Saturday, July 3, 2010

Three Easy Steps for Creating a Brand Name Powerhouse Using a “Family of Marks”

Trademark owners that use a number of marks that share a common prefix or suffix have an opportunity to establish what is known as a “family of marks.” For example, a brand owner that uses six different marks that share the prefix “SENSE” (i.e., SenseGloss, SensePlus, SenseRight, SenseDraft, SenseAll and SenseView) for a line of product may establish a legally recognized family of marks. Once established, a family of marks bestows upon its owner a power much greater than the sum of the individual members of that family.

The fundamental benefit of raising a family of marks is that, once legally recognized, the trademark owner may successfully enforce its family of marks against competitors’ marks incorporating the common “family term” (i.e., Sense). In effect, the common term appearing in each of the family member marks becomes recognized by customers as an identifying trademark – and a particular source indicator -- in and of itself (i.e., Sense) when it appears in any composite mark.

Even though a junior user’s mark may not be that close to any one member of the family of marks, i.e., ExtremeSense, its use of the distinguishing family term “Sense” may cause a likelihood of consumer confusion. Its use may cause confusion because if purchasers have come to associate marks that incorporate the term “Sense” with a single source for a particular product, consumers may reasonably believe that the competitor’s mark ExtremeSense is a new addition to the “Sense” family – thus causing consumer confusion and deception as to the source of the ExtremeSense products.

Although some brand owners believe they own a legally protectable “family of marks,” the truth is that they have not taken the proper steps required under trademark law to establish a family of marks.

Below is a list of key requirements for establishing a legally recognized family of marks under U.S. law:

1. Joint adverting: Advertising that uses the marks in a manner that associates each of the marks as belonging to the same owner.

2. Promoting the marks as a “family” so as to create an association between the marks in the minds of consumers.

3. Use of the family of marks in everyday sales activities.

The key to creating a legally recognized family of marks is to create common exposure of the marks and recognition of common ownership based upon the common term appearing in each mark.

Simply using a series of marks that share a common term does not establish the existence of a legally protectable family of marks. There must be recognition among the purchasing public that the common term or characteristic is associated with the same source.

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