Friday, January 28, 2005

The TTAB's Dysfunctional "Family of Marks" Doctrine

The "family of marks" doctrine is often invoked by hopeful Section 2(d) opposers, but its applicability is almost always rejected by the Board. For example, recently in Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004) [not citable], Opposer Virgin proved use and registration of dozens of VIRGIN marks in various forms, but the Board turned a deaf ear to its claim to a family of "Virgin" marks. As usual, the Board cited J&J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991), for the proposition that "[s]imply using a series of similar marks, or the mere fact of registration of many marks with a common 'surname,' does not of itself establish the existence of a family."

In the J&J Snack Foods case, McDonald’s successfully opposed applications to register McDUGAL McPRETZEL and McPRETZEL in stylized forms for soft frozen pretzels. McDonald's relied on a family of marks "wherein the 'Mc' formative is combined with a generic name, including the marks McDONUT for doughnuts, McPIZZA for a pizza product, and McMUFFIN, McCHICKEN, and McRIB for sandwich-type products." J&J argued that its marks were not confusingly similar to any one of the McDonald's marks, and pointed out that McDonald's did not use or own the "Mc" formative by itself as a trademark. The CAFC, however, agreed with the Board that McDonald's owns a family of "Mc" marks, and that the public is likely to view J&J's marks as part of that family.

The J&J Snack Foods case, however, is not very informative as to what one must prove to establish a "family of marks." McDonald's extensively promoted its various marks using the "Mc" formative, and the CAFC noted McDonald's 1987 annual sales of more than $14 billion dollars. But there apparently was no evidence that McDonald's promoted the "Mc" formative by itself, or utilized any so-called "look for" advertising that would call attention to the "Mc" formative. Thus did McDonald's do anything more than use a series of similar marks? In Virgin, the Board said that mere use of "a series of similar marks" was not enough to establish a family. Why was it enough for McDonald's in the J&J Snack case?

A rare exception to the Board's general practice of rejection of the "family of marks" claim is found in Miss Universe L.P. v. Rainbow Productions and Publications, Inc., Opposition No.. 91122676 (November 10, 2004) [not citable]. The Board ruled that Opposer Miss Universe owns a family of MISS . . . USA marks for beauty pageants, but the decision provides virtually no analysis as to how the Board reached that ruling. [In any case the Board made no apparent use of the "family of marks" finding in reaching its decision.]

Perhaps part of the explanation for these "family or marks" rulings lies in the fact that one expects the terms "Mc" and "Miss" to be followed by another term. "Mc" and "Miss" are themselves formatives, and use of several marks with either of those formatives will more likely be perceived as establishing a "family" of related marks. "Virgin," on the other hand, does not suggest family formation.

In any case, the establishment of a "family of marks" claim remains a hit-or-miss proposition for opposers -- mostly miss.


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