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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