Frequently, I’m approached by trademark owners who want to create a series of related trademarks. They have heard of a trademark family and they want to create one. Since there are some misconceptions about trademark families (and trademarks generally), I’d like to explain what we mean when we talk about a “family” of trademarks.
First of all, a trademark is created by using words or symbols that denote the source of goods or services, as seen by the buying public. This point is frequently misunderstood. One critical factor in establishing, maintaining, and enforcing a trademark is the answer to the following question: Do consumers of the goods or services recognize the words and symbols as associated with the maker of those goods or services? When the answer is yes, this is the essence of an enforceable trademark.
Creating a family of trademarks
A family of trademarks is a group of trademarks that (1) has a recognizable common characteristic, (2) that is distinctive, and (3) that is used so that the purchasing public recognizes the common characteristic to indicate that the trademark owner is the common origin of the goods or services.
Often, the common characteristic is a prefix or suffix. Perhaps the most famous family of trademarks is owned by McDonald’s. It won’t take you long to see why. Think McMuffin, McNuggets, and McCafe. Who hasn’t shopped atToys”R”Us, which owns a family of trademarks that includes Babies”R”Us, Rewards”R”Us, and the “R”Us Credit Card. The common characteristic does not have to be a prefix or suffix but it does have to have to be distinctive.
On the other hand, a group of loosely associated trademarks is not a family of trademarks. For instance, Little Caesar’s Pizza was denied registration of DEEP!DEEP! DISH PIZZA. Little Caesar’s argued that DEEP!DEEP! DISH PIZZA was part of a family of double-word trademarks, the most famous being PIZZA!PIZZA! The U.S. Patent and Trademark Office rejected Little Caesar’s application on the grounds that the DEEP!DEEP! DISH PIZZA trademark was descriptive and lacked a common characteristic with the existing mark, PIZZA!PIZZA! (which was previously registered). Descriptive trademarks are not distinctive and a trademark owner usually can’t claim exclusive rights to them for obvious reasons.
However, a descriptive trademark can become distinctive if the public associates it with the goods or services of the trademark owner. The marks that become so well-known that they meet this criteria are truly exceptional. For example, Coca-Cola is a mark comprised of what were originally two descriptive terms. Over time, the mark acquired distinctiveness to such a great extent that today, the purchasing public no longer recognizes the descriptive aspects of “coca” and “cola,” and instead immediately associates Coca-Cola with the brand. This is called “acquired distinctiveness. Acquired distinctiveness usually is acquired through prolonged use.
Reasons to establish a family of trademarks
There are a few reasons to develop a family of trademarks. (1) each successive trademark strengthens the original or root brand. Every time McDonald’s launches a new product with a “Mc” name, it further strengthens the McDonald’s brand and discourages creeping infringement by a competitor or anyone who would use “Mc” in a brand. (2) each successive trademark has more immediate recognition and distinctiveness. The consuming public will more quickly associate the goods with the original brand and the family of trademarks.
A family of trademarks is really about strengthening a particular brand than creating a loosely associated group of trademarks. They can be a great way to strengthen and expand a brand if the owner understands them and their use.
For more information about trademarks and families of trademarks, please contact Eric D. Morton at 760-722-6582 or emorton@clearskylaw.com. Eric is a former professor of trademark law who was also the supervising attorney at the California Western School of Law Trademark Clinic.