McDonald’s Corp.v.2Bell B.V.

Trademark Trial and Appeal Board

Apr 22, 2004

No. 91118911 (T.T.A.B. Apr. 22, 2004)

Mailed: 4/22/04
Hearing: Paper No. 33
December 12, 2003 TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
McDonald's Corporation
v.
2Bell B.V.
_____
Opposition No. 91118911
to application Serial No. 75685456
filed on May 13, 1999
_____
Robert E. Browne and Michael G. Kelber of Altheimer & Gray for
McDonald's Corporation.
2Bell B.V., pro se.
______
Before Simms, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by 2Bell B.V. ("2Bell") to
register the mark MCDATE for "dating services."1
Registration has been opposed by McDonald's Corporation
("McDonald's" or "opposer"). As grounds for opposition, opposer
asserts that since 1955 it has continuously used the mark
MCDONALD'S in connection with its restaurant services; that it
1 Application Serial No. 75685456 filed May 13, 1999, based on Sections
1(b) and 44 of the Trademark Act.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91118911
2
has used and registered the "MC" formative alone and together
with other terms as marks in connection with its food products
and restaurant services and in connection with a wide variety of
other goods and services; that opposer owns a registration for
"MC" for restaurant services and 35 registrations of its
MCDONALD'S and "MC" formative marks for goods or services
substantially similar or closely related by their nature or use
to applicant's intended services;2 that opposer has used or is
likely to expand the use of its "MC" formative marks to include
the same services or type of services on which MCDATE is intended
to be used; that through opposer's extensive and continuous use
of the name MCDONALD'S and its "MC" formative marks the public
has come to recognize marks containing or comprising the "MC"
2 The pleaded registrations include MCKIDS for children's personal care
items; namely, cosmetics, shampoos, conditioners and soap (Reg. No.
1701330); MCMERCHANDISE for mail order services featuring novelty items
(Reg. No. 1878115); MCGIFT SHOP ("Shop" disclaimed) for retail gift
shop services (Reg. No. 1566577); MCDONALD'S for retail gift shop
services (Reg. No. 1293424); MCNATURE TRAIL for providing recreational
facilities for nature trips (Reg. No. 1591375); MCWIPES for pre-
moistened hand cleaning towellettes for sanitizing hands (Reg. No.
1579085); MCMOMS for general interest magazines for consumers (Reg. No.
1874650); MCSHIRT for men's clothing, women's clothing and children's
t-shirts and sweatshirts (Reg. No. 1592145); MCHAPPENINGS for newspaper
columns on the subject of local news and community events (Reg. No.
1840527); MCBUDDY for non-monetary charitable services; namely,
providing food, clothing, school supplies and the like to
underprivileged children and families (Reg. No. 1926019); MCHOLIDAY for
travel services; namely, providing travel and vacation information as
well as reservation and planning assistance (Reg. No. 1847010); MCPREP
for educational services, namely conducting classes, seminars,
conferences and workshops in the fields of math, science, computers,
communications, study skills and cultural enhancement, and distributing
course materials in connection therewith (Reg. No. 1908924); MCSHUTTLE
for transportation services, namely providing ground transportation
services (Reg. No. 1418655); and MCLODGE for hotel services (Reg. No.
1562702).
Opposition No. 91118911
3
prefix, together with a common word, for a wide variety of goods
and services as originating or being uniquely associated with
opposer; that opposer has developed valuable goodwill with
respect to each of its pleaded "MC" formative marks as well as
for its entire "MC" family of marks; that applicant's mark
consisting of "MC" coupled with the generic word "DATE" for the
identified services is confusingly and deceptively similar to
opposer's "MC" family of marks, particularly those used on
similar services identified in its pleaded registrations, as well
as its numerous other "MC" marks as used on a wide variety of
other goods and services; and that applicant's selection of such
a confusingly similar term suggests that applicant intends to
trade off the good will and recognition associated with opposer's
"MC" family of marks. In addition, opposer alleges that
applicant's mark would diminish and dilute the distinctive
quality of opposer's rights in its famous "MC" formative family
and marks and could tarnish such distinctiveness under Section
43(c) of the Trademark Act.
