Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MCDONALD'S CORPORATION
v.
DOROTHY JILL MCKINLEY D.B.A. MCKINLEY & CO.
September 25, 1989
July 19, 1989
Opposition No. 74,168 to application Serial No. 553,701, filed
David W. Maher, Samuel Fifer, Carol Anne Been and Margaret Chapello, for McDonald's Corporation
Dorothy Jill McKinley, pro se.
Before Rooney, Cissel and Quinn
Members
Member
McDonald's Corporation has opposed registration of the mark MCTEDDY for hand crafted teddy bears, rolling bears and accessories therefor. [FN1]
The grounds stated for opposition are that since 1955, and long prior to applicant's claimed use date, opposer has used the mark, MCDONALD'S, and a number of other marks containing a "MC" or "MAC" formative; that the mark, MCDONALD'S, and opposer's family of "MC" and "MAC" marks have been used in connection with opposer's chain of restaurants; that opposer and/or its licensees have also used the mark, MCDONALD'S, and/or the "MC" or "MAC" family of marks in connection with a wide variety of collateral products sold, licensed for sale or distributed by opposer or its licensees, including, dolls, clothing, games, pens, pencils, luggage and linens; that opposer has used the mark, MCDONALD'S, and the "MC" and "MAC" formative marks in association with one another in connection with its services and goods long prior to applicant's use of MCTEDDY; and that applicant's mark as used on her goods is so similar to the marks opposer uses on its goods and services as to be likely to cause confusion, mistake or deception. Opposer has pleaded ownership of a number of registrations for its marks. [FN2]
Applicant denied all of opposer's salient allegations and affirmatively pleaded that there is no secondary meaning in the "MC" or "MAC" formatives that is attributable to opposer; and that there is no likelihood of confusion.
The record consists of status and title copies of opposer's 26 registrations submitted under a notice of reliance, the affidavits of Dr. Hans Zeisel, James L. Johannesen (two were filed), Roy T. Bergold, Jr., Linda A. Kuczma and J.R. Horwitz, on behalf of opposer; [FN3] applicant's answers to certain of opposer's interrogatories filed by opposer under a notice of reliance; portions of the discovery deposition of applicant were relied on by each party; the affidavits of Susan Nimmersheim, Woodruff Hoover and of Dorothy Jill McKinley and portions of certain publications were filed by applicant under her notices of reliance. [FN4] Both parties filed briefs and were represented at an oral hearing.
The evidence establishes the following: Opposer, McDonald's Corporation, began its restaurant business in 1955 under the trade name and mark MCDONALD'S. The business has grown to such an extent that today it is the world's largest food service company, having 10,000 restaurants worldwide. Annual sales totalled more than 10, 11 and 12 billion dollars from 1984 through 1986. Advertising expenditures during those same years were 425, 500 and 789 million dollars respectively, and opposer's advertising appeared in the media of television, radio, newspapers, and national magazines, as well as in outdoor and point-of-purchase types of advertisements.
*2 Since its beginnings, opposer has developed and used a series of marks using either a "MC" or "MAC" formative, often combined with a generic term. Opposer started with the mark and trade name, MCDONALD'S, and over the years has added others such as RONALD MCDONALD, MAYOR MCCHEESE, BIG MAC, McD.L.T., McPIZZA, CHICKEN MCNUGGETS, EGG MCMUFFIN and others. Such marks have been used to designate opposer's services and/or products. Among the latter are a number of products collateral to its restaurant services which include a large selection of toy products such as plush and stuffed dolls and animals as well as plastic toys, books, banks, puzzles and games; jewelry, watches, telephones, party favors and tote bags, many of which are identified by marks using "MC" or "MAC" formatives.
Opposer has also licensed Sears Roebuck & Co. to market a line of children's clothing depicting MCDONALDLAND characters under the mark McKIDS. This clothing is marketed through Sears' retail stores and catalogs. McDonald's has licensed several toy manufacturers and book publishers to produce and distribute MCDONALDLAND [FN5] character toys, such as puppets and dolls and games and storybooks about them.
Opposer's advertisements often use a special language, referred to by opposer as "McLanguage," developed to allow RONALD MCDONALD to communicate with children in a language they can recognize and associate with McDONALD'S. Examples of the language are words such as "McCleanest," "McFriendliest," "McFavorite" and "McClown". Opposer's television advertising also emphasizes the "MC" and "MAC" formatives, frequently ending with a jingle which says "Mc------, McDonald's and You".
