New Jersey residents may recognize the phrase ‘Pizza! Pizza!” as a slogan that was made popular by the restaurant chain Little Caesar’s. While it may own a trademark for its most iconic phrase, the company will not be allowed to trademark other repeated word phrases by calling them a ‘family of marks”.
In a December 2016 decision, the Trademark Trial and Appeal Board ruled that Little Caesar’s did not have enough proof to validate the existence of a family of marks. Little Caesar’s wanted a trademark for “Deep! Deep! Dish Pizza”, but the board found that the descriptive nature of the slogan made it ineligible for a trademark. The board also found that Little Caesar’s did not successfully demonstrate that the mark had acquired distinctiveness.
Determining whether a family of marks is eligible for a trademark is done on a case-by-case basis. An example of a family of marks is the ‘Mc” names that are attributed to various McDonald’s offerings. If a family of marks is found to be highly descriptive, more proof of the marks’ distinctiveness may be needed to secure trademarks. Some of the evidence that may be used to demonstrate a mark’s distinctiveness may include consumer studies, unsolicited press coverage and evidence of copying by third parties.
It may be important for a company to trademark all of the slogans and images that are associated with itsbrand identity. If a company does not trademark these things early on, the company may not be able to prevent other companies from copying its brand identity. An attorney may be able to help a company to use trademark law to protect its brand identity from competitors.