Applicant, in its answer, has essentially denied the salient
allegations in the notice of opposition, and has affirmatively
asserted, inter alia, that there are numerous registrations for
"MC" formative marks that are not owned by opposer; that
applicant's mark is not similar to any of opposer's marks; and
that opposer is not rendering any services that are the same or
related to dating services.
Opposition No. 91118911
4
The record includes the pleadings; the file of the involved
application; and opposer's two notices of reliance, one on email
correspondence between applicant and opposer that was initiated
by applicant and that took place between June 30, 1999 and May
15, 2000, and the other on color printouts from applicant's
website and printed publications consisting of newspaper articles
obtained from the Nexis database. The record also includes the
testimony (with exhibits) of opposer's witnesses, Sheila Lehr,
opposer's Managing Counsel and Roy T. Bergold, Jr., opposer's
former Vice President – Creative. Exhibits introduced during the
testimony deposition of Mr. Bergold include the declaration of
Mr. Bergold that had previously been submitted in connection with
a motion for summary judgment in this case and copies of the same
web pages that were submitted under opposer's notice of reliance.
The exhibits accompanying Ms. Lehr's deposition include the 35
registrations pleaded in the opposition and the same email
correspondence submitted with opposer's notice of reliance.
Applicant neither attended the depositions of opposer's
witnesses nor took any testimony in its own behalf. However,
applicant filed a notice of reliance on Internet articles from
third-party websites.3
Only opposer filed a brief4 and attended the oral hearing.
3 Applicant's notice of reliance was initially filed prematurely but
was timely resubmitted during applicant's testimony period.
4 Opposer's uncontested motion for an extension of time to file its
main brief is granted, and its brief is accepted as timely.
Opposition No. 91118911
5
As a preliminary matter, we note that applicant and opposer
each filed a motion to strike the other party's notice of
reliance which the Board deferred until the time of final
decision. We turn now to a consideration of those motions.
Opposer's motion to strike is well taken. Articles obtained
from the Internet, such as those submitted by applicant, may be
introduced into evidence through the testimony of a person who
can properly authenticate and identify the materials. However,
they do not constitute printed publications within the meaning of
Trademark Rule 2.122(e) and may not be made of record by a notice
of reliance. See TBMP § 704.08 (2nd ed. June 2003). Opposer's
motion to strike is accordingly granted.5
Applicant has moved to strike opposer's notice of reliance
on copies of newspaper articles and printouts from applicant's
website on the grounds that "[o]pposer does not indicate the
general relevance" of the evidence and because the evidence is
"incompetent and relevant."6 Opposer's notice sufficiently
indicates the relevance of the evidence, and although website
materials are not admissible by notice of reliance as explained
5 Moreover, it is clear from applicant's statement in its notice of
reliance that it seeks to rely on the information contained in these
articles for the truth of what those articles say. As such, the
evidence would, in any event, be considered inadmissible hearsay.
6 Although email correspondence would not ordinarily be admissible by
notice of reliance, applicant not only submitted these documents itself
in connection with a motion to extend its time to answer but continued
to refer to the email exchange in its answer to the opposition.
Therefore, this evidence is considered to have been stipulated into the
Opposition No. 91118911
6
above, these materials are of record because they have been
introduced into evidence through the testimony of Mr. Bergold.7
On the other hand, newspaper articles (and their electronic
equivalents) constitute printed publications that may be properly
submitted by a notice of reliance. See TBMP § 704.08 (2nd ed.
June 2003). To the extent that opposer is relying on this
evidence for the non-hearsay purpose of showing, for example,
perception and extent of recognition of McDonald's marks, the
evidence will be considered. Thus, applicant's motion to strike
is denied.