In 1984, applicant designed and constructed a stuffed bear and dressed it in a plaid tam and scarf. Because she wanted the bear to carry part of her surname and to carry a Scottish identity, Mrs. McKinley called her bear MCTEDDY. Applicant's bears have cost an average of $50, although she indicated that the price might increase in the future. Most of applicant's promotion of her product has been through craft fairs and a catalog called Bear-In-Mind. She has indicated that there has been sufficient demand for her product so that it has not been necessary to advertise. According to applicant's discovery deposition her gross sales in 1984 amounted to $400-$500; in 1985, $500; in 1986, $3,000 and in the first six months of 1987, $2400. Applicant asserted that she had heard of and was aware of McDONALD'S restaurants at the time she adopted her mark.
Section 2(d) of the Trademark Act provides, in part, that
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it
... (d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
*3 In view of the provisions of Section 2(d), it was unnecessary for opposer to prove its earlier use because it is the owner of a number of valid and subsisting registrations for the marks on which it is relying herein. See Black and Decker Mfg. Co. v. Bright Star Industries, Inc., 220 USPQ 890 (TTAB 1983). Nonetheless, opposer's earlier date of first use has been adequately proved by the evidence submitted.
Turning first to the parties' goods, in order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources. See Amcor Inc. v. Amcor Industries Inc., 210 USPQ 70 (TTAB 1981); Monsanto Company v. Enviro-Chem Corporation, 199 USPQ 590 (TTAB 1978); In re Precise Imports Corporation, 193 USPQ 794 (TTAB 1976) and cases cited therein. To clarify, opposer does not have to be selling or distributing a handmade teddy bear of the exact dimensions or wearing the same accessories as the applicant's bear for us to find that there is a likelihood of confusion. Rather, such a finding may be made if the opposer sells or gives away goods of the same general type as the applicant and those goods are identified by a mark which is confusingly similar to a mark used by the applicant on its goods.
In this case, opposer has shown that it distributes various toys in connection with its restaurant services, as promotional items and as incentive awards. In fact, it has been shown that opposer distributes extremely large numbers of such toys. While many of these toys are specifically different from applicant's bear, as we have aforementioned, it is not necessary that opposer's toys be exactly the same as applicant's. Confusion has been found likely where similar marks have been used on such goods as toy dolls and doll carriages [In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479 (TTAB 1983) ], floating water toys and balloons [FN6] [Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed.Cir.1983) ], and children's books and children's games, toys and building blocks [Dan Robbins & Associates, Inc. v. Questor Corporation, 202 USPQ 100 (CCPA 1979) ].
In seeking to differentiate her goods from those on which opposer uses its marks, applicant has argued that her goods are relatively expensive, are sold only at craft shows, through a single catalog and at a gift shop in a Kentucky museum. Her bears, asserts applicant, are handcrafted and are sold as collectibles.
*4 In connection with these assertions, we note that it is well settled that the question of likelihood of confusion must be decided on the basis of the goods or services set forth in the applications and registrations involved in a proceeding, regardless of the specific nature, uses or channels of trade which may be disclosed by the evidence. See Hecon Corporation v. Magnetic Video Corporation, 199 USPQ 502 (TTAB 1978) and Telsco Industries v. Chapin Watermatics, Inc., 193 USPQ 177 (TTAB 1977).
Applicant's goods are identified in the application for registration as "hand-crafted teddy bears, rolling bears and accessories therefor." Opposer has registrations for "dolls" (RONALD MCDONALD), "toys" (MCDONALD'S), "doll figures and toy playsets" (MCDONALDLAND) and "coloring books; toy puppets and toy plastic flying discs" (RONALD MCDONALD). None of opposer's goods has been restricted to a particular size, color, trade channel, consumer or use. We therefore consider them to be dolls, puppets, etc. of every type, available to any consumer in all of the normal trade channels for such goods. See: Re/Max of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980). While applicant's goods are identified as handcrafted, the identifications of opposer's goods are broad enough to include handcrafted as well as machine-made products. In fact, opposer's evidence shows that some of its toys are hand painted and decorated.
Opposer's evidence establishes that in 1984 it distributed 326 million toys; in 1986, 362 million and in 1987, more than 500 million toys. Based on all of the foregoing, the Board concludes that applicant's goods are sufficiently related to those of opposer that, if sold under a similar mark, confusion would be likely.
