Precedential No. 5: "Family of Marks" Doctrine Inapplicable in Ex Parte Context, Says TTAB
In this straightforward Section 2(d) affirmance, the Board took time to point out that the "family of marks" doctrine is inapplicable in an ex parte context. It upheld a refusal to register the mark OPTICROSS for "liquid chromatography apparatus and parts thereof," finding the mark likely to cause confusion with the registered mark OPTI for components of liquid chromatography systems. The Board found it unnecessary to consider six additional registrations for "OPTI-" formative marks (all seven registrations being members of the purported "OPTI" family). In re Hitachi High-Technologies Corp., 109 USPQ2d 1769 (TTAB 2014) [precedential].
The Examining Attorney retracted her reliance on the "family of marks" doctrine during reconsideration of the refusal of the applied-for mark. Nevertheless, the Board took the opportunity to point out that this doctrine is reserved for inter partes proceedings, because "establishing a 'family' of marks requires a detailed assessment of not just the registrations, but, more importantly, of how the 'family' is used in the marketplace." The mere existences of multiple registrations of similar marks doe not establish a family; there must be public recognition that the "family surname" (i.e., the shared characteristic) is perceived as a source indicator.
Our primary reviewing court has noted that “[r]ecognition 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. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin." J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d at 1891-92 (Fed. Cir. 1991).
Of course, such an assessment of marketplace usage is "usually beyond the scope of an ex parte
Turning to the individual registrations, standing on their own, the Board found the OPTI registration to be the most relevant to the du Pont analysis, because if confusion is likely as to that mark, then the Board need not consider the other six registered marks [namely, OPTI-MAX, OPTI-MAX, OPTI-GUARD, OPTI-SOLV (two registrations), and OPTI-PAK, all for various components of liquid chromatography systems]. On the other hand, if confusion is not likely as to the OPTI mark, then the Board would not find it likely as to the other six marks.
Applicant Hitachi did not dispute that the goods of the application at issue overlapped with those of the OPTI registration. Consequently, the Board must presume that those overlapping goods travel in the same channels of trade to the same classes of customers. These factors weighed heavily in favor of a finding of likely confusion.
Because the involved goods are, in part, identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Hitachi's mark merely adds the word "CROSS," which has no apparent connotation in relation to the involved goods, to the cited mark.
Hitachi argued that its mark should be viewed and pronounced as the telescoped mark of "OPTIC"+"CROSS" not "OPTI"+"CROSS." The Board, however, found that consumers are more likely to view and pronounce the mark as "OPTI"+"CROSS." In any case, the Board observed, there is not correct way to pronounce a mark. [What about BLACK CAT? APPLE? TTABLOG? ... okay, forget the third one. - ed.] The Board concluded that any differences in commercial impression between the two marks are outweighed by the similarities in appearance and sound.
Hitachi pointed to several third-party registrations for marks containing the term "opti," but they were too few in number to have probative value, and there was no evidence of record regarding the extent of use of those marks. Dictionary definitions of "opti" as connoting "the eye or vision," even if they demonstrated that the term is suggestive, did not "necessarily limit the scope of protection that should be accorded the Optimize OPTI mark."
Finally, Hitachi contended that the Board should consider the degree of care with which the goods are purchased. But Hitachi provided no evidence regarding the nature of the purchasing process, and in any event, the Board noted, even a careful, sophisticated purchaser when faced with identical goods offered under similar marks, is not likely to note the differences in the marks.
And so the Board affirmed the refusal to register.
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TTABlog note: Here is an old blog post on the "family of marks" doctrine.
Text Copyright John L. Welch 2014.