Zero Motorcycles, Inc.’s (“Zero”) bikes are unique because they are 100% electric and therefore, unlike traditional motorcycles, fuel efficient and quiet. In Zero v. Nikoa Motor Company (“Nikoa”), Zero filed suit in the Northern District of California claiming trademark infringement of its ZERO MOTORCYCLES brand based on the defendant’s use of NIKOLA ZERO. Notably in the complaint, Zero alleges that, over the years, it has registered and used a “family” of ZERO-formative marks, such as ZERO DSP, ZERO DSR, ZERO FX, ZERO FXP, ZERO FXS, ZERO MMX, ZERO MX, ZERO S, and ZERO SR.
A “family of marks” is a group of trademarks with a recognizable common characteristic, for example, MCDONALDS, MC CHICKEN, MC DOUBLE, MCMUFFIN and MCRIB. Having something in common is not enough, and a family can be difficult to prove. To qualify, consumers must also associate the common element among the marks with the trademark owner, e.g. arguably consumers associate with McDonald’s Corporation any trademarks that combine the MC prefix with a descriptive or generic food term. If a family of marks is found, that is an additional factor, beyond the similarities between the marks and goods, that weighs in favor of a likelihood of confusion.
In this case, if Zero can prove consumers associate ZERO-formative motorcycle brands with its company, it may qualify for protection as a family. Last week, Zero prevailed on a motion to dismiss the case. The court seemed to easily note Zero’s family of marks, and pointed out that the defendant’s website had encouraged visitors to “reserve your zero.” These and other factors were enough for the court to deny the defendant’s motion.