A Family of Trademarks (also known as ‘House’ marks in some cases)

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. (See TMEP 1207.01 at http://likelihoodofconfusiontrademark.com/TMEP1207.html for more information.)

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.

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 build a strong family of trademarks.

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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter

Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies

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