TTAB Ruling in Favor of McDonald’s Leaves Sour Taste for McSweet Pickles

Facts

McDonald’s owns many registered trademarks, including MCDONALD’S, MC, and numerous marks with the “MC” prefix followed by a descriptive or generic term. In fact, since 1973, McDonald’s has been using “MC” formative marks in connection with food, merchandise, and services, such as MCRIB, MCMUFFIN, MCDOUBLE, MCNUGGETS, and MCCHICKEN.

Applicant started using the MCSWEET mark around 2006 and filed two applications to register the mark for pickled gourmet vegetables.

The Board’s Analysis

1. Likelihood of Confusion

McDonald’s claimed that MCSWEET caused a likelihood of confusion with its “MC” family of marks under the TTAB’s test for likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Applicant countered that there was no likelihood of confusion because only the “MC” portion of the marks were similar, and the “MC” prefix has been used and registered by numerous third parties in the food, restaurant, and alcoholic businesses.

A family of marks is a group of marks having a recognizable common characteristic, where the marks are composed and used in a way that the public associates not just the individual marks, but also the common characteristic of the family, with the trademark owner. J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The Board noted that, if an opposer is found to own a family of marks for a range of goods, then that is an additional factor weighing in favor of a likelihood of confusion. The TTAB considered McDonald’s ownership and use of the mark “MC” and the “MC” formative marks, and witness testimony that customers spontaneously use the “MC” prefix in connection with McDonald’s products. The TTAB found that McDonald’s successfully established that it owns a family of marks consisting of the prefix “MC” combined with a generic or descriptive suffix.

Next, the Board considered whether the “MC” family of marks is famous. In the context of likelihood of confusion, fame arises when a significant portion of the public recognizes a mark as a source indicator. Palm Bay Imports, Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1375 (Fed. Cir. 2005). Fame can be measured by sales volumes, advertising expenditures, the length of time of commercial awareness, and the general reputation of the products and services. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002).

The Board first found that the MCDONALD’S mark is famous for likelihood of confusion purposes, given that the mark has been used since 1955, that McDonald’s operates more than 14,000 restaurants and serves 26 million people per day, and that McDonald’s has widely advertised the MCDONALD’S mark for decades across different media. Having established that the MCDONALD’S mark is famous, the Board then found that the “MC” family of marks is famous and “integrally associated with the MCDONALD’S mark and its goods and services,” based on numerous facts including its use since 1973, the vast number of products sold under the “MC” family of marks, and the widespread advertising of the “MC” family of products.

Upon finding that McDonald’s owned a family of marks and that the “MC” family of marks is famous, the Board analyzed the other du Pont factors for likelihood of confusion. In analyzing the similarity of the marks, Applicant asserted that the marks were not similar because the differences between the parties’ trade dress created distinct commercial impressions. The Board rejected this argument on the grounds that trade dress was irrelevant in this analysis because the marks at issue were all word marks. Because the Applicant’s mark consisted of the “MC” formative, followed by a descriptive or generic term for a food product, the marks were similar in appearance, meaning, and commercial impression such that potential consumers would view Applicant’s mark as a member of Opposer’s family of marks.

Applicant also tried to distinguish its goods from McDonald’s by arguing that the goods travelled in different channels of trade, as its goods were sold in grocery stores, whereas McDonald’s products were generally sold in quick service restaurants. The Board also rejected this argument, finding that grocery stores carry restaurant-branded goods and that McDonald’s restaurants operate inside of stores such as Wal-Mart. Further, given that Applicant’s goods are pickled vegetables offered at quick service restaurants, the Board also found that the channels of trade overlap.

Applicant further asserted that the existence of numerous third-party uses of marks that included the prefix “MC,” such as McIlhenny Company, McDann’s oatmeal, and McCain Foods USA, diminished the strength of McDonald’s “MC” family of marks. The Board disagreed, finding that the other “MC” formative marks did not share the structure of McDonald’s “MC” family of marks since they do not consist of a generic or descriptive suffix; instead, the majority of such marks consisted of surnames. Weighing all the du Pont factors, the Board concluded that the use of the MCSWEET mark in connection with pickled gourmet vegetables is likely to cause confusion with Opposer’s “MC” family of marks.

2. Dilution

With respect to dilution, the Board concluded that the MCSWEET mark would blur the distinctiveness of the McDonald’s family of “MC” formative marks.

Under Section 43(c)(2)(B) of the Lanham Act, dilution by blurring is the association, arising from the similarity between a mark or trade name and a famous mark, that impairs the distinctiveness of the famous mark. 15 USC §1125(c)(2)(B). To prevail on a dilution claim, a plaintiff must show that (1) it owns a famous mark that is distinctive; (2) the defendant is using a mark in commerce in a way that allegedly dilutes the plaintiff’s famous mark; (3) the defendant’s use of the mark began after the plaintiff’s mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring. Coach Servs. Inc v. Triumph Leaning LLC, 668 F.3d 1356, 1366 (Fed. Cir. 2012).

In considering whether the “MC” family of marks is famous for dilution purposes, the Board had to determine whether the Lanham Act’s definition of a “famous mark” applies to a famous family of marks. The Board found no language in the Lanham Act or legislative history to support the proposition that a “famous mark” does not encompass a famous family of marks. The Board also noted that the Second and Seventh Circuits have recognized that the Lanham Act’s dilution provisions apply to a family of marks.¹ Accordingly, the Board ruled that a famous mark under Section 43(c)(2)(B) in the Lanham Act encompasses a family of marks.

For dilution purposes, a mark is famous if it is widely recognized by the general consuming public of the US as a designation of source of the goods or services of the mark’s owner.² This depends on factors such as (1) the duration, extent, and geographic reach of advertising and publicity of the mark, and whether the mark is advertized or publicized by the owner or third parties; (2) the amount, volume, and geographic extent of the sales of goods or services offered under the mark; and (3) the extent of actual recognition of the mark. Based on the substantial evidence submitted by McDonald’s, the Board found that the “MC” family of marks is famous.

Next, the TTAB analyzed whether Applicant’s use of the MCSWEET mark was likely to cause dilution by blurring. Whether a mark or trade name is likely to cause dilution by blurring depends on factors such as (1) the degree of similarity between the mark and the famous mark; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent the owner of the famous mark engages in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark intended to create an association with the famous mark; and (6) any actual association between the mark and the famous mark.³

Based on all the relevant factors, including a dilution survey showing that 67 percent of individuals who encountered the MCSWEET term associated it with McDonald’s and its “MC” marks, the Board found that Applicant’s mark is likely to cause dilution by blurring.

This 59-page opinion, and McDonald’s consistent and aggressive policy of protecting its marks, demonstrates the benefit of enforcing one’s trademarks to maintain, as well as expand, trademark rights and deter infringers. Arent Fox routinely handles TTAB proceedings and advises clients how to protect their trademark rights.

¹ _{See AM General Corp. v. DaimlerChrysler Corp., 311 F.3d. 796 (7th Cir. 2002); Citigroup Inc. v. City Holding Co., 171 F.  Supp. 2d 333 (S.D.N.Y. 2001).}

² _{15 USC § 1125(c)(2)(A).}

³ _{15 USC §1125(c)(2)(B)(i) – (vi).}