Turning to the marks, it is opposer's position that over the years since its business was started in 1955, it has made extensive use of marks using "MC" and "MAC" formatives in connection with its restaurant services; that many of those marks consist of the "MC" and "MAC" portions followed by a generic word, examples of which are MCSNACK, CHICKEN MCNUGGET, McPIZZA and EGG MCMUFFIN; and that opposer has developed characters used in association with its products and services and in children's advertising who live in a fictitious land called MCDONALDLAND. Some of these characters have names which include "MC" or "MAC", such as MAYOR MCCHEESE, RONALD MCDONALD, BIG MAC and COSMc. In addition, other toys distributed by opposer are identified by "Mc" and "MAC" formative names, such as, FAST MACS for toy vehicles, McPUNK'N and McGOBLIN for toy buckets, as well as others. Among the toys sold and distributed by opposer are stuffed and plush dolls including, in some cases, stuffed bears. Opposer's evidence shows advertisements in which several of these marks are used in conjunction with one another and opposer asserts that it has a family of "MC" and "MAC" marks which is widely advertised and very well known.
*5 Opposer argues that its family of "MC" and "MAC" marks are so widely known that if applicant's bear appears in the marketplace under the mark MCTEDDY, the public will assume that it has some connection with McDonald's Corporation.
Applicant argues that prior to the filing of her application, opposer had registered only certain enumerated marks for dolls and that the opposition should be based only on those particular marks as to which applicant asserts there is no likelihood of confusion. However, opposer has pleaded and proved that it has used a "MC" and "MAC" "family of marks" in connection with its services and on goods associated therewith over a long period of time.
The family of marks doctrine is based on the theory that, because of extensive use and advertising of a series of marks, each of which has a common component, for a particular line of merchandise, the relevant public has come to identify the source of certain products by that common feature. See Medical Modalities Association, Inc. v. ARA Corporation, 203 USPQ 295 (TTAB 1979). In view of opposer's extensive evidence of use and promotion of marks having a "MC" or "MAC" portion, there can be no doubt that opposer has established that its marks comprise a family.
We note also that it is not necessary, to support the family of marks theory, that all members of the "family" be in existence prior to the entry in the field of another with a mark containing that common portion. Where the evidence establishes that there is a family of marks characterized by the common portion, that family characteristic is protected to the extent of other such marks which are later added to the family even though there may be an intervening use. See American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457 (TTAB 1978). Thus, if applicant's mark for a teddy bear is determined to be confusingly similar to opposer's marks as used on its similar or related goods, because of the appearance therein of the feature common to opposer's "family of marks", it does not matter that only certain of opposer's "MC" or "MAC" marks were in use or registered prior to applicant's first use.
With respect to applicant's argument that its mark is distinguishable because of the old English lettering thereof, applicant is reminded that her mark, as applied for, is in plain block letters. If applicant were to be granted a registration for the mark as presented, she would not be limited to any particular presentation of the mark in connection with her goods. Thus, the style of lettering presently used by applicant is irrelevant to the question of likelihood of confusion in this case.
Regarding applicant's remarks that there are "MC" and "MAC" trademarks on other goods which opposer has not challenged, applicant is advised that a trademark owner possesses rights in its mark which are sufficient to preclude the subsequent registration of the same or a confusingly similar mark not only for like or similar goods, but for any goods which might be reasonably expected to emanate from it in the normal expansion of its business under the mark. See Porta-Tool, Incorporated v. DND Corporation, 196 USPQ 643 (TTAB 1977). Thus, it is entirely reasonable for the opposer to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks on its goods and services while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use. [FN7]
*6 Applicant's argument as to the length of time the surname McKinley has been in use is irrelevant since it is not seeking to register McKinley as a trademark.
Applicant also argued that she does not believe that a trademark should be afforded a large scope of protection simply because of the amount of money expended by its owner. Applicant apparently misunderstood that the "amount of money expended" referred to promotional and advertising expenditures.
With regard thereto, case law holds that a well-known or famous mark is entitled to a broader scope of protection than one which is relatively unknown. That is because the issue in a trademark registration conflict such as this is the likelihood that, because of the marks used on the involved goods, there will be confusion, mistake or deception as to the source of those goods and confusion is more likely to occur where a mark is very well known or even famous because there is a propensity of consumers to associate a little-known mark with one which is familiar to them. See Fruit of the Loom v. Fruit of the Earth, Inc., 3 USPQ2d 1531 (TTAB 1987) and Miles Laboratories v. Naturally Vitamin Supplements, 1 USPQ2d 1445 (TTAB 1987) Clearly, the more extensive the advertising and promotion of a mark, the more well known and likely to be recognized is that mark and the more likely it is that it will be confused with a similar mark used on similar or related goods. [FN8]
Having attempted to resolve all of applicant's questions, and to explain the law of trademarks as it relates to likelihood of confusion, the Board now concludes that applicant's use of MCTEDDY for teddy bears is likely to cause confusion as to source in view of opposer's long use of its heavily advertised and consequently well-known "MC" and "MAC" "family of marks" on a variety of goods, including toys.
