McDonald’s Corp.v.Maureen Kelly

Trademark Trial and Appeal Board

Nov 24, 1998

No. 91100619 (T.T.A.B. Nov. 24, 1998)

Paper No. 25
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
McDonald’s Corporation
v.
Maureen Kelly
_____
Opposition No. 100,619
to application Serial No. 74/624,036
filed on January 23, 1995
_____
Carol Anne Been of Sonnenschein Nath & Rosenthal for
McDonald’s Corporation
James M. Wagstaffe of Cooper, White & Cooper for Maureen
Kelly
______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Maureen Kelly to
register the mark “McGREET.”1 on the Principal Register for
“greeting cards, note pads, stationery, self-stick removable

1 The mark includes a period.
Opposition No. 100619
2
note pads”.2 The application is based on a bona fide
intention to use the mark in commerce.
McDonald’s Corporation has opposed the application,
alleging that since 1955 opposer has used the name
McDONALD’S as a trademark and service mark for an extensive
system of restaurants which prepare and sell a limited menu
of moderately-priced, quickly-prepared foods; that opposer
has widely used the “Mc” prefix combined with generic terms
as trademarks and service marks in connection with its
restaurants, food products, and a wide variety of other
goods and services including greeting cards, note pads,
printed matter, stationery, gift and novelty items, and
services related thereto; and that opposer owns
registrations for both RONALD McDONALD3 and the design of
the Ronald McDonald character4 for greeting cards, THE HOUSE
THAT LOVE BUILT and design5 for greeting cards and
envelopes, McNOTES and design6 for note pads,

2 Application Serial No. 74/624,036, filed January 23, 1995.
3 Reg. No. 1,499,525, issued August 9, 1988, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed dates
of first use and first use in commerce are March 1985.
4 Reg. No. 1,500,487, issued August 16, 1988, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed dates
of first use and first use in commerce are March 1985.
5 Reg. No. 1,505,874, issued September 27, 1988, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed dates of first use and first use in commerce are November
1985.
6 Reg. No. 1,608,229, issued July 31, 1990, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The word ‘notes’ is
disclaimed. The claimed dates of first use and first use in
commerce are October 25, 1989.
Opposition No. 100619
3
McQUESTION7 for preprinted paper note pads, and McCALENDAR8
for calendars; that opposer owns numerous registrations for
other “Mc” formative marks for, inter alia, stationery, gift
and novelty items and printed matter, and related services
and for food products and restaurant services; and that
through extensive and continuous use of the marks McDONALD’S
and the “Mc” formative marks, opposer has developed a family
of marks, such that the public recognizes opposer’s marks
utilizing the “Mc” prefix for diverse products outside the
food service industry. Opposer further alleges that
applicant’s mark is formed by the “Mc” prefix together with
the generic word “greet”; that applicant’s selection of her
mark suggests that applicant intends to trade off the good
will and recognition associated with opposer’s family of
marks; and that applicant’s mark, if used on her goods,
would so resemble opposer’s previously used and registered
marks, such as McCALENDAR, McNOTES, McQUESTION, and McPRINT,
as well as opposer’s family of “Mc” formative marks, as to
be likely to cause confusion, mistake, or deception.
Applicant denied the salient allegations of the notice
of opposition.

7 Reg. No. 1,809,178, issued December 7, 1993. The claimed dates
of first use and first use in commerce are March 1993.
8 Reg. No. 1,550,136, issued August 1, 1989, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed dates
of first use and first use in commerce are August 22, 1988 and
November 2, 1988, respectively.
Opposition No. 100619
4
The record consists of the pleadings; status and title
copies of thirty-five of opposer’s pleaded registrations
submitted under a notice of reliance; the affidavit
testimony of Roy T. Bergold, Jr., opposer’s vice president-
creative9; opposer’s notice of reliance on portions of
applicant’s discovery deposition; and opposer’s notice of
reliance on certain of applicant’s answers to opposer’s
interrogatories. Applicant submitted no evidence or
testimony. Both parties filed briefs on the case.10 No
oral hearing was requested.

