Recently, Jonathan Ball – CEO and Founder of WANT branding – reported that WeWork was building a family of “WE” marks. He identified the following marks associated with WeWork: WeLive, WeGrow, WeLove, WeLearn, WeMove, and WeWorld. As a trademark searcher, when you see another party attempting to create a family of marks, that should raise your antenna.
The United States Court of Appeals for the Federal Circuit has defined a family of marks as follows:
“A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
This significance of having a family of mark is that the scope of rights is broadened. This means that it is more likely that consumers will assume a similar mark is part of the family. It also means that the owner of the family is likely to be more aggressive if an opposition proceeding becomes necessary.
Even though seeing a number of similar marks owned by the same trademark owner should get on your radar, it should also signal you to dig more to confirm the family exists. One of the most overlooked requirements to the existence of the family is that the marks are promoted together as a family. Generally, trademark owners trying to build a family mistakenly believe that registration alone is enough to create the family.