Articles Tagged with Dilution By Blurring

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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.

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Chanel, Inc. (“Opposer” or “Chanel”) filed an Opposition proceeding against an individual applicant Jerzy Makarczyk (“Applicant”) who filed to register the mark CHANEL. The Applicant was interested in protecting the mark CHANEL for real estate development and construction of commercial, residential, and hotel properties in International Class 37. Chanel opposed the application on the grounds of dilution by blurring under §43(c) of the Trademark Act, 15 U.S.C. §1152(a), likelihood of confusion, and false suggestion of a connection under the Trademark Act. Opposer uses the CHANEL mark on a variety of  goods, including but not limited to apparel, jewelry, sunglasses, perfume, and cosmetics. And also for retail store services in the field of clothing and accessories. The Trademark Trial and Appeal Board (“TTAB” or “Board”) did not reach the issues of likelihood of confusion or false suggestion of a connection under the Trademark Act. See Chanel, Inc. v. Jerzy Makarczyk, Opposition No. 91208352 (May 27, 2014)[precedential].

The Trademark Act Sections 13 and 43(c) (15 U.S.C. §§ 1063 and 1125(c)) provide a cause of action for dilution. Dilution by blurring is an association arising from a similarity between a trademark or trade name and a famous mark that impairs the distinctiveness of the famous trademark. The Court of Appeals for the Federal Circuit set forth four elements a plaintiff must prove in order to succeed on this type of claim in a Board proceeding:

(1)   Plaintiff’s trademark must be “famous” and “distinctive”;

(2)   Defendant must be using a mark in commerce that allegedly is diluting the Plaintiff’s famous mark;

(3)   The Defendant’s use of the trademark must have begun after the Plaintiff’s mark became famous; and

(4)   The Defendant’s use is likely to cause dilution by blurring.

This standard was set forth in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-1724 (Fed. Cir. 2012). To address the first element, the following factors must be reviewed: (1) the duration, extent, and reach of the brand’s advertising and publicity; (2) the amount, volume, and extent of sales or services;  and (3) the extent of actual recognition of the trademark (wide spread recognition by the general public is required). Proving the level of fame required for a dilution claim is a high standard and the opposer has the burden of proof. See our blog post entitled TTAB Precedent – How Fame Impacts A Likelihood Of Confusion Determination, to compare the requirements for a fame showing under different standards.  Another way to determine if a mark is “famous” for dilution purposes is to answer this question in the affirmative, if the general public encounters the trademark, will it associate the trademark with the mark’s owner?

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