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McDonald’s Wins A Likelihood Of Confusion And Dilution Victory

McSweet LLC (“Applicant”) filed two trademark applications to register the mark MCSWEET for “pickled gourmet vegetables, namely, pickled cocktail onions, pickled garlic, and pickled, marinated olive medley” and “pickled asparagus.” (the amended identification). McDonald’s Corporation (“Opposer”) opposed both trademark applications on the grounds of likelihood of confusion, dilution, and lack of ownership. Opposer based its oppositions on the allegations that it owns a family of trademarks that include the prefix “MC” followed by another term that is either descriptive or generic. McDonald’s also alleged that its “MCDONALD’S” mark and its family of “MC” marks are famous. Some of its “MC” registrations include: MC for restaurant services; MCDONALD’S for restaurant services; MC CHICKEN; MC DOUBLE; MCRIB; MCMUFFIN; MCNUGGETS; MCFLURRY; MCGRIDDLES; MCCAFE; and MCSKILLET for various food products and beverages. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

In terms of priority, Opposer has been using the mark MCDONALD’S for restaurant services since 1955. In addition, the Opposer has been using variations of the “MC” formative mark in connection with food, restaurant services, and merchandising since 1973. Applicant has been using its mark MCSWEET for pickled vegetables since 2006 and is now seeking to expand the use of the mark on the goods listed above. Based on these facts, priority was not at issue in the proceedings. However, the Trademark Trial and Appeal Board (the “Board”) had to determine if the Opposer owned a “family of marks” and if a family of marks did exist was that family of marks legally “famous”.

The Federal Circuit has defined a family of marks as a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Opposer currently uses all of the registrations listed above in paragraph one. According to witnesses, the Opposer’s efforts to establish a family of marks has been so successful that consumers use the MC prefix to refer to all of the Opposer’s food and beverage products. In addition, the Opposer has invested substantial resources in promoting the MC formative marks. McDonald’s operates 14,000 restaurants across the United States that collectively serve 26 million people. The Board concluded that the Opposer owns a family of marks consisting of the prefix “MC” and this weighs in favor of finding a likelihood of confusion.

Since the MC family of marks is derived from the mark MCDONALD’S, the Board then considered whether MCDONALD’S was a legally famous mark before reaching the issue of whether the MC family of marks was famous as well. Even though the Opposer may have proven in prior cases that it owns a famous mark or a famous family of marks, this case had to be decided on the record presented. The record did establish that the mark MCDONALD’S was famous for the purposes of likelihood of confusion. See our blog post entitled, TTAB Precedent – How Fame Impacts a Likelihood Of Confusion Determination, for more on this subject.  With regard to the family of marks, the use started in 1973 when it adopted the mark EGG MCMUFFIN. Since that time Opposer has used the prefix “MC” for various goods and services. Based on broad resources and a significant advertising budget, a unique association between the “MC” formative marks and the opposer developed. Every in-store advertisement and drive-thru display is shown in all 14,000 stores. The Board concluded that the “MC” family of marks achieved fame.

Turning to the similarities between the Applicant’s mark MCSWEET and Opposer’s family of “MC” formative marks, the Board considered the likeness in the sound, appearance, and commercial impression. The Board concluded that the public would likely perceive the Applicant’s MCSWEET mark as being associated with or affiliated with Opposer’s family of MC marks. In connection with the relatedness of the parties’ goods and services, the Board focused on the complementary aspect of pickled vegetables being used as toppings on sandwiches. This fact, in addition to the fame of the Opposer’s marks allowed the Board to conclude that there was a relatedness to support a finding of likelihood of confusion.

In the end, the Board held that all the relevant du Pont factors favored likelihood of confusion. Lastly, with respect to dilution, it was concluded that the Applicant’s MCSWEET mark would blur the distinctiveness of the Opposer’s family of “MC” formative marks. For the elements required for a dilution claim, see our blog post entitled Chanel Inc.’s Successful Opposition Based On Dilution By Blurring.  The lesson to be learned is that trademark applicants must take care in the clearance stage to seriously consider any potential conflicts especially if a “famous” mark is involved. We would be happy to provide you with a courtesy consultation and assist you or your company with trademark clearance and trademark prosecution. Please feel free to contact our office to speak with one of our experienced NY trademark attorneys.