In view thereof, the opposition is sustained and registration to applicant is refused.
L. E. Rooney
R. F. Cissel
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Serial No. 553,701 claiming use since May 1984.
FN2. Registration No. 743,572 (McDONALD'S) issued January 8, 1963, Section 8 and 15 affidavits of record; Registration No. 804,365 (MC DONALD'S) issued February 22, 1966, Section 8 and 15 affidavits of record; Registration No. 874,861 (RONALD MCDONALD) issued August 12, 1969, Section 8 and 15 affidavits of record; Registration No. 1,002,949 (EGG MCMUFFIN) issued January 28, 1975, Section 8 and 15 affidavits of record; Registration No. 1,007,919 (RONALD MCDONALD) issued April 1, 1975, Section 8 and 15 affidavits of record; Registration No. 1,110,599 (RONALD MCDONALD) issued January 2, 1979, Section 8 and 15 affidavits of record; Registration No. 1,113,227 (RONALD MCDONALD'S) issued February 13, 1979, Section 8 and 15 affidavits of record; Registration No. 1,113,705 (MCDONALDLAND) issued February 20, 1979, Section 8 and 15 affidavits of record; Registration No. 1,126,102 (BIG MAC) issued October 16, 1979 Section 8 and 15 affidavits of record; Registration No. 1,139,508 (McPIZZA) issued September 9, 1980, Section 8 affidavit of record; Registration No. 1,293,449 (MCSNACK) issued September 4, 1984; Registration No. 1,369,360 (MCMUFFIN) issued November 5, 1985; and others.
FN3. The parties had stipulated to the submission of testimony by affidavit.
FN4 Along with her notice of reliance of November 12, 1988 (by certificate of mailing), applicant filed "Applicant's Testimony" comprising the 3 page statement of Jill McKinley. This "testimony" was the subject of an objection by opposer on the ground that it is not sworn testimony under oath or affirmation and fails to comply with the applicable rules. Opposer's objection is well taken. Applicant's unsworn statement does not constitute testimony in the absence of an oath or affirmation thereof. Accordingly, it can be given no more weight than any other unsworn statement. Contrary to the argument in applicant's brief, the declaration she signed in applying for registration has reference only to the application and does not carry over to any statements made during the course of this proceeding. Moreover, even if applicant's "testimony" had been considered, it would not have changed our ultimate decision.
FN5. MCDONALDLAND is a fictitious place in which many of the McDONALD characters live.
FN6. It is noted that the balloons in the Squirtco case were given away as promotional items as are many of opposer's toys. In her brief, applicant inquired whether goods which are given away are considered to be "goods in commerce". In response to applicant's inquiry it is well settled that goods do not have to be sold in commerce in order to come within the ambit of the statute. The statute states that a mark is "used in commerce" when it is placed on the goods and the goods are either "sold or transported in commerce."
FN7. Applicant's statements with regard to a third-party company's using the name "MacDonald" for pots and pans which was allegedly forced into bankruptcy by opposer are nothing more than hearsay and have been given no consideration. Apart therefrom, what may or may not have occurred between opposer and a third party has no bearing on the issues in this proceeding.
FN8. Opposer submitted an affidavit of Dr. Hans Zeisel who conducted a survey to determine whether the name MCTEDDY on a toy bear is likely to cause consumers to think that the bear had some connection with McDONALD'S. Applicant objected to the survey on the ground that since this was a telephone survey, the respondents could not see the bear or its manner of dress and that there is no way of knowing how the name MCTEDDY was pronounced. With regard to these objections, it does not matter how MCTEDDY was pronounced since the name was spelled out for each respondent who could then make an independent decision as to its pronunciation, and how the bear was dressed has no relevance, as previously noted, because applicant has applied to register the mark for teddy bears, in general. On the other hand, while the survey clearly supports our finding that there is a likelihood of confusion in this case, we have considered it only as corroborative since our conclusion was reached independently thereof.