We turn then to the merits of this case.
McDonald's began its restaurant operations in 1955, and
since that time has become the world's largest food service
company, with sales in the United States exceeding $19.5 billion
in the year 2000, and worldwide sales of $33 billion in 1997 and
over $40 billion in 2000. In 1998 alone, McDonald's served more
than 40 million customers each day in over 24,000 restaurants
worldwide. Since the 1970's, McDonald's has extensively used and
promoted the "MC" formative in combination with generic words to
identify a wide variety of products and services as part of the
McDonald's family of marks.
Advertising expenditures for MCDONALD'S and the "MC"
formative marks for McDonald's products and services in the
record. In any event, the documents have been properly introduced as
exhibits to the testimony of Ms. Lehr.
Opposition No. 91118911
7
United States approached $500 million in 1998 and exceeded that
amount in 1999 and 2000. Opposer has advertised its "MC"
formative marks in all available media including television,
radio, newspapers, national magazines, telephone directories,
outdoor signage, and point of purchase advertising. Long prior
to the filing date of 2Bell's application, the "MC" formative
itself was registered as a mark for restaurant services and
opposer obtained numerous other registrations for "MC" formative
marks, including its pleaded marks, covering a wide range of
products and services. Prior to the filing date of the
application, the MCDONALD'S mark appeared in a number of print
advertisements for a diverse range of goods and services in
association with other "MC" formative marks such as, MCKIDS,
RONALD MCDONALD, and MAYOR MCCHEESE for children's clothing;
MCJOBS, and MAC TONIGHT for educational programs; MCRECYCLE USA
and MCDONALD'S PLAYLAND for recycling programs; and HALLOWEEN
MCNUGGET BUDDIES and MCDONALD HAPPY MEALS for food products.8 In
addition, for more than 40 years, McDonald's has extensively used
and promoted its red, yellow and white trade dress, including the
yellow or "golden" arches to designate the "M" in the McDonald's
name.
Applicant, 2Bell B.V., is a Dutch corporation with its
office in The Netherlands. Applicant filed its application for
7 Applicant has not suggested that applicant is not the owner of that
website or that the materials were not obtained from its website.
Opposition No. 91118911
8
the mark MCDATE on May 13, 1999 based on an intent to use the
mark in commerce (and under Section 44 of the Trademark Act), but
at some point began using the mark on the Internet. The record
shows that applicant was operating a website (in a language which
is presumably Dutch) for its MCDATE services at least as of
August 3, 2001, the date on which Mr. Bergold viewed the website.
Opposer has introduced color copies of selected pages from that
site. The record also shows that on June 30, 1999, applicant
sent an email communication to a representative of McDonald's
Corporation proposing a joint project involving the mark MCDATE.
A series of email exchanges between applicant and McDonald's
followed. In an email dated February 28, 2000, applicant
described its proposal as one which would "...combine a concept
of 'serious dating with restaurant dining.'"
Through the testimony of Sheila Lehr, opposer introduced
copies of 35 registrations for its pleaded marks testifying that
each of the registrations is subsisting and owned by opposer.
Thus, there is no issue with respect to opposer's priority. King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue,
including the similarity of the marks and the similarity of the
8 The run dates for these advertisements have been determined, for the
Opposition No. 91118911
9
goods and services. In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding are discussed below.
The record as a whole sufficiently establishes that
McDonald's is the owner of a family of marks consisting of the
prefix "MC" and a generic term. The evidence shows that the "MC"
family feature is distinctive (i.e., not descriptive or highly
suggestive or commonly used in the trade), and that long before
2Bell filed its application, opposer extensively used and
registered numerous marks containing the "MC" family feature and
advertised the MCDONALD'S mark in association with other marks in
the family. There is no question that this record establishes
that the public recognizes this family name and associates it
with McDonald's.9
The evidence also shows that opposer's "MC" family of marks
is strong and famous and entitled to a broad scope of protection.
