The fame of two or more commonly owned trademarks is a powerful weapon in the trademark owner’s enforcement arsenal if the trademarks have a particular feature or element in common. Indeed, recent developments in the law of trademarks suggest that the fame of the senior user’s group of marks with a common element is a more significant factor in a likelihood of confusion analysis than the senior user’s ability to establish that it owns a “family of marks.”
In deciding questions of likelihood of confusion, courts must often place themselves “in the position of an average purchaser or prospective purchaser in an attempt to understand what the normal reaction would be to the marks as they are encountered in the marketplace or in promotional and advertising material.” Thus, the proponent must show by competent evidence: (1) that prior to the entry into the field of the opponent’s mark, all or many of the marks in the alleged family were used and promoted together in such a way as to create a public perception of the common element as an indication of common source; and (2) that the common element is distinctive.
Mack, Peter; McNutt, Geoff; Vasuta, John; and Song, Michael
"Choosing Fame Over Family,"
Akron Law Review: Vol. 37
, Article 2.
Available at: http://ideaexchange.uakron.edu/akronlawreview/vol37/iss2/2