The TTAB recently held that trademark applicants may rely on the “family of marks” doctrine to prove acquired distinctiveness for descriptive marks, but that LC Trademarks, Inc. had failed to establish acquired distinctiveness for its DEEP!DEEP! DISH PIZZA mark.
LC sought registration of its DEEP!DEEP! DISH PIZZA mark on the basis of Section 2(f), thereby conceding the mark’s descriptiveness. Nevertheless, LC argued that its burden to establish acquired distinctiveness should be lower because DEEP!DEEP! DISH PIZZA is a unitary phrase that creates a commercial impression distinct from its individual component terms. In particular, LC argued that the repetition of the word DEEP! creates a different commercial impression than the single word DEEP. The Board disagreed, finding that the repetition served only as an intensifier, underscoring the highly descriptive nature of the term. The Board’s decision was supported by numerous webpages submitted by the Examining Attorney demonstrating that “deep dish pizza” is a recognized type of pizza.
In support of its claim of acquired distinctiveness, LC relied upon the “family of marks” doctrine (which the Examining Attorney disputed could be considered in an ex parte proceeding, or as a basis for claiming acquired distinctiveness). Where an applicant has a well-established family of marks characterized by a common characteristic, the doctrine allows an applicant to argue that its family would expedite the public’s recognition of an applied-for mark that shares the same characteristic. LC pointed to its ownership of multiple registrations for “double word” marks wherein a repeated word is followed by exclamation points after each word including: PIZZA!PIZZA!, CHEEZER!CHEEZER!, BABY PAN!PAN!, and PEPPERONI!PEPPERONI! LC argued that consumers would associate its applied-for mark with LC because “in the world of pizza restaurants, double word marks mean Little Caesars.”
In its decision, the Board concluded that “in an ex parte proceeding under Section 2(f), an applicant may adduce, and an examining attorney must consider, evidence of the existence of a family of marks offered to help prove acquisition of distinctiveness for a new member of the putative family.” At the same time, it found that LC had failed to establish all three requirements necessary to establish a family of marks, namely: that the family (1) shares a recognizable common characteristic, (2) that is distinctive, and (3) that has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.”
While the Board did not foreclose the possibility that a structure, such as a double word mark (as opposed to the more usual prefix or suffix, such as “Mc” or “Я Us”), might satisfy the first required element in proving the existence of a family of marks, here the Board found that the structure consisting of a repeated descriptive word and an exclamation point was too abstract to constitute a common characteristic. To the contrary, the Board emphasized that to recognize a family of such marks would “effectively grant Applicant an exclusive proprietary right to an unbounded variety of merely descriptive double word marks,” making it analogous to a phantom mark.
Regarding distinctiveness, the Board found that LC’s claimed family does not repeat an element that is already recognized by consumers as source-indicating. Instead, it repeats common descriptive words used in connection with pizzas and pizza restaurant services.
Finally, regarding public recognition, LC pointed to industry sources reporting that Little Caesars has grown into the fourth largest pizza chain in the United States, with around 3,500 franchise locations and sales in 2012 of about $1.45 billion. It has used PIZZA!PIZZA! and its other double word marks at restaurant locations and in advertising since 1980. LC also provided news releases and press coverage of its DEEP!DEEP! DISH PIZZA advertising campaign, starting in 2013. Based upon the broad and abstract nature of LC’s claimed family, and the degree of descriptiveness of its proposed mark, the Board found that LC’s evidence was insufficient to support a finding of acquired distinctiveness either for its putative family of marks, or for DEEP!DEEP! DISH PIZZA. LC’s evidence established only the popularity of its products, not necessarily consumers’ recognition of its double word marks as source indicators. Further, many of the advertising exemplars showed the double words together with other marks, making it impossible to gauge whether, and to what extent, the advertisements inured to the benefit of the double words, or to the other marks that appeared together with them.
The case is In re LC Trademarks, Inc., Ser. No. 85890412 (TTAB).
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.