To discover the superpowers a business wields with a registered family of marks compared to typical trademarks when an opposition notice is filed, read today’s post!
OPPOSITION
An opposition is a means of preventing registration of a trademark identical or similar to an earlier trademark registered for the same or similar goods. During an opposition procedure, the proprietor submits information proving similarity of their trademark and the contested trademark, and the competent authority evaluates them among issues such as visual, phonetic, and conceptual similarities.
However, at times, decisions made by authorities and case law require stringent criteria to be applied when considering such a case, and sometimes a difference of a mere two letters can lead to the conclusion that confusion does not occur even when there are common features.
ASSESSMENT OF A FAMILY OF MARKS
Meanwhile, the same trademarks may be assessed in different ways when an opposition procedure concerns multiple marks indicated together as a family, and not a single mark.
In such a case, the criterion for finding confusion to arise due to a subsequent trademark is not only similarity in a literal sense, but above all whether a consumer might mistake the subsequent trademark for a mark that is part of a particular family and associate it with the proprietor of the family of marks. This occurs mostly when there is a common, recurring word element that is characteristic for the whole family, at the beginning (such as Nesvita, McChicken), in the middle, or at the end.
EXAMPLE:
Registered trademark:
W 1634638
Proprietor: Ömer Sekman
Family of marks cited in the notice of opposition:
- AIR MAX (EUTM 000277665)
- AIR ZOOM (EUTM 000252346)
- AIR FORCE I (EUTM 007534101)
Proprietor: NIKE Innovate C.V.
Decision of the Lithuanian authority, opposition notice PTZ-329 (decision of 19 December 2022): finding the opposition justified in full.
BURDEN OF PROOF
It is important to note that the burden of proof lies with the business undertaking that indicates the trademarks as a family, and thus they have to prove the following in the notice of opposition:
- a family of marks exists and is in use;
- the features common to the contested mark and the family of marks with which it is compared, being the features that might suggest to a consumer that the contested mark is part of the family;
- that the goods or services denoted by the family of marks are similar or identical to those given in the application for the contested mark.
SIMILARITY AND CONFUSION
Often, the factor that determines whether an opposition notice is successful is whether the goods or services are the same or similar. For example, in the case described above, which was won by NIKE Innovate C.V., the authority paid great attention to the question of goods in class 25 being identical or similar. This was because the subsequent mark was registered for goods such as clothing, including underwear and outer garments, not being protective clothing for special use; socks; scarves, bandannas, women’s scarves, and belts; while the NIKE trademarks were registered earlier for various goods in classes 18, 25 and 28, including clothing, footwear, and headwear in class 25.
The authority also mentioned that a close similarity of goods may counterbalance a low level of similarity of the marks. In addition, "clothing, footwear, and headwear" are goods used daily and intended for the general public, and for this reason the level of customer attention is likely to be low.
On the other hand, citing a family per se will never guarantee success. If no conceptual link is established between the products denoted by the contested mark and the family, the authority cannot find that there is a risk of confusion on the part of consumers as to the origin of the goods or services.
MORE IS BETTER?
Not in every case! In opposition case no. 91192733, Virgin Enterprises Ltd. contested registration of the trademark VIRGINFARMS, citing no less than 47 trademarks indicated as the family of marks with the common element Virgin. The USTPO rejected the opposition notice, however, finding that the application for the subsequent mark concerned products such as seeds for planting, while Virgin Enterprises products and services were related to entertainment, telecommunications, transport, and travel. This meant that there was no risk of consumers making a connection between the marks, and at the same time the number of marks in the family, or their popularity, was irrelevant.
Proprietor: Steven E. Moore
US 4259597
Proprietor: Virgin Enterprises Ltd.
US 4559134
LONG-TERM STRATEGY
As the protection afforded by a family of trademarks is greater than the than the sum of the marks in the family, devising a business strategy that envisages building a family of trademarks in the portfolio is an investment that will certainly yield a return.
After all, is there any firm that would not wish to be more recognizable or have a loyal customer base awaiting the launch of the next products?
HAVE MORE QUESTIONS? CONTACT THE AUTHOR!
Natalia Biernat
Legal Trainee