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Quality Inns Int'l, Inc. v. McDonald's Corp. - 695 F. Supp. 198 (D. Md. 1988)

Rule:

The gist of a claim for trademark infringement, or the related common-law tort, is a sanction against one who trades by confusion on the goodwill or reputation of another, whether by intention or not. The senior owner of the mark must demonstrate the adoption and use of a mark and his entitlement to enforce it, and the adoption and use by a junior user of a mark that is likely to cause confusion that goods or services emanate from the senior owner.

Facts:

On September 21, 1987, Quality Inns International, Inc. announced a new chain of economy hotels to be marketed under the name "McSleep Inn." The response of McDonald's Corporation was immediate. It demanded by letter sent three days later that Quality International not use the name "McSleep" because it infringed on McDonald's family of marks that are characterized by the use of the prefix "Mc" combined with a generic word. Five days later, on September 29, 1987, Quality International filed this action seeking a declaratory judgment that the mark "McSleep Inn" (1) does not infringe McDonald's federally registered trademarks in violation of 15 U.S.C. § 1114; (2) does not constitute a false designation of origin or a false description or representation of services as being associated with or originating with McDonald's in violation of 15 U.S.C. § 1125(a); and (3) does not infringe or violate any common law rights that McDonald's may have to its marks.

McDonald's filed a counterclaim alleging trademark infringement and unfair competition under the same laws that Quality International invoked in its complaint for a declaratory judgment. In addition, McDonald's alleges dilution of its marks in violation of the Illinois Anti-Dilution Act, Ill. Rev. Stat. Ch. 140, § 22.

Issue:

Did Quality International’s chosen hotel name, "McSleep Inn," violate McDonald's trademark rights under 15 U.S.C.S. §§ 1114 and 1125(a)?

Answer:

Yes

Conclusion:

The court held that McDonald's was entitled to enforce its family of marks, the name at issue was likely to cause an appreciable number of the public to be confused, and the use by Quality International of the name was a deliberate attempt to benefit from the reputation of McDonald's. Quality International was enjoined from using the name.

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