Monday, October 06, 2014

Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables

In a 59-page opinion, the Board sustained McDonald Corporation's opposition to registration of the mark MCSWEET for pickled gourmet vegetables, finding the mark likely to cause confusion with, and likely to dilute, opposer's "MC" family of marks for restaurant services and food products. Based on opposer's staggering sales and advertising figures and its "extraordinarily impressive number of products identified by individual marks in the 'MC' family," the Board concluded that the family of marks consisting of the prefix "MC" followed by a descriptive or generic term is famous for both Section 2(d) and Section 43(c) purposes. [This post will attempt to hit the high points of the opinion]. McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

Family of Marks: The Board first addressed the family-of-marks question.

A family of marks is 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. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.

Opposer owns registrations for, and uses, the mark MC (alone) as well as the marks MCDONALD’S, MC CHICKEN, MC DOUBLE, MCRIB, MCMUFFIN, MCNUGGETS, MCGRIDDLES, MCCAFE, MCSKILLET, and MCFLURRY. [The marks MC, MCDONALDS, and MCFLURRY "are not, strictly speaking, members of Opposer’s claimed 'MC' family of marks because neither 'DONALDS' nor 'FLURRY' is generic or descriptive of the relevant goods, and the mark MC lacks a generic or descriptive suffix." Nonetheless, these marks reinforce the association between Opposer and marks that incorporate the prefix "MC."] According to witnesses, Opposer’s efforts to establish and maintain the “MC” family of marks have been so successful that consumers spontaneously use the “MC” prefix in connection with all of Opposer’s products. The Board concluded that McDonald's owns a family of "MC" marks comprising the prefix "MC" followed by a descriptive or generic term.

Section 2(d) Fame: In assessing the fame of the family of marks, the Board also considered the fame of the mark MCDONALD’S "because the 'MC' family was derived from and points back to the mark and as such is integrally related to that mark."

The evidence established that opposer has used the MCDONALD’S mark in connection with food and restaurant services since 1955, and operates 14,000 restaurants in the United States which serve 26 million people per day. It sells an "enormous number" of products under each of its 'MC' family members. Opposer extensively advertises products within the “MC” family - with some of the advertising emphasizing the "MC" prefix - and has also widely advertised under the MCDONALD’S mark for several decades.

The Board concluded that the "MC" family of marks is famous for Section 2(d) purposes, 

Applicant lamely argued that "the fame of [Opposer’s] mark may weigh against a finding of likelihood of confusion because consumers are so familiar with the famous mark that they can readily identify differences with other marks and the goods or services offered thereunder." The Board pointed out that the fame of a mark is not to be considered a liability in the likelihood of confusion analysis. It concluded that, the mark MCDONALD’S and the "MC" family of marks are famous in connection with restaurant services and food products, and are entitled to a wide latitude of legal protection.

Similarity of the Marks: In considering the involved marks, "the question is not whether Applicant’s mark is similar to Opposer’s individual marks, but whether Applicant’s mark would likely be viewed as a member of Opposer’s family of marks."

Applicant acknowledging that its mark was created by Leo McIntyre using the “MC” from his surname and "SWEET" to describe the sweet brine used to pickle onions. Applicant argues that its mark can be distinguished from Opposer’s family of marks because its mark is a surname. The Board disagreed: "Because Applicant’s mark and Opposer’s family of marks all start with the prefix “MC” and are followed by a term that is descriptive or generic for the goods, we find that the similarities in appearance, meaning and commercial impression between Applicant’s mark MCSWEET and Opposer’s family of “MC” formative marks are such that potential consumers would view Applicant’s mark as a member of Opposer’s family of marks."

Relatedness of the Goods: The evidence established that pickled vegetables are offered at quick service restaurants; Opposer’s restaurants offer multiple products that contain pickles and onions, and applicant’s pickled vegetables may be used as toppings for opposer's sandwiches. In view of the fame of Opposer’s "MC" family of marks for its food products and the complementary nature of the goods, the Board found the parties’ goods to be sufficiently related to support a finding of likelihood of confusion.

Applicant contended that its goods travel in different channels of trade from Opposer’s goods and services, since applicant's goods are not sold in quick-service restaurants. The Board noted, however, that there are no restrictions as to channels of trade in the opposed applications.

Moreover, restaurant-branded foods are also sold in supermarkets or grocery stores: for example, Burger King frozen onion rings, White Castle frozen hamburgers, and T.G.I. Friday’s frozen appetizers. Grocery stores are thus within the ordinary channel of trade for restaurant-branded goods. Moreover, since 1993, Opposer has operated McDonald’s restaurants inside Wal-mart stores.

Considering the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claim.

Likelihood of Dilution: The Board ruled that the term "famous mark" in Section 43(c)(2)(B) is applicable to a "famous family of marks." This statutory language "encompasses not just an individual famous mark, but also a famous family of marks. There is nothing in the Lanham Act or its legislative history to warrant the exclusion of a family of marks from protection against dilution. Indeed, the inherent nature of a family of marks, may make such marks more susceptible to blurring than a single mark."

Fame: Based on the record evidence, the Board found that Opposer's "MC" family of marks meets the higher fame standard applicable for the purpose of establishing dilution by blurring. Moreover, Opposer also proved that its family of marks was sufficiently famous as early as 1986, prior to applicant's alleged first use of the applied-for mark in 1990.

Considering the six "blurring" factors set forth in Section 43 (c)(2)(B)(i)-(vi), the Board found that applicant’s mark MCSWEET is "very similar to Opposer’s family of marks;" that the combination of the prefix "MC with a generic or descriptive food term is inherently distinctive; that opposer's use of its "MC" family of marks is substantially exclusive; and that the degree of recognition of opposer's family of marks is and has been quite strong since as early as 1986 (when Opposer operated 7,272 restaurants in the United States and had sales of approximately $9,534,000,000). The Board found no evidence that applicant intended to create an association with Opposer’s family of marks.

Finally, as to proof of actual association between applicant's mark and the "MC" family of mark, opposer relied on the results of a dilution survey. The Board noted that "[b]oth the courts and the Board have found the 'brings to mind' survey format acceptable as evidence of actual association, which is required to establish likelihood of dilution."

Opposer's survey demonstrated "a substantial degree of association between MCSWEET and McDonald’s and the "MC" marks: "67% or two out of three individuals who encounter the MCSWEET term associate it with Opposer, McDonalds and its 'MC' marks." Notwithstanding Applicant’s objections, the Board found that "the survey demonstrates actual association between the mark MCSWEET and Opposer's family of 'MC' marks."

Considering all of the relevant dilution factors, the Board found that the mark MCSWEET "is likely to impair the distinctiveness of Opposer’s family of “MC” marks and is therefore likely to cause dilution by blurring within the meaning of Section 43(c)."

Read comments and post your comment here

TTABlog comment: There's a lot of basic TTAB law well explicated in this opinion. The discussion of the dilution survey is particularly instructive.

Text Copyright John L. Welch 2014.


At 10:47 AM, Anonymous Anonymous said...

can't we all agree at this point that it's malpractice to advise someone to use "Mc"-anything?


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