A recent ruling by the U.S. Court of Appeals for the Federal Circuit, Pure & Simple Concepts, Inc. v. I H W Management Limited, d/b/a The Finchley Group (“Finchley”) case 2020-1211 (May 24, 2021) sheds light on the rarely-cited “family of marks” trademark doctrine. Under this doctrine, the owner of a collection of different marks that share a common element (the “family of marks”) can assert infringement by a third-party mark without establishing infringement of any single mark in the family, based on infringement of the element common to the plaintiff’s family. The court’s ruling in Pure & Simple clarifies that even with a common element, a family is not a family unless that element is relatively unique to the trademark owner, at least is used in a novel way.

The Pure & Simple court acknowledged J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991) as a landmark case for the family of marks doctrine, and the J & J court referred back to AMF, Inc. v. American Leisure Products, Inc., 474 F.2d 1403 (CCPA 1973). A quick review of those earlier cases will provide a context to the efforts of Pure & Simple to protect a family of INDUSTRY marks against dilution by a BLUE INDUSTRY competitor, and the court’s final decision that Pure & Simple’s INDUSTRY marks did not give rise to a family, and that none of them were infringed by the defendant’s BLUE INDUSTRY mark.

The AMF case was an appeal from an opposition to register GOLDFISH with a fish design as a mark of American Leisure Products, Inc. (“ALP”) for sailboats. AMF, Inc., tried to harpoon the GOLDFISH application on two grounds: first, that AMF had founded a family of ‘FISH’ marks for boats which it was entitled to protect, and second, that ALP’s GOLDFISH mark was confusingly similar to AMF’s SUNFISH mark, as well as several other of ‘fish’ marks in the AMF family, on a one-to-one basis. The TTAB, despite admitting that AMF had advertised its ‘fish’ marks as a family, had declined to bite on AMF’s family-of-marks argument, noting that a number of other ‘fish’-brand boats were available from other suppliers including the “BARRACUDA”, “BONITA”, “PIRATE FISH”, “PORPOISE”, “PUFFIN”, SAILFISH”, “STARFISH”, “STINGRAY” and the “SKATE”, rendering ‘fish’ insufficiently distinct to characterize a family of marks for AMF. The board also passed on AMF’s one-on-one infringement arguments. AMF, determined to net a victory, casted off to the federal circuit, where Judge Almond easily found a family resemblance among AMF’s marks. Judge Almond reasoned that AMF’s marks, SAILFISH SPORTABOUT, ALCORT SUNFISH, ALCORT CATFISH, and FLYING FISH, were distinguishable because they actually contained the word ‘fish’, whereas the other boats bore specific fish names: “We see no reason to believe that words such as SAILFISH, CATFISH and the like cannot be distinguished as a class from fish names such as Barracuda, Puffin, Bonita and the like.” The board then found that ALP’s GOLDFISH and fish design, used on sailboats similar to those sold by appellant, would appear to many to be a member of appellant’s family of marks and that a likelihood of confusion existed. Accordingly, the decision of the board dismissing the opposition was reversed.

Nearly twenty years after AMF was decided, the J&J case addressed an opposition by McDonald’s Inc. to an application by J&J Snacks to register McPRETZEL and McDUGAL McPRETZEL for pretzels. The TTAB had upheld the opposition, finding that McDonald’s Corp. had established a family of marks for food products characterized by “Mc”: McDONUT for doughnuts, McPIZZA for a pizza product, and McMUFFIN, McCHICKEN and McRIB for sandwich-type products by virtue of McDonald’s extensive promotion of this family of marks and on the public recognition and fame of this family of ‘Mc’ marks as associated with McDonald’s. On appeal, J&J argued that McDonald’s could not claim a “Mc” family of marks because “Mc” was not registered itself as a mark, and because there was a large number of “Mc” marks not registered to McDonald’s. Addressing the fact that other “Mc” marks existed, the court noted that “the existence of third party registrations of various ‘Mc’ names does not defeat McDonald’s specific family of marks wherein the prefix ‘Mc’ is used with generic food names to create fanciful words”.

Unfortunately for Pure & Simple Concepts, Inc., neither the TTAB nor the Federal Circuit had any appetite to recognize a family among the Pure & Simple collection of INDUSTRY marks for clothing: INDUSTRY BY WORK WEAR, INDUSTRY UNION MADE PRODUCT; INDUSTRY GIRL; INDUSTRY SUPPLY CO.; and several INDUSTRY and design marks. Pure & Simple had opposed the Finchley application to register the standard character mark BLUE INDUSTRY for a variety of clothing. However, the Board found that inclusion of the word BLUE in Finchley’s mark prevented a finding that BLUE INDUSTRY was confusingly similar to any of the Pure & Simple marks. In addition, Finchley had submitted evidence of 74 other registrations for the word INDUSTRY, leading the Board and the Court to conclude that INDUSTRY was “conceptually and commercially weak” such that the word was not entitled to broad protection and that consumers had been conditioned to look for differences between INDUSTRY formative marks to determine the source of a given product and are therefore less likely to be confused. Finally, the Court agreed with the Board finding that Pure & Simple had failed to show that its collection of marks constituted a family, due to the common use of that word by others and the lack of evidence of an association between the word INDUSTRY and Pure & Simple in the minds of the public.

These three cases provide a clear picture of the current state of the “family of marks” doctrine: the family is defined by a common element among a collection of the claimant’s marks; the common element need not be exclusive to the claimant but it must not be so weak as to defeat an association with the claimant in the minds of the public; and, once the family is recognized, the claimant can assert infringement without establishing infringement of any single mark in the family. With this guidance, owners of collections of marks that share a common element, whether that element is a separate word in a mark or a formative part of a word in a mark, can find a new way to protect and strengthen their brands.

Frederick Spaeth

 

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