After selling pickles under the MCSWEET mark for nearly 20 years, Washington-based McSweet LLC applied for a federal trademark registration, only to be blocked by McDonald’s ubiquitous MC family of marks. As the reader undoubtedly knows, McDonald’s family of MC marks includes everything from MCDONALD’S and MCFLURRY to MCCHICKEN, MCDOUBLE, MCRIB, MCMUFFIN, MCSKILLET, MCGRIDDLES, MCCAFE, and MCNUGGETS. In fact, McDonald’s customers “MC” menu items even when McDonald’s does not. A McDonald’s representative testified, “They MC everything that we sell, even if we don’t… we will offer a product like a Quarter Pounder with Cheese. They will call it the McQuarter Pounder with Cheese.” McDonald’s also easily cleared the bar of establishing fame by showing that it has used the MCDONALD’S mark since 1955, operates 14,000 restaurants in the U.S. which serve 26 million people daily, and has widely advertised for decades.
The Trademark Trial and Appeal Board determined that MCSWEET is likely to be viewed as a member of McDonald’s MC family of marks, regardless of similarity to any one of McDonald’s individual “MC” marks, because it followed McDonald’s established pattern of using MC followed by a descriptive or generic term for the product. The board reasoned that ”pickled gourmet vegetables” are commonly used and sold by fast food restaurants and are sufficiently related to McDonald’s food products and services that consumer confusion is likely. Moreover, even if McSweet’s pickles were not so closely related to McDonald’s burgers and fries, the MCSWEET mark diluted McDonald’s family of MC marks by blurring their distinctiveness.
Would the result have been different if McSweet applied to register the MCSWEET mark 20 years ago, before McDonald’s had accumulated quite so many MC marks? One can never know, but clearly it is wise to be proactive by undertaking an appropriate trademark clearance search before adopting a new mark and obtaining protection early through federal trademark registration.