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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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

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

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

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Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

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

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

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

Merely Descriptive Trademarks  

Merely Descriptive Refusals

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

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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