9 The parties stipulated to the submission of testimony by way of
affidavit. See Trademark Rule 2.123(b).
10 In opposer’s reply brief, opposer objected to attachments to
applicant’s brief, specifically arguing that “the discovery
deposition transcript and samples of greeting cards” attached to
applicant’s trial brief were untimely. Opposer also objected to
an argument contained within applicant’s brief, specifically that
applicant made a reference for the first time to some “alleged
channels of distribution that were not in the record”. Opposer
contended this was untimely. Opposer requested that these
matters not be considered.
The Board’s copy of applicant’s trial brief is a facsimile copy
submitted on September 4, 1998. The facsimile copy includes no
exhibits or attachments. However, opposer’s objection is well
taken. The portions of applicant’s discovery deposition which
were properly and timely made of record by opposer under a notice
of reliance form part of the record of this case, but applicant’s
submission of the entire discovery transcript is inappropriate,
and would not be considered if it were attached to a copy of
applicant’s brief. We also do not have any samples of
applicant’s greeting cards submitted with applicant’s brief. To
the extent such cards were not made of record, they could not be
considered even if they had been submitted with applicant’s
brief. However, we note that there are samples of applicant’s
greeting cards which were made of record as opposer’s exhibit 30
to the Roy T. Bergold, Jr. affidavit testimony. As for
applicant’s reference within her brief regarding applicant’s
additional channels of trade (i.e., through publications such as
Village Voice), because applicant did not properly submit any
evidentiary support, this reference has not been further
considered.
Opposition No. 100619
5
As a preliminary matter, applicant contends (in
footnote 6 of her brief) that “preemption of an entire mode
of commercial expression would pose substantial consequences
under the First Amendment”. This opposition proceeding
involves the question of likelihood of confusion under the
Trademark Act of 1946. The Board, being an administrative
tribunal, determines only the question of the registrability
of marks; the Board has no authority to determine the
constitutionality of any portion of the law. See Harjo v.
Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994). See
also, TBMP §102.01.
In this case opposer has filed status and title copies
of several (35) of its pleaded registrations11. Because
opposer owns valid and subsisting registrations of its
pleaded marks, the issue of priority does not arise. See
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974); and Humana Inc. v.
Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987).

11 The status and title copies submitted by opposer include those
listed in footnote 3 through 8, supra; as well as registrations
for the mark McDONALD’S for drive-in restaurant services, and
McDONALD’S and McDONALD’S and design for retail gift shop
services and for a variety of goods including, “comic books,
coloring books, paper party hats, and calendars”; McGIFT SHOP and
McSTUFF STORE, both for retail gift shop services; McMAGAZINE and
McMOMS, both for a general interest magazine for consumers;
McMARKER for marker pens; McBUCKS and McDOLLAR for printed
redeemable certificates; and RONALD McDONALD for restaurant
services and a variety of goods.
Opposition No. 100619
6
Thus, the sole issue before the Board is likelihood of
confusion. Based on the record before us in this case, we
find that confusion is likely.
The affidavit testimony of Roy T. Bergold, Jr.,
opposer’s vice president-creative, establishes that opposer
began its restaurant business in 1955 under the mark
McDONALD’S; and that the business has grown to be the
world’s largest food service company with over 12,000
restaurants worldwide. Annual sales in the United States
grew from $14.9 billion in 1994 to $16.3 billion in 1996;
and annual advertising expenditures went from over $385
million in 1994 to over $503 million in 1996. Opposer sells
its goods and offers its services nationwide and worldwide
through all available advertising media, including
television, radio, newspapers, magazines, and point of
purchase advertising. Opposer has developed and used a
number of marks using the “Mc” formative, often combined
with a generic term, including such marks as EGG McMUFFIN,
McBAGEL, McDELIVERY, and McDONUTS. These marks have been
used to identify opposer’s goods and services.
Opposer has distributed greeting cards since 1985, and
since 1990 opposer has sold holiday greeting cards with the
proceeds benefiting the Ronald McDonald House Charities and
Ronald McDonald Houses (one such card is imprinted with
“Happy McHolidays!”). Opposer also distributes greeting
Opposition No. 100619
7
cards through its individual Ronald McDonald Houses around
the country to support that particular Ronald McDonald
House; and opposer has licensed its McDONALD’S marks for use
in greeting cards, including cards by Hallmark. Opposer has
distributed note pads under “Mc” formative marks such as
McNOTES (since 1989) and McQUESTION (since 1993); and self-
stick removable note pads under the mark McMOMS (since
1993). In addition, opposer distributes preprinted birthday
party invitations and thank you cards for use by families
who host parties at McDONALD’S restaurants, as well as
trading cards featuring McDONALD’S characters and the
McDONALDLAND racing team. Opposer also distributes a
variety of stationery items and calendars, newsletters, and
catalogs under various “Mc” formative marks such as
McMARKER, McCALENDAR, McFIT, McHAPPENINGS, and McMAGAZINE.
Opposer’s McMARKER washable markers are sold in mass
merchandisers such as Wal-Mart, and Kmart; and opposer sells
gift and novelty items in its four retail gift shops using
the marks McGIFT STORE, McGIFT SHOP and McSTUFF STORE.
Opposer plans to continue to expand the products and
services it offers and to continue coining and adopting new
“Mc” formative marks.
Opposition No. 100619
8
The record shows that applicant, Maureen Kelly, has
commenced use of her mark on greeting cards,12 presenting
them at the California Gift Show in Los Angeles in January
1995. Ms. Kelly, has offered her greeting cards for sale by
personal solicitation, by direct mail, and to a variety of
retail outlets, including card and gift shops, and she
continues to attend the California Gift Show. She targets
the general public ages 15-65 for sales of her cards. Ms.
Kelly stated at her discovery deposition that one of her
objectives is “to secure a licensing agreement with one of
the major card manufacturers” (page 79), including Hallmark
or Gibson. Her sales revenue in 1995 was $400 and in 1996
was $1100, with expenses totaling significantly over the
sales income figures. Applicant adopted the mark “MCGREET.”
based on her national heritage and her mother’s maiden name,
McCurdy, and she ultimately liked “the sound of ‘MCGREET’”
(applicant’s answer to opposer’s interrogatory No. 4).

