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Unity of Control over a Family of Marks

November 16, 2016
Post by Blog Staff

Wise F&I, LLC and a number of its subsidiaries recently opposed Allstate Insurance Company's application to register the marks MILEWISE and ALLSTATE MILEWISE for " insurance services, namely, writing and underwriting of property and casualty insurance and providing ancillary services thereto, namely, administration and claims adjustment,"in International Class 36. Wise F&I, LLC and subsidiaries jointly filed notices of oppositions claiming a likelihood of confusion under Section 2(d) of the Trademark Act.

Vehicle Service Administrator, LLC, Financial Gap Administrator, LLC, and Administration America, LLC are all alleged to be subsidiaries of Wise F&I, LLC. Wise F&I, LLC and subsidiaries, collectively referred to as the "Opposers‚¬, challenged the registration of Allstate's marks on the basis of a likelihood of confusion with the family of WISE-formative marks owned by the Opposers. The Opposers family of "WISE"marks include: WISE F&I and ONWISE owned by Wise F&I, LLC; TIREWISE and WISECAR owned by Vehicle Service Administrator, LLC; GAPWISE owned by Financial Gap Administrator, LLC; ID THEFTWISE, THEFTWISE, ETCHWISE, and KEYWISE owned by Administration America, LLC. The Opposers trademark registrations include services related to automotive finance, insurance, and warranty services; and identity theft insurance. The Opposers allege that prior to the filing date of Allstate's trademark applications, the Opposers began using, and have continuously used in interstate commerce, the family of WISE mark, and that Allstate's marks are likely to create a likelihood of confusion with the Opposers family of WISE marks.

Allstate argues that because the Opposers marks are not owned by a single entity, the common characteristic of alleged family of marks cannot identify a common source of origin. Allstate also alleges that the Opposers have failed to allege that the common characteristic of the mark is distinctive.

It has previously been held that "[t]here must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods"and that "[i]t 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 1889, 1891-92 (Fed.  Cir.  1991). Furthermore, the Federal Circuit has recognized that the concept of "source"may encompass more than one legal entity ‚¬¦ and if it is found that the two entities are the same source, there could be no confusion as to source. See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (Wella II), 8 USPQ2d 1365 (Fed. Cir. 1988).

In the present case, the Trademark Trial and Appeal Board (TTAB) held that "related entities can rely on a family of marks as a basis for a Section 2(d) claim - notwithstanding the fact that the  pleaded  marks  are  not  all  owned  by  a  single  entity  -  if  the  complaint  contains  sufficient factual allegations that they are related, and that there is unity of control over the pleaded marks such that the marks are indicative of a single source, and all of the other elements for pleading a family of marks are satisfied."To assert ownership of a family of marks the Opposers must allege, and ultimately prove: (1) prior use of marks sharing a recognizable common characteristic; (2) that the common characteristic is distinctive; and (3) that prior to the defendant's first use of  its  involved  mark, Opposers' marks  have  been  used  and  advertised  in  promotional  material  or  in  everyday  sales  activities  in  such  a  manner  as  to  create  common exposure and thereafter recognition among the purchasing public such that the  common  characteristic  is  itself  indicative  of  a  common  origin  of  the  goods  or services.See, e.g., Truescents LLC v. Ride Skin Care, LLC, 81 USPQ2d 1334, 1337-38 (TTAB 2006).

While the TTAB was unable to issue a final decision in the present case because the Opposers' pleading failed to provide sufficient evidence that the "WISE"element is distinctive, the TTAB has further clarified that a family of marks need not be owned by a single entity, so long as they can prove a legal relationship between the entities and sufficiently prove a unity of control. When bringing this type of opposition before the TTAB, the owner(s) of the family of marks will need to provide evidence of past marketing and advertising to prove the distinctiveness of the common element in the family of marks, as well unity of control over the use of the marks and the nature and quality of the goods or services to which the mark(s) apply.  

The full opinion may be found here.


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