Did you think of McDonald's when you saw "McTrademarks"?

In my blog post last week, I promised to write about how a large company with nearly ubiquitous advertising can use claims of dilution to enormous effect, but first, in the context of one case, McDonald's Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014), I am going to write about how a large company with nearly ubiquitous advertising can use the fame of its mark in connection with showing likelihood of confusion.

Of course, McDonald's can prove that the "MCDONALD'S" mark is famous, but what about the simple prefix "MC"?

McDonald's thought it could show that its use of "MC" was famous enough to be allowed extra protection against "McSweet" in a case that involved both the issues of "likelihood of confusion" and "dilution" (which, as I mentioned before, can be found even if there is no likelihood of confusion).

McSweet, LLC filed two applications for registration of "McSweet", one 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 one for "pickled asparagus".

McSweet had been using its mark for a number of years, and a couple of specimens of use which it filed for registration of its mark looked like this:

Therefore, the Trademark Office allowed the applications to be published in a publication called the Official Gazette, which is published weekly by the Trademark Office. After the mark is published in the Official Gazette, any party that thinks it may be damaged by registration of the mark has thirty days either to oppose registration of the mark or obtain an extension of time to oppose.

McDonald's thought that it would be damaged and started opposition proceedings before the Trademark Trial and Appeal Board.

McDonald's claimed that both its mark "MCDONALD'S" and its "MC" "family of marks" were famous and that it owned registrations of "MC" and "MCDONALD'S" for restaurant services as well as a family of marks such as "MC CHICKEN", "MC DOUBLE", "MC CRIB", "MC SKILLET", "MC GRIDDLES", and "MC MUFFIN" in which "MC" was combined with a term which described or identified the product or service with which the mark was used McDonald's stated that consumers exclusively associated such marks with it.

Here are some of the samples of use that were filed by McDonald's in connection with obtaining the registrations:

The Board had concluded that the "Mc" marks were "famous" for the purposes of determining likelihood of confusion because they met the standard of "a significant portion of the relevant consuming publicâ¦recognizes the mark as a source indicator." Since the "Mc" marks were "famous" for restaurant services and food products, the Board found that they were "entitled to a wide latitude of protection."

If you saw the "McSweet" product on the shelf would you be confused as to whether it was connected with McDonald's?

Whether or not the particular use is confusing, however, was not the question before the Trademark Trial and Appeal Board. It doesn't look at the particular way a mark is used â the question that it decides is whether the "McSweet" mark shown in the application (i.e. the word "McSweet") should be allowed registration regardless of whether the particular use shown in a specimen would be confusing because the "trade dress" around the mark can be changed at any time.

Yet, at the same time, the Board will also look at a number of real world factors. In determining that there was a likelihood of confusion between the McSweet mark and "Mc" family of marks, the Board considered such external factors as the strength of the "Mc" marks in the marketplace, channels of trade, sophistication of the purchasers, third party uses of "Mc" mark, actual confusion etc.

For example, while the Board stated that McSweet could not distinguish between the channels of trade in which its products sold and the McDonald's products were sold because the McSweet applications did not include restrictions in the channels of trade, it also stated that McDonald's evidence showed that restaurant-branded foods are sold in supermarkets or grocery stores (though not McDonald's foods) and stated that "[f]inally, since 1993, Opposer has operated McDonald's restaurants inside of Walmart storesâ¦Walmart sells groceries in its storesâ¦Accordingly, we find that this factor also weighs in favor of finding that confusion is likely".

Why did the Board not leave it at noting that the applications and registrations do not include restrictions in the channels of trade? What would the Board have done if the evidence showed that restaurant-branded foods were not sold in grocery stores and that McDonald's was not in any stores?

Certainly one of the most important, if not the most important, real world factor is whether people have in fact been confused.

McSweet argued that it had sold "McSweet" products for more than twenty years without a single instance of known confusion with McDonald's marks, and it doesn't appear that McDonald's had any knowledge of any actual confusion either.

Nevertheless, the Board stated that there was "scant evidence in the record upon which to determine whether there has been a meaningful opportunity for confusion to occur" and concluded that twenty years of no evidence of confusion did not even weigh in McSweet's favor.

The Board thus concluded that there was a likelihood of confusion regardless of twenty years with no evidence of confusion.

What would the Board have done if it appeared that there was no actual confusion because of the "trade dress" used with "McSweet"? Would it then have considered the trade dress?

More on how the Board evaluates likelihood of confusion next week.

I will also discuss how the Board resolved the dilution claim in the McSweet case.

The Board's decision finding likelihood of confusion and dilution was packed with the references to evidence showing the pervasive presence of McDonald's in our lives. And I will leave you for now with this evidence of television ads that helped us all learn "McLanguage":

Presenting Ronald McDonald and Rockin' McLanguage

(singing) There's nothing McTo it. You can McDo it.

Just pick a word. Add a Mc to it. Yeah.

McYou, McMe, McCamera, McWe.

It's Rockin' McLanguage.

Don't know what I'm talking about? Watch this video: