• A Family of Marks with Different Owners

    by  • October 3, 2016 • trademark • 0 Comments

    The “family of marks” concept in trademark law is a difficult one to win. We all understand the concept, which is that consumers realize that when trademarks share a similar trait, like restaurant food products that start with “Mc,” the goods come from the same source. Proof of a family of marks is challenging, though. As explained by the TTAB:

    To assert ownership of a family of marks a plaintiff must allege, and ultimately prove: (1) prior use of marks sharing a recognizable common characteristic; (2) that the common characteristic is distinctive (i.e., not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party’s mark); and (3) that prior to the defendant’s first use (or constructive first use) of its involved mark, plaintiff’s marks have been used and advertised in promotional material or in everyday sales activities in such a manner as to create common exposure and thereafter recognition among the purchasing public such that the common characteristic is itself indicative of a common origin of the goods or services. See, e.g., Truescents LLC v. Ride Skin Care, LLC, 81 USPQ2d 1334, 1337-38 (TTAB 2006).

    It becomes even more challenging when it isn’t the same entity that owns the family of tradmarks. In Wise F&I, LLC v. Allstate Insurance Co., Wise F&I is the parent of Vehicle Services Administrator LLC, Administration America LLC, and Financial Gap Administrator LLC. Wise F&I owns registrations for WISE F&I and ONWISE, Vehicle Service Administrator owns registrations for TIREWISE and WISECARE, Financial Gap Administrator owns a registration for GAPWISE, and Administration America owns registrations for THEFTWISE, ID THEFTWISE, and ETCHWISE.

    Both parties relied on J&J Snack Foods Corp. v. McDonald’s Corp., which decided one of the aforementioned “Mc” cases. J&J Snack Foods says marks constituting a family must be “composed and used in such a way that the publc associates not only the individual marks, but the common characteristic of the family, with the trademark owner” (emphasis in original). Allstate argued this means it has to be the same company. Wise F&I retorted that J&J Snack Foods referred also to public recognition of “a common origin of the goods,” and that we know from In re Wella it is possible for corporate family members to be considered a single source. In In re Wella (“Wella I”),1 the Federal Circuit reversed a refusal to register a trademark owned by the German parent corporation because it was likely to be confused with its U.S. subsidiary’s registration:

    The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark “WELLASTRATE.” In other words, is the public likely to believe that the source of that product is Wella U.S. rather than the German company or the Wella organization. If the Wella family of marks connotes to consumers only a single source for all Wella products, namely the Wella organization, it is difficult to see how Wella A.G.’s use of the mark “WELLASTRATE” would cause confusion as to source because of Wella U.S.’s use of other Wella marks.

    On remand, the Board interpreted the holding:

    Clearly, the Court views the concept of “source” as encompassing more than “legal entity.” Thus, in this case, we are required to determine whether Wella A.G. and Wella U.S. are the same source or different sources….

    The companies of In re Wella were the same source, based on a declaration by an executive vice president of the U.S. sub stating that the parent owned substantially all the outstanding stock of the subsidiary and “thus controls the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks.” In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (“Wella II”), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).

    In re Wella has heretofore only been applied in the registration context to overcome a § 2(d) refusal. But the Board agreed the sole source concept was relevant here too, to establish a family of marks:

    We agree with Opposers that in the context of the “family of marks” inquiry, the concept of common origin (“source”) may encompass more than one entity. In view of the Wella I and Wella II decisions, it logically follows that related entities can rely on a family of marks as a basis for a Section 2(d) claim – notwithstanding the fact that the pleaded marks are not all owned by a single entity – if the complaint contains sufficient factual allegations that they are related, and that there is unity of control over the pleaded marks such that the marks are indicative of a single source, and all of the other elements for pleading a family of marks are satisfied.

    However, Wise F&I hadn’t pled there was a unity of control between the opposing entities. It also failed to plead two of the elements of a family of marks, that “Wise” is distinctive and that the public associates the common characteristic with a single source. Wise F&I also hadn’t pled confusion with any single trademark, only the family of marks. Wise F&I was given leave to replead its family of marks theory as well as to allege confusion with the marks individually.

    Wise F&I v. Allstate Ins. Co., Opp. No. 91226028 (TTAB Sep. 23, 2016).

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    1. In re Wella is getting a workout; the Board recently held that different Salvation Army entities could own registrations that use “Salvation Army.” 

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