The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential]. All but breaking with its past decisions on the doctrine, the Board has now announced the new rule that ex parte applicants may argue that a particular mark has acquired distinctiveness as part of a trademark family.

Family of Marks

A family of marks is “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.”[i]

The family of marks doctrine most frequently arises in the context of opposition proceedings or litigation in which a likelihood of confusion is alleged. However, even in opposition proceedings, the Board often rejects its applicability. For instance, in Consolidated Foods Corp. v. Sherwood Medical Ind., Inc., 177 USPQ 279 (TTAB 1973), the opposer owned over 45 registrations for marks such as CREAMSICLE, FUDGSICLE, FRUITSICLE, etc., and the Board did not find that it owned a family of “SICLE” marks.[ii]

In re Hitachi

The Board’s last precedential case involving the family of marks doctrine was In re Hitachi High-Technologies Corp., 109 USPQ2d 1769 (TTAB 2014). There, Hitachi’s application for the trademark OPTICROSS was refused on the ground that it was likely to cause confusion with the OPTI trademark and six other OPTI-formative marks owned by Optimize Technologies, Inc. At the outset, the Board emphasized that a family of marks may be properly established only in an inter partes proceeding, and not an ex parte prosecution because the USPTO lacks the necessary resources to explore how the putative family of marks is utilized in the marketplace, i.e., is it marketed in a manner likely to cause an association or “family” of marks. As the Board explained, “[t]he mere existence of similar registrations does not establish a family, but rather there must be recognition by the public that the shared characteristic (or ‘family surname’) is indicative of a common origin.”

Little Caesars

LC Trademarks, Inc., owner of Little Caesars Pizza’s trademarks (hereinafter “applicant” or “Little Caesars”), applied to register the mark DEEP! DEEP! DISH PIZZA for “pizza.” After the USPTO Examining Attorney initially rejected the mark on descriptiveness grounds, Little Caesars amended the application to seek registration under the acquired distinctiveness provisions set forth in Section 2(f) of the Lanham Act. 15 USC §1052(f). The applicant argued the DEEP! DEEP! double-word-exclamation-point component had acquired distinctiveness as its trademark based on Little Caesars’ extensive use of double-word-exclamation-point marks such as:

BABY PAN!PAN!                             BONUS!BONUS!

BIG!BIG! DEAL                               CAESAR SIZE!CAESAR SIZE!

BIG!BIG! PEPPERONI                   CHEESER!CHEESER!

BIG!BIG! SLICE                              CRAZY!CRAZY! COMBO

BIG!BIG!                                          CRAZY!CRAZY!

BIG!BIG! CAESAR                          CRISPY!CRISPY!

to name just a few.

The Examining Attorney rejected this argument, noting that: (1) it is USPTO practice to reject the family of marks argument in ex parte proceedings; (2) the family of marks doctrine cannot be a basis for a claim of acquired distinctiveness under Section 2(f); and (3) even if a family of marks could be the basis for claiming acquired distinctiveness, the applicant’s double-word-exclamation-point family is too broadly defined and would unduly hinder competition from competitors who may need to use descriptive double word combinations.

The applicant appealed.

The Major Refinement of the Hitachi Rule: An Applicant’s Evidence of a Family of Marks May Be Considered to Prove Acquired Distinctiveness in Ex Parte Proceeding

On consideration of the arguments in this case, the Board expanded its view of what is permissible under the trademark rules. While the Examining Attorney cited 37 CFR 2.41(a)(1) for the proposition that a claim of acquired distinctiveness may be based on an applicant’s ownership of registrations for the same mark, the Board noted that Rule 2.41(a)(3) permits “other appropriate evidence of distinctiveness” as well. Market evidence establishing a family of marks may be that “other appropriate evidence of distinctiveness” under the rule.

“Applicants have access to this sort of market evidence and information, unlike examining attorneys, and can advance and invoke the family of marks doctrine in the context of a Section 2(f) acquired distinctiveness analysis.” This market evidence is the sort of evidence that applicants in general already submit and examining attorneys already evaluate in determining if individual marks have acquired secondary meaning under Section 2(f). The Board here asserted that this stood in contrast to an ex parte likelihood of confusion analysis under Section 2(d), where the Board had reasoned that there would be insufficient marketplace evidence of how the putative family of marks was perceived.

The Evidence In This Case Failed to Establish Family of Marks

Although Little Caesars was permitted to argue that it owned a double-word-exclamation-point family of marks, and that DEEP! DEEP! DISH PIZZA had acquired distinctiveness as a part of that family, the Board held that Little Caesars failed to establish that claim.

The Board reiterated the well-established principle that mere ownership of a series of similar marks does not suffice to establish a family of marks. To prove the existence of a family of marks, the applicant was required to show that the purported family (1) has a recognizable common characteristic, (2) is distinctive, and (3) has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.” Little Caesars did not satisfy any of those three elements.

First, the Board found that, although it is theoretically possible that a common structure could be the common element of a family of marks, the double-word-exclamation-point “is too abstract to constitute a common characteristic that could give rise to a family of similarly-structured marks.” To hold otherwise would pave the way for Little Caesars to “enforce almost any descriptive word in the dictionary, as long as it repeats.” This would create an unacceptable risk to competition.

Little Caesars’ purported family also failed to satisfy the second required element, distinctiveness. Repetition of a word does not normally overcome its descriptive or generic nature. Double word marks like DEEP!DEEP!, punctuated by exclamation points, “are more likely to be taken as intensifiers than as source-identifiers.”

Finally, Little Caesars failed to satisfy the third element: that the marks containing the family feature have been used and promoted together in a manner sufficient to create public recognition of the family. The sales figures provided may show the popularity of the products but not necessarily consumer recognition of the mark as a source indicator. The sample advertising that applicant provided did not demonstrate its magnitude, geographic extent, duration, circulation or viewership. Moreover, the double-word-exclamation-point marks are always displayed with other marks, including the house mark, LITTLE CAESARS, making it difficult to determine whether consumers associated with double-word-exclamation-point marks with “Little Caesars” or just the name LITTLE CAESARS with the restaurant.

The Board concluded that the applicant failed to meet its burden of proving acquired distinctiveness, and affirmed the Section 2(e)(1) refusal.

***

In re Hitachi involved a final refusal to register a mark based on an alleged similarity with an alleged trademark family. Since the USPTO was the party citing the trademark family, it made sense for the Board to reason that there was insufficient evidence concerning consumer perception of that family. Hence the Hitachi rule that there could be no claim of a family in an ex parte §2(d) context. If, however, the roles were reversed and it was the applicant who was presenting the requisite evidence of the existence of a trademark family in the context of a §2(d) refusal, it would be unreasonable that the applicant should not be permitted to do so.

Although a Pyrrhic victory for Little Caesars, applicants may now argue the existence of a trademark family during ex parte prosecution, even in support of a claim of acquired distinctiveness. They just need more proof than Little Caesars offered.

[i] J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Mc” prefix found to be a protectable family “surname” for McDonalds’ products)

[ii] Id. at 282; see Nautica Apparel, Inc. v. Christine P. Palmerton d/b/a Par Yacht Charters, LLC, Cancellation No. 92056754 (TTAB October 21, 2015) (NAUTIGIRL & Design not confusable with or dilutive of NAUTICA); Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (TTAB November 23, 2004), (VIRGIN opposition to VIRGIN FARMS dismissed, despite opposer’s forty-seven (47) registrations for marks that constitute or include the word VIRGIN)