Takeaway: Trademark Trial and Appeal Board held that Little Caesar’s collection of repeated term marks does not rise to the level of “family of marks” and granting such status to Little Caesar’s collection of marks would be giving excessively broad rights.
In In re LC Trademarks, Inc. (TTAB December 29, 2016), the Trademark Trial and Appeal Board (“TTAB”) held that Little Caesar’s failed to show that it owned a “family of marks” with its collection of repeated term marks, such as “PIZZA! PIZZA!” and “DEEP! DEEP! DISH PIZZA.”
In order to own a “family of marks” the trademark owner show that its “family”: (1) has a recognizable common characteristic, (2) that it is distinctive, and (3) that this distinctive and recognizable common characteristic has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of common origin of the goods or services.”
For a descriptive mark to become distinctive, at least five years of substantially continuous and exclusive use of the mark may be sufficient. However, in Little Caesar’s case, the mark “DEEP! DEEP! DISH PIZZA” had not been used for at least five years. Further, the Board held that it could not acquire distinctiveness by being a part of a family of marks because the Board refused to acknowledge Little Caesar’s collection of marks as a family of marks. The issue lies in the fact that the terms being repeated were differing and distinctive.
Further, the Board did not find sufficient evidence that showed that the public has not associated the common characteristic of the alleged “family of marks” as a source indicator.
Therefore, the Board has reconfirmed that establishing a “family of marks” is neither expeditious nor simple.