In 2000 alone, McDonald's expended more than $500 million in
advertising for its various products and services and, in that
same year, sales exceeded $19.5 billion in the United States and
$40 billion worldwide for those products and services. There is
most part, from the face of the advertisements.
9 Moreover, the "MC" formative family has been recognized in a number
of published decisions by this Board and by the courts. See, e.g., J &
J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); McDonald's Corp. v. Druck and Gerner, 814 F.Supp.
1127, 26 USPQ2d 1492 (DC NNY 1993); Quality Inns International v.
McDonald's Corp., 695 F.Supp. 198, 8 USPQ2d 1633 (DC MD 1988);
McDonald's Corp. v. McBagel's Inc., 649 F. Supp. 1268, 1 USPQ2d 1761
(DC SNY 1986); and McDonald's Corp. v. McClain, 37 USPQ2d 1274 (TTAB
1995).
Opposition No. 91118911
10
no evidence in the record of third-party use or registration of
"MC" formative marks in any field.10
Turning to the marks, we find that MCDATE is substantially
similar to opposer's strong and famous "MC" family of marks. The
marks have the same prefix and the same structure and format.
Applicant's mark MCDATE, as with many of opposer's marks, is
composed of the "MC" family feature followed by a descriptive or
generic word. Applicant, in its answer, argues that none of the
35 marks pleaded by opposer in the opposition is similar to
MCDATE. However, where a family of marks has been established,
the determination of whether marks are similar is based on a
comparison of the challenged mark with the family of marks as a
whole, not necessarily any individual mark in the family. In
this case, there is no question that MCDATE would simply be
perceived by consumers as another member of McDonald's "MC"
family of marks. We also note that applicant has prominently
depicted MCDATE on its website in a red and gold color scheme and
style of lettering that is remarkably similar to certain elements
of opposer's distinctive trade dress, further reinforcing a
10 Applicant submitted copies and a list of registrations with its
answer arguing that there are numerous third-party registrations
containing the "MC" formative in their marks that are not owned by
McDonald's. However, applicant failed to make any third-party
registrations of record during its testimony period. Moreover, such
evidence, even if it were of record, would not necessarily diminish the
value of opposer's "MC" family of marks. See J & J Snack Foods Corp.
v. McDonald's Corp., supra.
Opposition No. 91118911
11
connection with McDonald's and the perception of MCDATE as part
of McDonald's family marks.11
We turn then to the goods and services. Opposer does not
provide dating services. Nor does opposer appear to have any
intention of expanding into this field. When asked what struck
him about applicant's website, Mr. Bergold responded,
Well, when I first saw it, I immediately assumed that it was
McDonald's Corporation that was getting involved in a
license for dating services, and frankly, I would have been
very much against that and would not have allowed that in my
past tenure."
...
Because I don't think a dating service is commensurate with
the image and the values and the principles that McDonald's
stands for. ...
Bergold Dep., p. 52.
Nevertheless, the question is not whether opposer does, or
even would, provide dating services, but rather whether the
purchasing public would believe, in view of the fame of opposer's
family of marks and the similarity of MCDATE to that family, and
in light of the numerous and diverse nature of the goods and
services on which opposer already uses its marks, that McDonald's
either provides a dating service, or that it is a service that is
11 It is not improper to consider these materials as evidence of the
meaning or commercial impression the mark projects. See, e.g.,
Specialty Brands v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281 (Fed. Cir. 1984); and In re Nationwide Industries, Inc., 6
USPQ2d 1882 (TTAB 1988). We nevertheless have based our finding that
the marks are similar on applicant's mark in typed form as it appears
in the drawing.
Opposition No. 91118911
12
endorsed by, or in some way associated with, McDonald's. We have
no doubt that they would.
