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Protection of Mark as One of a Family of Marks

As a general rule, marks that share a common characteristic or dominant element can receive protection as one of a family of marks. U.S. federal courts have explained that “[t]he family of marks doctrine is important because it provides that a likelihood of confusion can exist even though a junior user’s mark may not be significantly close to any one member of a senior user’s family of marks” and that “[t]he key to a finding that a family of marks exists is a recognition among the purchasing public that the family “surname” — i.e., the element common to all the marks — is indicative of a common origin of the goods.” Victoria’s Secret Stores Brand Management, Inc. v. SHC, 07 Civ. 580 (S.D.N.Y. 2009) (the unresolved question is whether SEXY functions as a “surname.”).

In another federal case involving McDonald’s, the “Mc” of many of its trademarks was found to satisfy the surname element. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463 (Fed.Cir.1991), in which the court found McDonald’s’ family of “Mc” marks infringed by a competitor’s “McPretzel.” Under UDRP jurisprudence, the classification of the mark (descriptive or arbitrary) and the composition of its added element (dictionary words, common phrases) is critical as to whether complainant can prevent legitimate use of the mark by others. The more well-known the “surname” the less credibility a respondent will have in explaining its choice and succeeding on a good faith defense. This is why in many instances respondents simply default in appearance.

MERCK in Merck Sharp & Dohme Corp. v. Janice Liburd, D2011-0278 (WIPO April 18, 2011) is a well known mark for a variety of goods and services. The added words to form the domain names and are subordinate to the dominant element. Similarly, with the R US family of marks. In Geoffrey, LLC v. The R Us Group, Mohiuddin, Tops, D2011-0612 (WIPO July 25, 2011) the disputed domain names <>, <>, <>, <childrensbed>, <>, <>, <>, <>, <>, <makingmoney>, and <> were found to be taking advantage of the R US mark. The Panel noted that Complainant “is …. recognized as the owner of a family of R US marks under the United States trademark law.” The Panel in General Nutrition Investment Company v. Jack Button, FA1108001403047 (Nat. Arb. Forum September 12, 2011) accepted Complainant’s characterization of GNC as the dominant element in its family of marks as in <> and <>.

The reverse is true for less well-known trademarks or trademarks of complainants in remote markets. In Compagnie Financière Européenne de Literie (COFEL) v. LKN Media, D2011-1611 (WIPO November 29, 2011) denied that it had knowledge of Complainant’s trademark, which in any event it claimed was descriptive. Not only was the Respondent actually in business under the domain name “merinos” but the dominant element is also the name of the majority stockholder. It domain names, and actually reflected its business:

[T]he Respondent has proffered ample evidence to demonstrate that it does have rights or legitimate interests in the disputed domain name. Relevantly, the Panel is satisfied that the Respondent is commonly known as Merinos Furniture which is similar to all the disputed domain names and is exactly incorporated into two of the disputed domain names…. Finally, the fact that the majority stockholder of Merinos Furniture is a company with the name “Merinos Hali” and authorized Merinos Furniture’s use of the term is further evidence that it has rights and legitimate interests in the disputed domain names.

Complainants are less successful with marks composed of dictionary and descriptive strings of letters and words. Thus, in TPI Holdings, Inc. v. Garry Chernoff, Netlncome Ventures Inc., D2011-0923 (WIPO August 28, 2011) (“trader” family of marks which included AUTO TRADER) the majority rejected the complaint that infringed Complainant’s rights. The domain name was similar enough for confusing similarity because “the only difference is the last letter “r” which is lacking in the Disputed Domain Name. It happens often that Internet users mistype domain names and missing the last letter of a domain name happens frequently.” But, the majority was unpersuaded that the Complainant had proved its prima facie case even though both parties targeted similar consumers. “The Panel is satisfied that the Respondent’s use of the Disputed Domain Name has been bona fide because it dates back to April 1998, when the Complainant’s licensee was still selling magazines under the Trademark and was not yet on the Internet until August 1998 or 1999.”

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One Response to Protection of Mark as One of a Family of Marks

  1. Melissa A. Rosati December 13, 2011 at 11:32 am #

    I like your example about the “Mc” in McDonald’s. It demonstrates the importance of consistent branding over time. The “Mc” identification is so strong, it leads the consumer to one association. It seems to me this is similar to the association of tissue to Kleenex.

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