McSweet, LLC filed applications to register the mark MCSWEET for pickled vegetables. In its opposition, McDonald’s asserted dilution of and likelihood of confusion with eleven registered “MC” formative marks.
McDonald’s asserted that it owns a “family” of marks consisting of “MC” followed by a generic or descriptive term (such as “McRib” and “McMuffin”) and that both its MCDONALD’S and its “MC” family of marks are famous. A family of marks is an additional factor weighing in favor of likelihood of confusion. The Board focused on the family of marks claim, but considered the fame of the MCDONALD’S mark as contributing to the fame of the family of “MC” marks. Based on its extensive use and promotion of these marks, the Board agreed that McDonald’s owns a family of “MC” marks. Based on the evidence, including the 14,000 MCDONALD’S restaurants in the U.S. serving 26 million people per day, the Board agreed that the family of “MC” marks is famous for purposes of likelihood of confusion. The Board found that MCSWEET is similar to the family of “MC” marks and the goods are at least related. In fact, the Board found all of the relevant factors supported a finding of likelihood of confusion.
Although the Board found likelihood of confusion, the Board also considered McDonald’s claim that MCSWEET will dilute the famous “MC” family of marks by blurring the distinctiveness of the family characteristic of those marks. The Board found that the family of “MC” marks is recognized by the general consuming public as a designation of source of McDonald’s goods and services, and thus, is famous for dilution purposes. The Applicant, however, had used the MCSWEET mark since at least 2006 and claimed use on some of the goods since 1990. Nevertheless, the Board found that McDonald’s established sufficient fame in its marks dating back to at least 1986, prior to the Applicant’s earliest use of MCSWEET.
To show dilution by blurring, McDonald’s submitted a consumer survey showing that 67% people associated the term MCSWEET with McDonald’s, primarily because of the “MC” prefix.
Thus, the Board found likelihood of confusion and that MCSWEET was N likely to impair the distinctiveness of McDonald’s family of “MC” marks, and that it was therefore likely to cause dilution by blurring.
McDonald’s Corp. v. McSweet, LLC, Opposition Nos. 91178758 and 91192099 (T.T.A.B. April 9, 2009) [precedential].