The USPTO's Trademark Trial and Appeal Board recently issued an interesting opinion in McDonald's Corp. v. McSweet, LLC.
From the title alone, you probably guessed it involved a ruling on McDonald's family of "Mc" marks — and you'd be right. You also likely predicted the Board ruled that the "McFamily" of marks was protectable. Right again.
What you might not have been able to predict was the extent to which the Board was willing to protect McDonald's MC family of marks. If you guessed all the way to pickles, then stop reading this article and start playing the stock market: Your ability to predict the future might be a lot more helpful and lucrative than whatever your current day job is!
Joking aside, let's examine how the Board got to its conclusion.
Specialized pickle maker McSweet LLC, based near Seattle, had filed two applications to register its McSweet mark for pickled cocktail onions, garlic, marinated olives and asparagus. The company has been using its McSweet mark in connection with pickled gourmet vegetables since at least as early as 2006.
As it is wont to do when trademark applications too nearly approach the fabled "Mc" prefix, McDonald's opposed McSweet's applications on the grounds of likelihood of confusion, dilution, and lack of ownership. McDonald's alleged that it owns a family of Mc marks and that its McDonald's and its Mc family of marks are famous.
In the first twist, McSweet counterclaimed to cancel several of McDonald's Mc marks (McMarks?), including McPizza, McNuggets, McCola, McChili, McCookie, McCoffee and McVeggie Burger. In response, perhaps surprisingly, McDonald's voluntarily surrendered its registrations for all of those marks except for McNuggets. This is interesting because it highlights a major concern that many opposers often overlook: the vulnerability of their own marks. An opposer to an application had better be ready to prove up its rights in all its asserted marks; if not, the leverage can turn quickly and put the opposer on the defensive.
McDonald's was fortunate in this case that it had so many Mc marks to rely on. Otherwise, McSweet's strategy might have ultimately proven successful.
Once the Board summarily concluded that McDonald's had standing and priority, it turned to the main question: whether McDonald's could prove McSweet's use of the name McSweet was likely to cause confusion.
Here, McDonald's smartly alleged not only a likelihood of confusion between McSweet's mark and the McDonald's family of McMarks but also a likelihood of confusion between its McDonald's mark and McSweet's own. By explicitly adding in a claim for confusion with its name mark, the global fast-food restauranteur not only forced the Board to focus on the family of marks claim, which is often a more difficult claim to prove, but also to consider the fame of the McDonald's mark as contributing to the fame of that family of marks. The Board complied, even though the McDonald's name, as a mark, does not exhibit the family characteristic of coupling the Mc prefix with a descriptive or generic term.
The Federal Circuit has defined a family of marks as 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, the court has noted: There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.
So, the TTAB began its analysis by examining whether McDonald's owns a family of Mc marks. Even though McDonald's had great case law precedent supporting its contention that it owned rights in its Mc family of marks, the Board wanted to decide the issue anew in this case. It began by explaining that even with the cancelled registrations, McDonald's still owned a number of MC marks, including McChicken, McDouble, McRib, McMuffin, McNuggets, McGriddles, McCafe, McSkillet and McFlurry; and that through McDonald's marketing efforts, consumers have come to associate marks consisting of the Mc prefix and a generic or descriptive suffix with McDonald's. In fact, the Board believes that McDonald's marketing has been so successful that consumers spontaneously use the Mc prefix in connection with all of McDonald's products.
Having found that McDonald's owns a family of Mc marks, the Board then turned to whether that family is famous. In doing so, however, as referenced above, the Board also considered the fame of the McDonald's mark because the Mc family was derived from and points back to the McDonald's mark and as such is integrally related to that mark.
The Board began by holding, not surprisingly, that the McDonald's mark was famous. Interestingly, the Board moved almost directly from that holding to stating that the record also shows that McDonald's family of Mc marks is famous for purposes of likelihood of confusion as well. McDonald's started its family of Mc marks in 1973, when it adopted the Egg McMuffin mark. Since then the company has used the prefix to describe various McDonald's products as well as discussing their relationship to McDonald's.
The Board held that the Mc family of marks is integrally associated with the McDonald's mark and its goods and services. It further held that McDonald's use of the Mc prefix as the common characteristic of its family, along with the extensive advertising and promotion of the Mc family of marks together in advertisements and in McDonald's restaurants, and the extensive number of products sold under the MC family of marks, firmly established that the Mc family was famous for the purpose of likelihood of confusion.
Originally published on InsideCounsel.
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