Shares in McDonald’s jumped surprisingly high earlier this week, causing some to wonder whether any notable investors might be involved, possibly with inside information. Or maybe it was somebody hoping to get an inside track on McDonald’s Monopoly game, which began yesterday (do the stock certificates come with as many peel-off game pieces as a super sized soda?). Or maybe, just maybe, it had something to do with the Trademark Trial and Appeal Board (the Board)’s impending decision in the McDonald’s v. McSweet opposition. Has the NFL become so dysfunctional that bookies have turned to taking odds on the outcome of Board proceedings?
McDonald’s opposed McSweet’s application to register its MCSWEET mark in connection with various pickled vegetables. The Board issued its decision yesterday. The issue before the Board was whether registration of MCSWEET would be likely to cause confusion or dilution with McDonald’s claimed family of MC- formative marks. Steve discussed this dispute back when oral arguments had just been scheduled. What was interesting is that McDonald’s claimed rights in numerous registered and unregistered marks, essentially arguing that, although it phased out use of various marks, that the overall effect was to create consumer recognition of any MC- formative mark as being associated with McDonald’s, at least in connection with food products. Steve wondered whether the Board would give any credence to McDonald’s MC- family of “fluid trademarks.”
Unfortunately, the Board didn’t venture into such interesting areas. Instead, the Board relied only on the MC- marks that are currently in use to find that McDonald’s owned a family of MC- formative marks. In reality, the legal issues in the case aren’t that entirely interesting. But wow. The decision certainly provides a ton of great trivia about McDonald’s history. For example, did you know that, at some point in time, McDonald’s has sold food under all of the following marks: MCPIZZA, MCCHILI, MCD.L.T., MCCOLA, MCCOOKIE, MCBURGER SUPREME, and more?
The decision even offers more than just the unbelievably strange notion that McDonald’s used to sell pizza (PIZZA!). In an effort to prove that consumers associate MC- formative marks with McDonald’s, the company relied upon a number of advertising campaigns to show their efforts to reinforce this association. The decision references what appeared to be a terrible 80s attempted-rap used in a commercial.
Proving yet again that the internet is truly the most amazing thing ever, containing so much of the most unimportant things ever, 30 seconds later I was enjoying this gem:
So it wasn’t a rap song, but still pretty terrible though (and come on, no way that’s a camera. That’s the size of a laptop…).
Back to the decision though. McSweet counterclaimed to cancel the registrations for MCPIZZA, and the other marks referenced above, based on abandonment. McDonald’s voluntarily surrendered them. But unfortunately for McSweet, the Board still found MCSWEET likely to create both a likelihood of confusion and dilution with the McDonald’s family of marks that were still in use. Thus, the Board sustained the opposition.
Although the decision doesn’t break any new legal ground, it provides a comprehensive outline as to why Board decisions should not be granted preclusive effect in infringement litigation (Just in case RBG or Alito are reading…). Among the arguments rejected by the Board:
- McDonald’s products are only sold in restaurants! (no channel of trade limitations set forth in the identification of goods, so the Board presumes all normal channels)
- We sell expensive gourmet products! (no class of consumer restrictions set forth in the identification of goods, so the Board presumes all classes of consumers)
- Nobody would confuse the products based on the trade dress! (the application is for a standard character mark and not limited to any particular trade dress)
All of these factors would have been considered by a district court in an infringement analysis. And the trade dress claim in particular may have carried substantial weight (No golden arches, no red and yellow on the packaging, etc.). McSweet had a number of arguments that it was literally precluded from making in front of the Board because of the limited nature of the proceedings (not exactly a full and fair opportunity to litigate…). It’s a bit like going to McDonald’s and being told that they’re out of everything but the filet o fish. Yeah, technically you had an opportunity to eat, but did you really?
Here’s to hoping the Supreme Court does the right thing in B&B hardware. If not, it won’t be long until plaintiffs take their favorable Board decisions to district court to super size their successful oppositions into full fledged awards of damages and attorneys fees.