New: All Together Now: The Family of Marks Doctrine in the Era of Apple, Inc.
Author: Austin James Berger
Abstract: While a significant doctrine within common law trademark, the Family of Marks doctrine has not been utilized by as many dominant corporations within the some fifty years since its creation as one might expect. This may be because the doctrine and its analysis remains rather opaque with little substantive legal research devoted to its history and framework and with a pastiche of case law that, on first blush, fails to signal a clear, uniform approach among the circuits.
The doctrine itself, however, has been a deft tool in the hands of certain corporations who have used it to protect the prized good will they have created in their respective corporate trademarks. McDonald’s Corp. successfully used the doctrine to ward off use of the ‘Mc-’ prefix in a number of commercial scenarios, including both those having to do with sale of food products or restaurants and those which did not. The doctrine appeared to be uniquely crafted to serve such high profile corporations, whose corporate trademark transcended markets and product lines. Fast-forward twenty years from the era of the Big Mac to the era of the i-Phone.
The value of the protection of the family mark remains relevant whether the product is a hamburger or highly complex electronic equipment. Its value is in the protection of the trademark providence of the brand. This is especially reflected in the virtually unlimited creative opportunities Apple, Inc. (Apple) promises as seen from its innovations in several consumer electronics markets – the mp3 player; the cellular phone; the lap-top and personal computers; and online licensing of music copyrights.
In this Article, I seek to clarify the proper analysis framing issues involving the Family of Marks doctrine by tracing its history up to the seminal case of McDonald’s Corp. v. McBagel’s, Inc., in which McDonald’s right to use the ‘Mc’ mark was respected against a nascent yet oblique competitor. I, finally, contend that, after clarifying the analysis, the doctrine will be useful to Apple, as it was to McDonald’s, to further command the direction of its brand by eliminating competing uses that directly or indirectly seek to usurp Apple’s good will.