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The Importance of Family -- An Analysis of the Family of Marks Doctrine

Erik W. Kahn and Pou-I "Bonnie" Lee1

1. Introduction

The ownership of a family of registered or unregistered marks - marks that all incorporate the same or similar distinctive family element - is a significant factor to be considered in determining likelihood of confusion in litigation and inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"). This overview is intended to provide a guideline for understanding and successfully implementing the family of marks doctrine.

(a) The Common Characteristic of the Family of Marks (e.g. Letters, a Combination of Colors, or a Series of Cartoon Characters)

To be considered a family of marks, the series of marks must have a recognizable common characteristic that the purchasing public recognizes as "indicative of a common origin of the goods." J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1462 (Fed. Cir. 1991).

The common characteristic can come in a variety of forms, such as:

a prefix, suffix or syllable, Id. at 1463 (finding that McDonald's owned a family of marks with the prefix Mc);

a combination of colors, <...

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