In addition, the record shows that McDonald's is involved in
numerous community service activities offered under its family of
"MC" marks ranging from recycling programs (MCRECYCLE USA) to job
training programs (MCJOBS). Opposer also promotes its
restaurants as a place for social functions and interaction by
sponsoring such activities as movie nights, jazz nights,
candlelight dinners, "cruise" nights, and music concerts and
festivals. Mr. Bergold referred to a series of television
commercials (one featuring Michael J. Fox) that conveyed an image
of McDonald's restaurants as a place "you'd be very comfortable
bringing a date." Bergold Dep., pp. 19-20.
The record also includes newspaper articles describing
current trends in dating and dating services in terms of the
quality and speed of a McDonald's operation. For example,
'It's almost McDonald's approach to dating - slap them
together and move them out...' The Washington Times (July
20, 1998).
'Americans are uptight about sex and rejection,' she says,
'so we believe in ideas like love at first sight. It's a
McDonald's approach to love. ...' Daily News (New York)
(February 10, 1998).
[regarding video dating services] Californian Jeffrey
Ullman,... ...who may turn out to be the Ray Kroc of
McDates, has sold his service around the concept of "quality
singles." The Washington Post (February 14, 1988).
The use of MCDATE to identify dating services would clearly
evoke an association with McDonald's and, further, a belief by
Opposition No. 91118911
13
purchasers that those dating services originate with, or are
sponsored by or are in some way connected with McDonald's.
Moreover, McDonald's numerous consumer goods and services
and applicant's dating services would all be offered to ordinary
consumers who would not necessarily be likely to exercise the
degree of care necessary to prevent confusion. See Kimberly-
Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 1146, 227
USPQ 541 (Fed. Cir. 1985).
Opposer has also alleged that applicant intended to trade
off the good will and recognition associated with opposer's "MC"
family of marks. Applicant in its answer denied that allegation
and affirmatively asserted that MCDATE was in existence as a mark
before applicant contacted McDonald's with applicant's proposal;
that the selection of "MC" was "merely a coincidence" and that
applicant's proposal to McDonald's regarding the "mcdate-project"
had nothing to do "in itself" with the creation of the mark
(Applicant's Answer, p. 8); that the mark was created in The
Netherlands with the idea that the mark "should be short,
concise, strong, self-explanatory, friendly, ... [and] fit within
family values" (Applicant's Answer, p. 10); and that applicant
took the name from "the original Dutch project name, the
abbreviation for 'menugestuurde computer date' by taking the 'm'
and 'c' from the first letters in the first two words and adding
'date' on to it" (Applicant's Answer p. 10). In an email to a
McDonald's representative on February 28, 2000, applicant
Opposition No. 91118911
14
described its business proposal as a project designed to "combine
a concept of 'serious dating with restaurant dining'."
Applicant's selection of MCDATE based on the same image and
values associated with McDonald's,12 applicant's attempt, by its
business proposal, to tap into McDonald's restaurant market, and,
out of a world of trade dress options, applicant's decision to
depict MCDATE on its website in a color scheme and style that is
remarkably similar to McDonald's well-known and distinctive trade
dress, all lead us to conclude that applicant, by its selection
and use of the mark MCDATE, fully intended to promote an
association of the mark with McDonald's.
At a minimum, applicant was clearly aware of opposer's marks
and, as the newcomer, had the obligation to avoid confusion by
adopting a mark which is not similar to those marks. In re Shell
Oil Co., 992 F.2d 91204, 26 USPQ2d 1687 (Fed. Cir. 1993); and
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901 (Fed. Cir. 1989).
Decision: The opposition is sustained on the ground of
likelihood of confusion.13
12 "...the brand McDonald's...stands for...such things as quality,
service, cleanliness, value, consistency, good for kids, good for the
whole family." Bergold Dep., p. 23.
13 Having determined that opposer is entitled to prevail on the ground
of likelihood of confusion, we need not reach the issue of dilution.