Tag Archives: Family of Marks

Best of 2009: McBummer: Thoughts on the McFamily of Trademarks McConcept

Originally posted 2009-05-11 16:14:53. Republished by Blog Post Promoter

McDonald's Family of Marks

Clownish? Hardly.

I’ve written before about the odd cultural juxtaposition of McDonald’s and the Muslim world.  It turns out I don’t know the half of it!  Now McDonald’s has lost its effort to extend its monopoly of “Mc”-family trademarks in Malaysia, which bucked the colonialist-lackey trend of extending American-style “McFamily Values” to the rest of the globe:

The Oak Brook-based fast-food giant took offense at McCurry Restaurant, a Malaysian joint that maintains its name is an abbreviation for Malaysian Chicken Curry. McDonald’s considers the “Mc” prefix to be its intellectual property.

The company long ago established that premise in the United States, successfully forcing two restaurant companies, McBagel’s and the vegetarian McDharma’s, to change their names. . . .

But Malaysia’s Appeal Court said Wednesday that McDonald’s can’t claim an exclusive right to the “Mc” prefix, overturning a 2006 court ruling. The Appeal Court ruled there was no proof that McCurry misrepresented itself to the public and confused consumers, Malaysia’s New Straits Times reported. Besides, McCurry serves Indian food, the Appeal Court said.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

(Hat tip to Marty. ) I used that dirty word — “monopoly” — because that’s what a “family of trademarks” kind of gives you, in a manner of which a plain old, childless trademark can only dream.

The first time I heard of this concept I was astonished, although it does make perfect sense from a brand owner point of view.  But it really does amount to a monopoly of semiotic real estate: Read More…

Best of 2005: Q the Lawyers

Q

Q: Send in the Quowns

Originally posted on March 27, 2005.

A report in the online Financial Express says that Nissan is suing Audi over “Q.” To wit: “We are seeking to bar Audi from using any names that could infringe on Nissan’s right over the letter ‘Q’,” she added.

Quazy. It’s been ten years since the Supreme Court said that if you establish secondary meaning, you can have trademark rights in a certain color. But I guess when you can’t win back your own name in trademark litigation, you may as well try for an entire letter of the alphabet.

According to Marty Schwimmer, cited in this article, Nissan could win if it convinces the court of its right to a “family” of trademarks.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

This “family” of trademarks concept is another judge-created doctrine that, in my humble mind, is a troubling per se species of trademark dilution that is allowed in through the infringement door and therefore avoids the more stringent test (e.g., fame, commercial use) required in order to prove (federal) dilution — tests which are about themselves about to become even weaker if Congress again asks only “how high?” to trademark owners in this “branders take all” environment.

Not to worry, though. If Nissan wins, there will still be 25 letters left for everyone else.

UPDATE:  Settled out of court.

McBummer: Thoughts on the McFamily of Trademarks McConcept

Originally posted 2009-05-11 16:14:53. Republished by Blog Post Promoter

McDonald's Family of Marks

Clownish? Hardly.

I’ve written before about the odd cultural juxtaposition of McDonald’s and the Muslim world.  It turns out I don’t know the half of it!  Now McDonald’s has lost its effort to extend its monopoly of “Mc”-family trademarks in Malaysia, which bucked the colonialist-lackey trend of extending American-style “McFamily Values” to the rest of the globe:

The Oak Brook-based fast-food giant took offense at McCurry Restaurant, a Malaysian joint that maintains its name is an abbreviation for Malaysian Chicken Curry. McDonald’s considers the “Mc” prefix to be its intellectual property.

The company long ago established that premise in the United States, successfully forcing two restaurant companies, McBagel’s and the vegetarian McDharma’s, to change their names. . . .

But Malaysia’s Appeal Court said Wednesday that McDonald’s can’t claim an exclusive right to the “Mc” prefix, overturning a 2006 court ruling. The Appeal Court ruled there was no proof that McCurry misrepresented itself to the public and confused consumers, Malaysia’s New Straits Times reported. Besides, McCurry serves Indian food, the Appeal Court said.

(Hat tip to Marty. ) I used that dirty word — “monopoly” — because that’s what a “family of trademarks” kind of gives you, in a manner of which a plain old, childless trademark can only dream.

The first time I heard of this concept I was astonished, although it does make perfect sense from a brand owner point of view.  But it really does amount to a monopoly of semiotic real estate:

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. . . . Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991).  A suffix, prefix or syllable will not qualify for “family of marks” status if is, itself, merely descriptive.  Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387 (7th Cir. 1992).  By all indications this doctrine was recognized in dictum for the first time in U.S. Plywood Corp. v. Koveron Korporation, 288 F.2d 924 (Cust. & Pat.App. 1961) and first applied, albeit not by name, in Procter & Gamble Co. v. Conway, 57 C.C.P.A. 865, 419 F.2d 1332 (Cust. & Pat.App. 1970), wherein it was held that MR. STAIN was likely to be confused with MR. CLEAN on the sole basis of the “courtesy” of it all.  The “family” argument, as enunciated by the courtiers of his shiny, sparkling Misterness, went as follows (ellipses omitted): Read More…

In a family way

Family of Marx

Family of Marx

I’ve written, as is my wont, at great length regarding my skepticism about the “family of trademarks” concept. Well, once you’ve digested that, you may want to head over to Property, intangible, where Pamela Chestak — as is her wont — does some pretty darned heavy lifting on what seems to me to be a related idea:

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly.

But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the function of preventing the registration of the same or similar marks. How is that, you say?

You may need a chart to follow this one, but if you register trademarks for money, it’s probably worth doing so.

Q the Lawyers

Q

Q: Send in the Quowns

A report in the online Financial Express says that Nissan is suing Audi over “Q.” To wit: “We are seeking to bar Audi from using any names that could infringe on Nissan’s right over the letter ‘Q’,” she added.

Quazy. It’s been ten years since the Supreme Court said that if you establish secondary meaning, you can have trademark rights in a certain color. But I guess when you can’t win back your own name in trademark litigation, you may as well try for an entire letter of the alphabet.

According to Marty Schwimmer, cited in this article, Nissan could win if it convinces the court of its right to a “family” of trademarks. This “family” of trademarks concept is another judge-created doctrine that, in my humble mind, is a troubling per se species of trademark dilution that is allowed in through the infringement door and therefore avoids the more stringent test (e.g., fame, commercial use) required in order to prove (federal) dilution — tests which are about themselves about to become even weaker if Congress again asks only “how high?” to trademark owners in this “branders take all” environment.

Not to worry, though. If Nissan wins, there will still be 25 letters left for everyone else.

UPDATE:  Settled out of court.