If you have heard of the Kardashians, then you will certainly know what a driving force a family can be in business, and if you are considering launching a line of goods or services of one category and you wish to economize on promoting more of the same in the future, read on to find out how a family of marks might be useful!
WHAT MAKES A FAMILY OF TRADEMARKS?
A family of marks, also known as a series of marks, is made up by at least a couple of trademarks that are distinctive due to a single common characteristic or element, and this will be a word or figurative element, for example. The element most commonly used in commerce is a prefix or suffix, but in general it can be a distinctive characteristic in some other form. It is important that this is a characteristic used in the same way in each mark, for example always placed in the same position.
EXAMPLES:
Nestlé — a major global food company, is an excellent example of use of a family of marks to build a portfolio! The word element that is present in the names of many of the concern’s products is the Nes prefix — and thus in grocery stores there are Nestea drinks, Nescafe coffee, Nespresso coffee machine capsules, Nesquick breakfast cereal, or also Nesvita.
In turn another company, Tru Kids, which sells baby and children’s toys and products, uses in its portfolio the characteristic ”R” Us at the end of the mark, and sells these articles in the stores Toys “R” Us, Kids “R” Us and also Babies “R” Us . In these shops, the Rewards “R” Us loyalty scheme is also available to consumers. This brand name system leaves consumers in no doubt that the products purchased in each of these shops originate from the same company!
THE DEVIL IS IN THE DETAILS. DISTINCTIVENESS
A factor that is especially important when creating a family of marks is that the characteristic common to each mark must be distinctive - and this is distinctiveness per se or acquired through use.
GROUPS OF TRADEMARKS FOUND NOT TO BE A FAMILY.
EUTM no. 018062289
· PIZZA!PIZZA! US 1399730
· CHEESER! CHEESER! US 1973718
· CRAZY!CRAZY! COMBO US 2941513
· EXTRA!EXTRA! US 3678190
· HOCKEY!HOCKEY! US 3832400
· MEATSA!MEATSA! US 1801643
· PARTY!PARTY! PACK US 1594701
· PEPPERONI!PEPPERONI! US 1813907
· PICNIC!PICNIC! US 1757061
· SLICE!SLICE! US 4344357
Proprietor: Little Caesars
USTPO ruling: the series of word trademarks does not form a family because they are not distinctive even though all of the marks contain exclamation marks and are in principle double-word.*
EUTM 002089480
EUTM 2653087
EUTM 8144743
Proprietor: Colgate-Palmolive Company
EUIPO ruling: The common element ‘AROMA THERAPY’ is weak and in any case it would not allow a direct association between signs formed by this element. **.
*LC Trademarks, Inc., serial number 85890412 (TTAB ruling of 29 December 2016),
**Opposition B 2 240 979, Colgate-Palmolive Company vs Stephen Cordina (Opposition Division, 8 January 2015).
THE DEVIL IS IN THE DETAILS. USE.
In addition, undertakings must use the mark in a way enabling customers to recognize the common characteristic in each trademark and associate the trademarks with the undertaking from which the goods or services in question originate. As a result, consumers begin to perceive particular individual brands as somehow forming a multi-product brand.
THE DEVIL IS IN THE DETAILS. CONCEPTUAL LINK.
Ultimately, the detail that makes consumers perceive any group of marks that share a common element as a family is the conceptual similarity of goods or services designated by the family mark.
Thus in the example of the described Nestlé brands, this is food and drink (Nestea, Nescafe), and in the case of Toys “R” Us this is articles for small children, for example.
BENEFITS IN BUSINESS.
When a new product is launched that bears a trademark that is part of a family, consumers will already be familiar with the previous ones, and will associate it with the same undertaking considerably more quickly. They will transfer, even if subconsciously, the impression they have of the previous products to the new product and the characteristic marking.
The fundamental benefit of this strategy is the savings in marketing costs, as all of the previous marks in the family will help to make the new product popular and the trademark recognizable! A family of marks also has a positive effect on consumer purchase decision-making; as they eliminate the fear associated with purchasing a new, unfamiliar product or service.
ADVERTISING A FAMILY OF MARKS.
The condition that a family of marks of an undertaking must be recognizable to consumers due to a characteristic demonstrating the same origin is particularly difficult to fulfill in practice. A further measure that undertakings can take to reinforce the image of their family of marks in consumer consciousness is collective advertising of the products or services in question. McDonald’s advertisements are a good example of this:
https://www.youtube.com/watch?v=nqnwfulsVXs
https://www.ispot.tv/ad/qT6P/mcdonalds-buy-one-get-one-for-1-add-some-mmm-to-your-day
LEGAL BENEFITS.
Registering a family of marks can be equally beneficial in legal terms for an undertaking as it is in marketing terms. This is supported by the fact that the protection afforded by a family of marks may be greater than the sum of the marks in the family. The CJEU has found that where a mark is part of a family of registered marks, this can render it more distinctive, provided that a sufficient number of marks is used***.
***Case C-234/06 P, Il Ponte Finanziaria SpA v Office for Harmonisation in the Internal Market (OHIM)
LEGAL BENEFITS. OPPOSITION.
In turn, greater distinctiveness of a mark within a family can be a powerful weapon for an undertaking in opposition proceedings against other undertakings wishing to register a trademark with an identical or similar distinctive characteristic to the characteristic that creates the family of marks.
In this context, the strong point of a family of marks is that an opposition can be successful even when individual review of a conflict between a single mark and a subsequently registered mark would result in the opposition being rejected!
IP INSIGHTS. A FAMILY OF MARKS IN THE CASE OF OPPOSITION.
Did you find the subject of a family of marks interesting, and do you want to know more about how to make effective use of the family’s superpowers in opposition cases against other undertakings? Follow our profile closely and be the first to read the next post in the IP Insights series!
HAVE MORE QUESTIONS? CONTACT THE AUTHOR!
Natalia Biernat
Legal Trainee