (i.e., not descriptive, so highly suggestive, or so commonly used that it cannot function as a distinguishing characteristic of the party's mark) family marks together in such a manner as to create public recognition coupled with an association of common origin predicated upon the family feature.  See Marion Laboratories v. Biochemical/Diagnostics, 6 USPQ2d 1215, 1218 (TTAB 1988). Call them a family! Opposer did not establish “family” of marks having term “Trek” in common with each other for bicycles and bicycle-related products, even though record shows that opposer has adopted and used several marks incorporating this term, since there is no evidence that opposer has promoted these marks together, or has referred to them as members of family of “Trek” marks. Trek Bicycle Corp. v. Fier, 56 USPQ2d 1527 (TTAB 2000).

Less Than A Family of Marks: Even without establishing a family of marks, the fact that a party has used variations of its mark by adding matter to it increases the likelihood that someone else’s mark that was also a variation would be perceived as an additional variation of the original party’s marks.  See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1700 (TTAB 1987) (noting that this point is relevant even where a family of marks has not been proven, citing Varian Associates, Inc. v. Leybold-Heraeus G.m.B.H., 219 USPQ 829 (TTAB 1983)).

Beware of Overreaching! A Mark consistently used by applicant on each of its three pharmaceutical products is, by definition, a house mark, but applicant may not register that mark for description which states "a full line of pharmaceuticals. "The TMEP (Trademark Manual of Examining Procedure) does not indicate the minimum number of goods/services required for an applicant to register mark for a “full line” of those goods or services. The TTAB found that an application to register a mark for a full line of pharmaceuticals, based upon use of mark on only three products, does not justify such broad description. In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1998)

Building a Family of Marks takes some planning and strategy. Searching for open space to grow is a great first step, losing a family because of infringement on someone else’s marks can be fatal to a product line or service line. Call us--we can help  you strategize to build a strong family of trademarks.