Examining Attorneys May Not Rely on ‘Family of Marks’ in Ex Parte Proceedings

Author: Morgan E. Smith

In a precedential ruling released last Friday, the TTAB made clear that examining attorneys may not rely on a “family of marks” theory in assessing likelihood of confusion for registrability purposes. In re Hitachi High-Techs. Corp., Serial No. 79110412 (TTAB Feb. 21, 2014) [PRECEDENTIAL].

Hitachi High-Technologies Corp. applied to register OPTICROSS for “liquid chromatography apparatus and parts thereof.” The Examining Attorney initially refused registration under Section 2(d), citing a “family” of seven OPTI-formative marks owned by Optimize Technologies. The Examining Attorney subsequently retracted her reference to the OPTI “family of marks,” finding enough evidence to sustain the refusal even without evidence of a “family.”

On appeal, the Board clarified that “[a] ‘family of marks’ may be established in an inter partes proceeding where there is evidence that a group of marks having a shared characteristic are advertised and promoted together.” Mere ownership by a registrant of multiple marks with similar root terms is not enough to establish a “family.” Rather, determination of a family requires consideration of the manner in which the marks are actually used in the marketplace, whether the marks are promoted “as a family” or individually, and their relative degree of distinctiveness. The Board emphasized that reliance on the doctrine in ex parte prosecution is inappropriate because the type of detailed assessment of real-life factors required to establish a “family” of marks is beyond the scope of ex parte proceedings and beyond the resources available to Examining Attorneys. The Board ultimately upheld the refusal of registration on likelihood of confusion grounds.

This decision offers useful insight into the “family of marks” doctrine and the additional burdens of proof that apply to a trademark owner seeking the expanded scope of protection that follows.

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