Brand development and IP: Building your family of marks

We previously covered the importance of IP strategy in the brand development process, the value of tracking new brand development decisions, identifying IP, and undertaking clearance searching. After registered protection is obtained, how can an IP right holder further develop and strengthen the brand and legal rights stemming from this?

One way to build and strengthen a brand is by developing a family of trademarks.   

This is where advertising, branding, and marketing all meet and complement IP law, which over time can bequeath a truly strong brand that can be enforced against third parties with relative confidence and ease.   

Family of marks    

A ‘family of marks’ should all share a common and recognisable element across any range of products or services. The main trademark, or house mark, is added to different word elements. McDonald's was early known to have created a family of trademarks combining ‘Mc’ with a generic product name such as McDONUT, McPIZZA, McMUFFIN, McCHICKEN and McRIB.   

A family of registered marks, with a common distinctive feature, can create a strong trademark portfolio to enhance protection and enforceability. This can also remove the need to create or decide upon an entirely new trademark for a new product range. The family of marks, when assessed altogether, can often lead to a finding of at least a likelihood of association on the part of the relevant consumer, where otherwise a standalone trademark may not.  

A balance does need to be struck when looking to build a family of trademarks though. Perhaps most importantly, brands should ensure that the expansion of the family of marks does not start to make the house mark generic (or does not use it in a generic way). As an enforcement tool, the family also needs to be created in a way that educates the average consumer to see a trademark as a part of that family. 

Depending on the word elements added (some may require at least some form of clearance checks) a trademark registration for a house mark, and use of other variants that include the recognisable element, can turn a lone trademark registration into a broad enforcement tool. This can avoid needing to file (and incur costs for) trademark applications for similar trademarks.  

In other instances, applying to register the other trademarks created as part of the growing family should significantly enhance enforcement capabilities, increasing chances of success and reducing evidence costs, so applications can be a worthwhile financial investment.    

Unregistered trademarks 

At the UK and EU Intellectual Property Offices, a positive finding that an IP right holder has a family of trademarks usually entails the use of at least three marks. While these need to be all registered marks, it cannot be precluded that the family of marks doctrine may include non-registered trademarks as well.   

Those non-registered trademarks can include (with evidence that goodwill was generated by the use of) unregistered marks in the UK under the tort of Passing Off; at the EUIPO there is general agreement that normal evidence of use of the non-registered trademarks should suffice.    

To put this into context with some examples:  

• The owner of the trademark PANASONIC in the UK had also used the trademarks PANA ROBO, PANASYNC/PRO and PANAFAX (all registered in Class 9) and PANASERT and PANAFLO (unregistered in other Classes) and this evidence allowed Panasonic to successfully oppose the later-filed mark PANACELL.    
• McDonald’s did not have any relevant registered rights in the UK, but based on its family of marks, could prevent registration in the UK of McVEGAN. Similarly, McDonald’s also blocked registration of McBAILEYS in the UK.   
• The owner of Baileys Irish Cream (Diageo) was also successful in opposing the McBAILEYS application in the UK, demonstrating the need to always consider the other element being added to your own house mark. We recommend a clearance check is undertaken prior to use. 

A family of trademarks can strengthen public brand recognition, as well as afford broader protection. Furthermore, it can strengthen a trademark portfolio and facilitate easier legal enforcement of the brand.    

Consistency 

Building a family of trademarks requires a strategic and consistent approach. An important consideration, to ensure the potential brand strategy is useful and effective, is establishing a clear link between the family of the trademarks. An opposition decision at the UKIPO on the trademark JACK & VICTOR, opposed based on the trademarks JACK DANIEL'S, JACK and JACK ROCKS, deemed not a family, is a useful example of this. The differences between the marks JACK DANIEL'S, JACK and JACK ROCKS, particularly the conceptual differences, were sufficient to rule that consumers were unlikely to be deceived by JACK & VICTOR-branded items. 

We, therefore, recommend defining the brand identity and its key attributes that will form the foundation of your family of marks at a very early stage. As part of this, there may be a need to consider and categorise products or services to create sub-brands. Maintaining consistency across all branding elements creates a cohesive brand identity centred around the common and recognisable element.    

Market expansion and cross-promotion can then become easier, as recognised brand presence and reputation can carry over; sales of a sub-brand can easily be stopped if unpopular without necessarily damaging the house mark, or if the sub-brand name needs to be changed, the common and recognisable element remains, so that consumer trust and awareness is not too adversely affected.   

Stylisation  

While not constituting what is legally agreed to be a family of marks, the use of trademarks in a stylised form can also assist with strengthening enforcement abilities and naturally expanding legal rights.   

If a brand registers and uses several different trademarks, but each of these different trademarks are used in the same stylisation, or a very distinctive font, then (aside from copyright) the IP rights holder may enjoy an enhanced ability to enforce against third-party trademarks based on unregistered rights. In particular, in the UK, the common law tort of 'passing off' could be a basis on which to successfully oppose registration or even injunct third-party use.   

If the brand enjoys a reputation, then a similar position would apply compared to seeing something, for example, in a Disney font. There is a misrepresentation or a likelihood of association.   

Protecting your IP is key for long-term success. Consult your trademark attorney, or contact us, for further advice on creating and exploiting a family of trademarks or any of the above.   

Luke Portnow and Mona Asgari are Chartered Trademark Attorneys at Novagraaf in the UK