January 29, 2015

McMonopoly


Have you been on the edge of your seats since last week when I promised to write about how a company like McDonald's Corp. can use the law preventing dilution of a famous mark in the context of the same case I discussed last week, McDonald's Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014)? If so, the wait is over.

As a quick refresher, the Board found the mark "McSweet" for "pickled gourmet vegetables, namely, pickled cocktail onion, pickled garlic, pickled, marinated olive medley, pickled green beans, and giardiniera, namely, a pickled celery, carrot, red pepper, garlic, green bean, and cucumber mix" and for "pickled asparagus" likely to be confused by purchasers and prospective purchasers with the "family" of McDonald's marks that began with "Mc" e.g. "MC CHICKEN", "MC DOUBLE", "MC CRIB", "MC SKILLET", "MC GRIDDLES", and "MC MUFFIN". Simply put, the Board concluded that a consumer seeing "McSweet" used for e.g. pickled cocktail onions was likely to be confused as to whether this product came from McDonald's.

This finding falls in a long tradition of cases in which likelihood of confusion has been found between the McDonald's "family" of "Mc" marks ("McMarks" in Mclanguage) and such marks as "McSleep" for motels, "McClaim" for legal services, "McDental" for dental services, and "McTeddy" for teddy bears.

Would you be confused? Below is a copy of the drawing filed in the "McSleep (and design)" applications:

Mcsleep Hotel

But there aren't so many cases which have found that a "family" of marks can qualify as a "famous mark" within the meaning of the anti-dilution provisions of the Trademark Act. In fact, the Board relied on two cases for its holding that "the language in the statute encompasses not just an individual famous mark, but also a famous family of marks".

The Trademark Act states that "[d]ilution by blurring is [the] association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark". It also states that to decide whether a mark is likely to cause dilution by blurring of a famous mark, "all relevant factors may be considered", including how similar the marks are, how distinctive the famous mark is, to what extent the use of the famous mark is exclusive, the extent to which the famous mark is recognized, whether there was an intent to create an association with the famous mark and the accused mark, and any actual association between the accused mark and the famous mark.

The Board stated the rationale behind preventing dilution by blurring is that "[d]ilution diminishes the 'selling power' that a distinctive mark or name with favorable associations has engendered for a product in the mind of the consuming public". It seems possible though that there could be, for example, a "Mc" mark which would actually have more favorable associations than the McDonald's family ("McFamily" in McLanguage) of "Mc" marks ("McMarks" in McLanguage) and which would enhance the "selling power" of McDonald's products because of the association made by consumers. Such a mark would no doubt nevertheless being found to be diluting.

The Board found that the "Mc" "family" of marks was famous for purposes of proving dilution under the Trademark Act (which requires that it be shown that the mark is "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner"). As mentioned in my last blog, McDonald's provided the Board with ample evidence of the unavoidable and pervasive presence of its "Mc" marks in our lives.

The Board went through the various factors I mentioned above. Once a mark is found "famous" some of these factors, like distinctiveness and consumer recognition fall into place. With respect to the others, the Board found that McDonald's was engaging in "substantially exclusive" use of the "Mc" marks combined with a descriptive or generic term (e.g. the "double" in "McDouble" is "descriptive" of a double hamburger sandwich while "muffin" in "McMuffin" is "generic", the name of the product itself), and that since the "McSweet" mark met the "criteria that define" the McDonald's family of marks "inasmuch as it is comprised of the identical prefix, combined with [a] descriptive termâ¦" and it was therefore "similar".

It is interesting that the "McDonald's" mark itself would not "follow the pattern" of the McDonald's "family of marks" since "Donald" is not descriptive or generic.

McDonald's also had to prove that there was an association made by consumers between "McSweet" and the famous family of McDonald's "Mc" marks. Surveys of consumers are often used to show both that a mark is famous and that consumers associate that mark with a single source.

In a survey, the respondents were shown either the following test card or "control" card. The consumers were told, "[t]his is the name of a product that you might see in a grocery store aisle. Feel free to comment on anything that strikes you about this, either positively or negatively." It is a measure of the power and influence of the McDonald's "family" that 46% of the 94% of respondents who made a spontaneous comment in response to this question "McSweet" mentioned McDonald's. Not surprisingly no one mentioned McDonald's when they saw "Mr. Sweet".

The consumer respondents were asked three "likelihood of confusion" questions which showed that 26% of all respondents were confused about whether McSweet was associated with McDonald's. After the likelihood of confusion question, the survey asked a "dilution" question: "What, if anything, came to your mind when your first saw this name?" The final conclusion of the survey was that McDonald's came to mind in 41% of the respondents when they imagined the use of the McSweet mark on a product in a grocery store aisle.

As has been mentioned, an interesting aspect of the Board's approach to likelihood of confusion and dilution is that because it is considering the issue of registrability of a mark rather than whether the use of a mark actually infringes another mark, the surveys are going to show the mark in the abstract, as in the cards above. Below, again, is a photo of the product as it actually appeared in the grocery aisle:

Mcsweet1

Would you be confused? As mentioned in my last blog, there was no evidence that anyone had actually been confused over the years in which the "McSweet" product appeared on the grocery stores.

This leads to a question of how much weight should be given to a Board finding of likelihood of confusion or dilution when these questions are before a court. More on that in my next blog, when I also discuss the factors considered by the Board.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to contact us.