Brush Up On Your Linguistics: Protecting the Prefix

Published: December 15, 2018

Jocelyn Hanamirian The Walt Disney Company Burbank, California, USA

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”