12 In applicant’s brief on the case she contended that with regard
to her intent-to-use application, she had an intention to use the
mark only on greeting cards; but she included other items in her
application because she was advised in a communication with the
Patent and Trademark Office that the description of goods should
“be inclusive” (brief, p. 3). In fact, she states that “She has
no intention to use the mark “MCGREET.” on “note pads,
stationery, markers or calendars” (brief, footnote 3). There is
no proposed amendment to the identification of goods in her
application. Therefore, the identification of goods remains
“greeting cards, note pads, stationery, self-stick removable note
pads”. If applicant ultimately prevails in this case, the
application will be remanded to the Examining Attorney for
further examination of the question of applicant’s bona fide
intent to use her mark as to all originally listed items.
Opposition No. 100619
9
This record clearly establishes that, given opposer’s
advertising and sales figures, opposer is a major restaurant
business, and that its McDONALD’S and RONALD McDONALD marks
for restaurant services are famous. See Kenner Parker Toys
Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
In addition, opposer has shown that it has used other
marks consisting of the “Mc” prefix followed by a generic or
descriptive term, prior to applicant’s filing date of
January 23, 1995. The Court of Appeals for the Federal
Circuit has explained that recognition of a family of marks
is “achieved when the pattern of usage of the common element
is sufficient to be indicative of the origin of the family.”
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). We find that
opposer’s prior use and promotion of its McDONALD’S marks,
and its various “Mc” formative marks, have been such that
opposer has created a family of marks with the “Mc” prefix
in combination with generic or descriptive words to form
coined terms. See McDonald’s Corp. v. McBagel’s, inc., 649
F. Supp. 1268, 1 USPQ2d 1761 (SDNY 1986); McDonald’s Corp.
v. McKinley, 13 USPQ2d 1895 (TTAB 1989); and McDonald’s
Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995).
Opposer has established that, as part of its family of
marks, it uses the marks RONALD McDONALD and the design of
Opposition No. 100619
10
the character Ronald McDonald, as well as several “Mc”
prefix marks in connection with stationery items. In
particular, the marks McDONALD’S, RONALD McDONALD and the
design of the character Ronald McDonald are used by opposer
for greeting cards, as well as McNOTES (and design) for note
pads, McMOMS for self-stick removable note pads, McQUESTION
for preprinted paper note pads, McMARKER for marker pens,
and McDONALD’S and McCALENDAR for calendars.
Applicant’s mark, “MCGREET.” is similar in format to
opposer’s various “Mc” formative marks and the purchasing
public upon seeing her mark would believe applicant’s goods
are sponsored by or are associated with opposer.
Moreover, applicant uses her mark on greeting cards,
goods which are identical to goods on which opposer’s uses
some of its marks. In addition, there is no evidence of
third-party uses of any “Mc” prefix marks in the stationery
or other fields.
We simply have no doubt that applicant’s use of her
mark, “MCGREET.” for greeting cards, note pads, stationery
and self-stick removable note pads would be likely to cause
confusion, mistake, or deception with opposer’s marks,
including its family of marks consisting of the “Mc” prefix
combined with various generic or descriptive terms used on
stationery items, including greeting cards, and note pads.
Opposition No. 100619
11
Applicant argues that she adopted her mark because of
her national heritage, and her mother’s maiden name,
McCurdy. (She further explained that she did not like
“MCCARD” because of the alliteration of the two “c” letters
together, and she selected “MCGREET.” instead.) Even
assuming, and the record does not suggest otherwise, that
she is an innocent adopter and she did not intend to trade
on opposer’s marks or fame, that does not mean that the mark
“MCGREET.” is not likely to cause confusion.
Applicant’s argument that there is no evidence of
actual confusion is also not persuasive. In this case
applicant commenced use of her mark in a de minimis manner
only a few years ago. We simply cannot conclude that there
has been an opportunity for confusion to occur. Moreover,
the test is not actual confusion, but likelihood of
confusion. See Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992).
Finally, applicant’s argument that opposer submitted no
consumer survey is likewise unpersuasive. The Board has
stated that a survey is not required to establish a showing
of likelihood of confusion. See Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, 1435
(TTAB 1993).
Applicant, as the newcomer, had the obligation to
select a mark which would avoid confusion. See In re Hyper
Opposition No. 100619
12
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); Hilson Research Inc., supra, at 1440; and Gillette
Canada, supra, at 1774.
Opposition No. 100619
13
Decision: The opposition is sustained, and
registration to applicant is refused.
T. J. Quinn
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board