Little Caesars restaurant attempted to register its DEEP!DEEP! DISH trademark for pizza. The company conceded that “Deep Dish” was a descriptive term for pizza. It claimed, however, that the mark had acquired distinctiveness and was part of a family of marks that reinforced its acquired distinctiveness.
Little Caesars argued that its burden to prove acquired distinctiveness should be lower since the mark is a unitary phrase with a different commercial impression than the words do separately. The company claimed that the repetition of the word Deep, with the explanation point.
The company also relied on the “family of marks” doctrine which would expedite the public’s recognition of a mark that shares a similar characteristic as another mark.
The Trademark Trial and Appeal Board (TTAB) held that:
“in an ex parte proceeding under Section 2(f), an applicant may adduce, and an examining attorney must consider, evidence of the existence of a family of marks offered to help prove acquisition of distinctiveness for a new member of the putative family.” The board stated that Little Caesers had failed to prove the elements necessary to establish a family of marks:
- that the mark shares recognizable common characteristics with the family;
- that the mark is distinctive;
- that the mark has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.”
The Board held that repetition of a descriptive word with an exclamation point was too abstract to constitute a common characteristic with a family of marks. The Board stated that to recognize such a family of marks would “effectively grant Applicant an exclusive proprietary right to an unbounded variety of merely descriptive double word marks”, making it similar to a Phantom Trademark, which is a mark that incorporates an element that is subject to change, such as the date, a geographic location, or a model number. An example of a Phantom Trademark is the FOR DUMMIES set of books.
With respect to the distinctiveness of the DEEP!DEEP! DISH mark, the Board found that the family claimed by Little Caesars did not repeat an element already recognized by consumers as indicating source, but merely repeated common descriptive words in relation to pizza.
With respect to the promotion factor, the Board found that despite Little Caesars having provided evidence of promotion since 1980, the promotion only showed the popularity of its products and not an indication of consumer recognition of the marks as source indicators. The advertisements provided by the company also contained other trademarks which made it impossible for the Board to know the extent to which the advertising benefitted the DEEP!DEEP! DISH trademark or the other trademarks also listed in the advertisements.