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December 15, 2018 Vol. 73 No. 21 Back to Bulletin Main Page

Brush Up On Your Linguistics: Protecting the Prefix

INTA’s Famous and Well Known Marks Committee investigates a trend at the U.S. Trademark Trial and Appeal Board in which trademark owners are increasingly seeking to protect prefixes and suffixes, particularly by invoking the “family of marks” doctrine.

Is there a new push for brand owners to protect prefixes and suffixes? If this sounds like a wonky grammatical question, think again. Since 2013, Instagram LLC has filed more than 100 challenges to U.S. federal trademark applications and registrations for “INSTA—” or “—GRAM” formative marks. Meanwhile, a trend has developed in Trademark Trial and Appeal Board (TTAB) actions as trademark owners increasingly assert the “family of marks” doctrine to argue that a third party’s use of a particular prefix (e.g., “Mc”) or suffix (e.g., “max”) is likely to result in consumer confusion with the opposer’s family of marks. From 1960 through 2000, the phrase “family of marks” appears in approximately 250 reported TTAB decisions. That phrase appears in more than 350 reported TTAB decisions from 2001 through 2018.

Strength Is Key
What do trademark owners need to know about protecting a prefix or suffix? First, just like any mark taken as a whole, a prefix may be strong or weak for the goods or services claimed. For example, a prefix like “prime” may be considered self-laudatory, and therefore weak. See Primepoint, L.L.C. v. Primepay, Inc., 545 F. Supp. 2d 426, 438 (D.N.J. 2008). Certain prefixes may be perceived as descriptive with respect to the claimed services, such as where the prefix “i” is used as an abbreviation for “Internet” in reference to services rendered online. See In re iArchives, Inc., 2016 TTAB LEXIS 125, *21 (TTAB Apr. 5, 2016) (requiring disclaimer of entire mark iArchives apart from device shown).

It is possible for a prefix that would be generic or descriptive in one context to be highly suggestive, or even arbitrary, in another. For example, a component of a family name, like “Mc,” may be descriptive to indicate ancestry. McDonald’s corporation has nevertheless created a protectable family of marks incorporating the “Mc” prefix in a fanciful or even arbitrary manner. As one district court explained:

As part of its promotion, McDonald’s created a language that it called “McLanguage” from which itdeveloped a family of marks for its products such as McChicken, McNugget, McPizza, as well as marksoutside the food area related to its business such as McStop, McKids, and McShuttle. There is no evidence that this language or these marks existed before McDonald’s created them or that, outside of McDonald’s sphere of promotion and presence, anyone would understand these words to mean anything. “Mc” obviously is a Scottish or Irish surname used in proper names. The use to form words, however, was unique at the time. The marks that are owned by McDonald’s and that were formulated by combining “Mc” and a generic word are fanciful and enjoy a meaning that associates the product immediately with McDonald’s and its products and service. Quality Inns Int’l, Inc. v. McDonald’s Corp., 695 F. Supp. 198, 212 (D. Maryland 1988) (enjoining hotel chain Quality Inns International, Inc. from using the name “McSleep” as a trademark or service mark); see McDonald’s Corp. v. Joseph, 2014 TTAB LEXIS 299, *1(TTAB July 14, 2014) (sustaining opposition to intent-to-use application to register the mark BioMcDiesel for “biodiesel fuel”).

Promote Your Distinctive Common Characteristics

Ownership of a family of marks is a powerful tool in proving likelihood of consumer confusion, but trademark owners will first need to meet a high evidentiary bar. McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d 1268, 1275 (TTAB 2014) (noting that a finding of a family of marks is an additional factor weighing in favor of a likelihood of confusion, “beyond the similarities between Applicant’s mark and goods, and any specific one of Opposer’s marks and goods”).

Proof of a family of marks requires more than proof of prior use of “a series of similar marks” J & J Snack Food v. McDonald’s Corp., 932 F.2d 1460, 18 U.S.P.Q.2d 1889, 1891 (Fed. Cir. 1991). It requires that the common characteristic is distinctive, and further that the trademark owner has advertised or promoted marks sharing this common characteristic together. TPI Holdings, Inc. v., LLC, 126 U.S.P.Q.2D (BNA) 1409, 1425 (TTAB Apr. 24, 2018) (finding that petitioner could not lay claim to a family of marks based on the common trait of “TRADER,” in 16 registered marks, such as AERO TRADER, AUTO TRADER, and BOAT & RV TADER, on the basis that “—TRADER formative marks are so commonly used by others.”); Prudential Ins. Co. of Am. v. Daryl Bank, 2017 TTAB LEXIS 124, *17‒18 (TTAB Apr. 5, 2017) (requiring evidence that opposer’s marks were “used and promoted together in such a manner as to create public recognition coupled with an association of common origin predicated on the ‘family’ feature.”); see Wise F&I, LLC v. Allstate Ins. Co., 2016 TTAB LEXIS 473, *19‒20, 120 U.S.P.Q.2D (BNA) 1103, 1109 (TTAB Sept. 23, 2016) (enumerating three-part test for a plaintiff to prove a family of marks).

A High Bar

From a practice perspective, because the existence of a family of marks is a question of fact, a plaintiff may introduce testimony or other evidence on the specific question of consumer recognition and exposure to the alleged family. McDonald’s Corp. v. McBagel’s, Inc., 649 F. Supp. 1268, 1282 (S.D.N.Y. Dec. 10, 1986); Manhattan Int’l Trade Inc. v. Industrie IP Pty Ltd., 2018 TTAB LEXIS 164, *16‒17 (T.T.A.B. May 11, 2018). Perhaps reflecting this evidentiary bar, a survey of TTAB decisions reported in 2017 reveals only one petitioner who successfully proved the existence of a family of marks, in a non-precedential decision. Stoncor Grp., Inc. v. Pietroni, 2017 TTAB LEXIS 399, *45 (Trademark Trial & App. Bd. Oct. 12, 2017).

Finally, practitioners should also keep in mind that a family of marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal. In re Big Data Experts, LLC, 2017 TTAB LEXIS 315, *21 (TTAB Aug. 24, 2017); In re Timber Prods. Co., L.P., 2017 TTAB LEXIS 477, *16 (TTAB Dec. 19, 2017).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association