Tuesday, March 01, 2005

TTAB Reverses 2(d) Refusal of "McHEALTH CLINIC & Design"

Dr. Baharat A. Jamil and his family overcame the PTO's "family of marks" argument in persuading the TTAB to overturn a Section 2(d) refusal to register the mark McHEALTH CLINIC & Design (CLINIC disclaimed) for "healthcare services, namely, preventative, alternative, and conventional healthcare." In re Jamil, Serial No. 76032587 (February 17, 2005) [not citable].

The Examining Attorney relied on 5 registrations owned by McDonald's Corporation for marks containing the words RONALD McDONALD HOUSE, for providing temporary lodging and hospitality rooms in hospitals for families with hospitalized children (HOUSE disclaimed).

The Board found the services to be related for Section 2(d) purposes: the services "on their face appear to be complementary," since "families of children in need of clinical or hospital care not infrequently require" hospitality rooms and temporary housing.

As to the marks, the Examining Attorney contended that, because the McDonald's Corporation "has established a famous family of marks containing the prefix 'MC,'" the cited registrations should be accorded a broad scope of protection. As support for her assertion, the Examining Attorney cited two prior Board decisions that "recognized the fame of these ['MC'] marks as well as the establishment of a family of marks by McDonald's Corporation."

The Board rightly found several flaws in the PTO's argument: not only were the two cited cases 9 and 14 years old, but more importantly, the Applicant here was not a party to those proceedings. Thus the Board's factual findings in those cases and its conclusions of law based thereon "do not constitute evidence which is binding on either applicant or the Board in this proceeding." [emphasis in original].

The Board pointed out that the record contained "no proof that the cited marks are part of a famous family of marks," and it then turned to a Section 2(d) analysis based upon "each of the cited marks individually." Under that approach, the Board concluded that the marks at issue are not confusingly similar.

Ronald McDonald House -- Knoxville, Tennessee

The Board, however, added a note of caution that the victorious Jamils should heed: "a different result might pertain in a proceeding (such as an opposition) in which evidence that registrant possesses a family of 'MC'-prefixed marks is made of record." Perhaps the Jamils might take a gander at last year's TTAB decision in McDonald's Corp. v. 2Bell B.V., Opposition No. 91118911 (April 22, 2004) [not citable], in which McDonald's successfully opposed registration of the mark McDATE for dating services, based in large part on staggering evidence that the "MC" family of marks is strong and famous and entitled to a broad scope of protection under Section 2(d).

Text ©John L. Welch 2005. All Rights Reserved.


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