Little Caesers

Although a precedential decision allowing a “Family of Marks” to be considered in the context of an ex parte prosecution of an application that has been refused under Section 2(e)(1) to show acquired distinctiveness, this ruling could not help Little Caesars overcome the refusal of its application for the mark “DEEP!DEEP! DISH PIZZA.”

Because “Deep Dish” is descriptive of a feature of the good (i.e., the pizza), there was no question the mark was descriptive.  Accordingly, Little Caesars sought to register the mark based on acquired distinctiveness under Section 2(f) of the Lanham Act.  To do so, Little Caesars needed to show that the “relevant public understands the primary significance of the mark as identifying the source of the product (i.e., the primary significance was that the goods are from Little Caesars), rather than the product itself (i.e., that it was pizza).

With pizza being one of my absolute favorite foods, I am very familiar with Little Caesar’s

Pizza Pizza

trademark.   The fourth largest pizza chain argued that the applied for mark “DEEP!DEEP! DISH PIZZA” should be viewed in light of its “family” of double word marks with explanation marks.  Unfortunately, the Board found that Little Caesars did not meet the substantial burden of showing such a family of marks.  Mere ownership of marks is not enough.

The Board discussed a prior decision wherein they rejected a company’s claim of a family of marks based on ownership of “SICLE” marks through ownership of the marks CREAMSICLE, FUDGSICLE and FRUITSICLE (among others).   In Consolidated Foods Corp. v. Sherwood Med. Indus., 177 U.S.P.Q. 279 (TTAB 1973).

You might ask what is a family of marks that has been recognized.  The Board observed that the common characteristics of a family of marks is typically the same suffix or prefix.   The most famous is probably the “MC” family of marks owned by McDonald’s.  For example, the company owns:

However, the Board noted that the concept of a “family” of marks was not necessarily limited to prefixes and suffixes.

What is your favorite “family” of marks?   Or, what do you think should be considered a “family” of marks?