Family of trademarks: what they are

More trademarks can be considered a family of trademarks (or series of trademarks) when, for example,

“they reproduce in full the same distinctive element with the addition of an element, graphic or word, which differentiate them from each other, or when characterized by the repetition of a single prefix or suffix taken from an original mark”.

(Bainbridge judgement, February 23 2006, T-194/03).

An example of family of trademarks

In order to know when we are in the presence of a family of trademarks we can take a cue from the case dealt by the EU Court of July 5 2016 (case T-518/13), which recognized the existence of a family of brands characterized by the union of the prefix “mc” with the name of a menu or of a food products (the “mc family of brands”).
The most famous of these brands was the famous McDonald and were part of its family: McFISH; McTOAST; McMuffin; McRib; McFlurry; McChicken; McFeast and others. The Court stated that the prefix “mc” was largely associated with the McDonald brand and that the same prefix, in combination with another word, was associated with fast food establishments belonging to the group or to products related to the latter.

Family of marks and risk of confusion

In the presence of a family of trademarks the likelihood of confusion may arise from the possibility to associate a trademark to a series of former trademarks of the same family, if the mark in question is similar with the family of trademarks in a way that would lead consumers to believe that it is part of that family of trademarks too.

For example, in the aforementioned case of the EU Court case T-518/13, it was stated that the MacCoffee brand, belonging to an owner other than McDonald’s, could be associate with the “mc” family of marks. More in detail, it was established that the difference between “mac” and “mc” was irrelevant because the two prefixes were almost identical and that the structure of the MacCoffee brand was very similar to that of the brands belonging to the “mc” family, as characterized by the same position and by an identical conceptual content.

The fact of having a trademark that is recognized as similar to a family of trademarks (belonging to a different owner) is a problem, since the law wants to avoid that the consumer, misled by the similarity, associated this “foreign” brand with the “family”, mistakenly imagining a connection between the products (or services) respectively marked.

Creating a family of brands can be very useful for the entrepreneur who intends to focus on a common feature of its trademarks (which, in the above case, is in the prefix “mc”). However, it is necessary to bear in mind that the family of trademarks is recognized only if its owner uses – and is able to demonstrate the use – of all or a good part of the brands which are part of the family.