By Giselle Ayala and Daniela Iguaran
Think about your top-of-mind brands in the detergent category, what comes to your mind first? It may be Tide or Persil, but I am pretty sure you don’t really know what is the company or brand that manufactures and distributes these products. Well, in the case of products that are part of the large portfolio of goods this is not uncommon. That brand that consumers recognize to select several products produce or manufactured by the same company is a “House mark”.
The concept of “House Mark” refers to a trademark used through the company’s commercial operation to promote several products in the same general category. A house mark can be a random designation or the name of the Company in charge of the design, production, distribution, and control over the product that goes directly to the consumer when there are many intermediates involved in the process of production. This is the typical case of enterprises like APPLE or, in our detergent example, P&G or HENKEL.
A house mark does not identify a particular product. While independent and specific trademarks are used to distinguish each product in the market, the house mark identifies the provider of various classes of goods or services, covering those that are traded under specific marks. For example, in the case of cleaning products for the home, PROCTER & GAMBLE is the house or primary mark for goods, while TIDE, BOUNTY, PANTENE, and GILLETTE is the secondary marks.
Now, speaking of “house marks”, you are probably wondering how is it possible to use marks to commercialize a product without hurting the identity of the trademarks. Well, by using simultaneously a “house mark” and, what we could call, a “product mark” a company does not diminish the validity or the strength of its intellectual property. In fact, the use of a house mark can strengthen the overall recognition of a company trademark (the “house mark”) in the market of a company also selling and distributing several kinds of goods or services, while the “product mark” competes with similar products in smaller markets. For example, APPLE is one of the biggest technology companies in the U.S. that uses several product marks to compete, such as “Apple watch”, “IMac”, “iPod”, etc. Another example is FORD and the well know FORD MUSTANG. On the other hand, by using a house mark, a strong “product mark” does not lose strength because it usually appears along with the house mark.
In regard to the power of distinctiveness power of “house marks” in the context of legal litigation, the Federal Circuit has remarked that those who claim strength for a product mark that is usually used in tandem with a house mark must present evidence that the product mark by itself has sufficient strength such that the junior user’s mark is likely to trigger confusion.[1] In other words, if the house mark is not strong, the use of the “product mark” accompanying it may have no effect in the context of trademark litigation.
What to consider when registering a House Mark.
There are many good reasons to register a house mark. However, before doing so, it is worth making some preliminary considerations:
1. When registering a mark as a “house mark,” the owner must explain how the mark can be registered for a broad list of goods or services. In other words, the applicant must demonstrate that the mark is used as a “house mark”. This will probably be achieved by explaining the relevant market where the trademark owner participates.
2. The applicant may have to provide catalogs or various advertising materials showing broad use of the mark or similar evidence to substantiate the mark’s use as a “house mark [2]
3. In the application for registration, the identification may include the wording “house mark of…”.
4. An intent-to-use applicant who wishes to register a mark as a “house mark” must indicate his intention to register the mark as a house mark during the initial examination process. Additionally, the characteristics of the application must establish that the applicant’s proposed use of the mark as a house mark is credible
5. The USPTO will only register the mark as “house mark” when there is satisfactory evidence showing sufficient use as a house mark.
In sum, a “house mark” can become an essential part of your business Intellectual Property portfolio if you have the vision of getting into several markets or quickly growing your overall presence. Accordingly, when considering the registration of a trademark, think not only about the goods or services’ marks you currently trade. It is also important to take into consideration whether the trademark will be identical to your company’s name, whether the trademark can be registered for different classes of goods or services, whether the use of the trademark in fact reflects the idea of that symbol as a “house mark.” and whether you will be able to use, protect and maintain the trademark.
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[1] § 7:5.Multiple marks of one owner-House marks, 1 McCarthy on Trademarks and Unfair Competition § 7:5 (5th ed.)
[2].” TMEP § 1402.03(b) (April 2017 ed.)
