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Sept. 30 — The term “McSweet” as a trademark for pickled vegetables was likely to cause confusion with and dilution by blurring the “Mc” family of trademarks owned by McDonald's, the Trademark Trial and Appeal Board ruled Sept. 29 (McDonald's Corp. v. McSweet, LLC, T.T.A.B.
Sustaining the McDonald's opposition to the registration, the board rejected a Seattle pickled vegetable company's attempt to register its “McSweet” trademark.
However, the court also found that Samsung and HTC were liable for use prior to the date of the agreement with Google, and it denied summary judgment of noninfringement applied retroactively.
McDonald's Corp. of Oak Brook, Ill., is one of the world's largest fast food outlet franchisors, with 35,000 outlets in 120 countries. The company traces its history back to a McDonald's restaurant founded in 1940 in San Bernardino, Calif., but it claims priority in the “McDonald's” trademark as of 1955.
McDonald's holds several U.S. trademark registrations related to terms incorporating the “Mc” prefix, including “Mc” by itself for restaurant services, “McDonald's,” “McChicken,” “McDouble,” “McRib,” “McMuffin,” “McNuggets,” “McFlurry,” “McGriddles,” “McCafe” and “McSkillet.”
In 1990, after experimenting with pickling recipes, McIntyre began selling McSweet Pickled Cocktail Onions to bars and restaurants in the Seattle area. McIntyre established McSweet LLCwhich began supplying pickled onions by mail order and also began developing other pickled products.
McIntyre said that he derived the “McSweet” trademark from the “Mc” in his family name and the term “sweet” in reference to his sweet pickling brine recipe.
In response to the opposition, McSweet sought cancellation of several registrations held by McDonald's, arguing abandonment, including “McPizza,” “McNuggets,” “McCola,” “McChili,” “McCookie,” “McVeggie Burger” and “McCoffee.” McDonald's voluntarily surrendered all those registrations, except McNuggets.
The board first found that McDonald's did have rights in a “family” of trademarks incorporating the “Mc” prefix combined with a generic or descriptive element.
Furthermore, the board concluded that this family of marks was famous for the purposes of federal trademark law and that the public would perceive “McSweet” as being part of the McDonald's family of “Mc” trademarks.
Applying a multi-factor balancing test for likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), the board ruled that “McSweet” did create a likelihood of confusion with the “Mc” family of trademarks owned by McDonald's.
Turning to McDonald's dilution claim, the TTAB similarly found that the “Mc” family of trademarks was distinctive and famous.
The board then applied a six-factor test for dilution by blurring set forth in the Lanham Trademark Act of 1946, 17 U.S.C. §1125(c)(2)(B), concluding that the McSweet trademark was “likely to impair the distinctiveness” of the McDonald's “Mc” family of trademarks.
The board thus sustained the opposition and refused the McSweet registration.
The board's opinion was authored by Administrative Trademark Judge Francie R. Gorowitz and joined by Judges Karen Kuhlke and Anthony R. Masiello.
McDonald's was represented by Neal, Gerber & Eisenberg LLP, Chicago. McSweet was represented by Hendricks & Lewis PLLC, Seattle.
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Full text at http://pub.bna.com/ptcj/91178758TTAB20140929.pdf.
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