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In March of 2009 Joel Joseph filed a U.S. trademark application for the mark BioMcDiesel for use in connection with marketing and selling biodiesel fuel.
Needless to say, the owner of the ubiquitous global McBrand was not pleased. McDonald’s Corporation filed an opposition proceeding before the the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board) requesting that the application be denied registration.
In a recent decision, the Board ruled for McDonald’s and held that the application would be refused registration.
As usual, the Board’s focus was on the likelihood of confusion inquiry, specifically here whether Joseph’s use of the BioMcDiesel mark would cause consumer confusion with the McDonald’s family of “MC” formative marks.
Although McDonald’s has been criticized over the years for trademark bullying and overextending the reach of its brand (e.g., the McSleep case), its argument here was a credible one.
The first likelihood of confusion factor was easy: fame of the McDonald’s marks (a no-brainer). However, the key factor that drove the Board’s decision was the similarity of the goods/services.
It turns out that McDonald’s is one of the largest suppliers of “yellow grease,” the industry term for fryer grease, for biodiesel production. The evidence of record included multiple news articles about its biodiesel program, including one entitled “McDonald’s McDiesel” Go Green Hawaii.” McDonald’s also promotes its sustainability programs, including its recycling efforts, which have received considerable media attention.
The Board also noted that McDonald’s has been sharing locations with gas service stations since 1993, biodiesel fuel is sold at some of these restaurant and gas station locations, and McDonald’s uses biodiesel to run its delivery trucks (see picture above).
Thus, the Board concluded that consumers would likely be confused by Joseph’s use of the BioMcDiesel mark for biodiesel fuel:
[The evidence of record] is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food items served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.
As to the similarity of the mark to the McDonald’s family of marks, the Board was not persuaded by Joseph’s arguments that the location of the “Mc” component in the middle of the mark and the fact that biodiesel is not a food product were sufficient to distinguish it.
The Board noted that the McDonald’s family is not limited to marks in which the “Mc” formative is at the beginning of the mark, citing CHICKEN MCNUGGETS, EGG MCMUFFIN, and SAUSAGE MCMUFFIN. Also, because the McDonald’s marks are so famous, “when third parties use the “Mc” formative, it engenders a similar commercial impression.”
You should think twice before pouring your resources into those McSolar and McWind brands!
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