A trademark family is made up of a plurality of trademarks of the same trademark owner and that have a common distinctive feature. This common element usually constitutes the dominant element of the trademarks and gives them greater distinctiveness and a more robust protection. Therefore, trademark families can be considered as armors that provide greater protection.
However, our client SOMALAC recently demonstrated that, while they are armors of protection, trademark families are not entirely unbreakable.
In this particular case, our client filed a cancellation action against the trademark ENFALAC AR, arguing that said trademark did not comply with the necessary use to enjoy trademark protection. In defense, the owner of the trademark under cancellation argued that said trademark belonged to the ENFA trademark family, requesting that the evidence of use of the ENFA trademarks should be considered to demonstrate the use of the trademark under cancellation.
Despite the above, the Trademark Office agreed with our client’s claims and canceled the trademark ENFALAC AR, stating that, despite belonging to a trademark family, said quality does not eliminate the obligation to use each registered sign. Accordingly, the examiner found that the evidence of use provided for ENFA trademark family did not demonstrate the specific use of the ENFALAC AR mark, thus canceling its registration.
If you are an entrepreneur and want to avoid the cancellation of your trademarks, do not hesitate to contact us at tum@tumnet.com to evaluate the trademark situation of your company and your needs.