Thursday, July 24, 2014

Fame of "Mc" Family of Marks Propels McDonald's to 2(d) Victory Over "BioMcDiesel" for Fuel

The fame of its "Mc" family of marks propelled McDonald's Corporation to a Section 2(d) victory in its opposition to registration of the mark BioMcDiesel, in standard character form, for "biodiesel fuel." The Board declined to reach McDonald's dilution and lack-of-bona-fide-intent claims. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].

Applicant Joseph, appearing pro se, conceded that McDonald's owns a "Mc" family of marks for food products and restaurant services, that McDonald's and has used the "Mc" formative in connection with a variety of non-food related services, and that consumers associate terms including "Mc" with McDonald's. The testimony and evidence also demonstrated the existence of a "Mc" family of marks.

Applicant also admitted that the "Mc" family of marks is famous and was famous long prior to his application filing date. The record evidence corroborated the fame of the "Mc" formative. McDonald's operates 14,500 restaurants in the United States and served 28 million customers per day. Media usage and public recognition of the "Mc" formative compelled a finding of fame.

Applicant's good, biodiesel fuel, may be made from used fryer grease, known as yellow grease. McDonald's is one of the largest sellers of yellow grease, and it promotes its sustainability programs, including its recycling efforts, on its website. The media has recognized McDonald's for its recycling program, including use of yellow grease as biofuel.

McDonald's submitted five third-party registrations for marks covering both restaurant services and gasoline or fuel (e.g., CHEVRON, BP, COSTCO), as well as evidence that it has been sharing locations with gas stations since 1993 (some of which sell biofuel).

Although we cannot conclude from this evidence that biodiesel fuel and restaurant services in general are related, it is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food it ems served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe that there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.

Applicant Joseph stated his intention to sell biofuel nationwide at retail gas stations. Thus ordinary consumers may be customers for both applicant's product and McDonald's restaurant services.

As to the marks, the Board noted that "Mc" is not the first syllable in the applied-for mark, but the evidence showed that McDonald's similarly uses "Mc" in such forms as EGGS McMUFFIN, CHICKEN McNUGGETS, and SAUSAGE McMUFFIN. And although DIESEL is not a food product, the use of DIESEL as the suffix word in applicant's mark follows the structure of McDonald's family of marks. "[B]ecause of the fame of Opposer’s 'Mc' formative family of marks, when third parties use the 'Mc' formative, it engenders a similar commercial impression as Opposer’s 'Mc' formative family of marks.

Pointing out that a newcomer "has the clear opportunity, if not the obligation, to avoid confusion with well-known marks of others," the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  There was no explanation as to why the applicant choose to include "Mc" in his mark.

Text Copyright John L. Welch 2014.


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