Choosing Owner Entities WISELY

In a recent precedential decision, the TTAB clarified whether a party filing an Opposition is entitled to allege a family of marks as a basis for a Section 2(d) claim when those marks are not all owned by a single legal entity. In the case of Wise F&I, LLC et al. v. Allstate Insurance Company, the Opposers own the following family of marks, which “collectively identify services including automotive finance, insurance, and warranty services, and identity theft insurance”:

• WISE F&I, owned by Wise F&I, LLC, Reg. No. 4249179
• ONWISE, owned by Wise F&I, LLC, Reg. No. 4778223
• TIREWISE, owned by Vehicle Service Administrator LLC, Reg. No. 2800305
• WISECARE, owned by Vehicle Service Administrator LLC, Reg. No. 4372307
• GAPWISE, owned by Financial Gap Administrator LLC, Reg. No. 2363547
• ID THEFTWISE, owned by Administration America LLC, Reg. No. 3611703
• THEFTWISE, owned by Administration America LLC, Reg. No. 3086022
• ETCHWISE, owned by Administration America LLC, Reg. No. 2745080

Opposers filed an opposition to prevent registration of Allstate Insurance Company’s marks MILEWISE and ALLSTATE MILEWISE for insurance services, based on the above collective family of marks, arguing that Administration America LLC, Financial Gap Administrator LLC, and Vehicle Service Administrator LLC are all subsidiaries of Opposer Wise F&I, LLC. The Applicant filed a motion to dismiss, arguing that the Opposers may not bring a Section 2(d) claim on the basis of the pleaded registrations, given that they are not owned by the same entity. Applicant also argued that the Opposers had not alleged that the WISE portion of the marks is distinctive, and that “the marks have been used and promoted in such a manner that the public associates not only the individual marks, but the common characteristic of a family, with a single source.”

The Opposers argued that the marks making up a family do not necessarily need to be owned by one single entity, but only that the marks share a common origin, and the shared portion of the marks is “indicative of a common origin of the goods.” Opposers relied in part on the Wella cases decided by the Federal Circuit in 1986 and 1987, where the Federal Circuit allowed the U.S.-based Wella subsidiary to register a mark that was confusingly similar to registered marks owned by the Australian Wella subsidiary, given that the two entities comprised a single source from a consumer perspective.

Based on the Wella holding, the Board agreed with the Opposers—that “the concept of common origin may encompass more than one entity.” It follows then, that the Opposers would have been able to bring an Opposition under 2(d) on the basis of their family of marks, provided that their complaint contained sufficient factual information regarding the relatedness of the owner entities, and was able to show that there is, in fact, unity of control of the marks in the family. In this case, because the Opposers’ pleading did not contain facts regarding the relatedness of the entities, or any information relating to unity of control, the Board dismissed the Opposition without prejudice, giving the Opposers thirty days to replead their case.

One major takeaway from this case relates to mark clearance – multiple third-party registrations that contain a certain term may not necessarily give rise to a conclusion that actual multiple third parties are using that term. Entities that may appear to be unrelated on the surface – such as those that own the WISE marks above – may actually be operating under unity of control, and may have sufficient grounds to oppose registration of a mark using a family of marks that appears to be unrelated on their face.

On the other hand, companies that own marks under several entities may breathe a little easier knowing that as long as they are able to prove that owner entities are related, and sufficiently allege unity of control, they may now bring oppositions using families of marks with different owners. Mark owners that plan to use this strategy should carefully prove and plead the relatedness and unity of control factors when bringing these types of oppositions, and keep records of the facts that give rise to this type of argument.

This article appeared in the October 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.