Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA515996
`ESTTA Tracking number:
`01/14/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91178758
`Plaintiff
`McDonald's Corporation
`ROBERT E BROWNE
`NEAL GERBER & EISENBERG LLP
`2 NORTH LASALLE STREET SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`rbrowne@ngelaw.com,mkelber@ngelaw.com,jcullis@ngelaw.com,ljames@ngel
`aw.com,ipdocket@ngelaw.com,apeterson@ngelaw.com,mturner@ngelaw.com,
`mbenson@ngelaw.
`Rebuttal Brief
`John A. Cullis
`rbrowne@ngelaw.com, jcullis@ngelaw.com, ljames@ngelaw.com,
`mturner@ngelaw.com, mbenson@ngelaw.com
`/John A. Cullis/
`01/14/2013
`PUBLIC Reply Brief - McSWEET (PUBLIC).pdf ( 27 pages )(349153 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`McDONALD’S CORPORATION,
`
`Opposer,
`
`
`
`v.
`
`
`
`
`McSWEET, LLC,
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Application Nos.
`
`
`
`
`
`Opposition Nos.
`
`
`
`
`Consolidated under:
`
`Mark: McSWEET
`
`78/947,247
`77/722,272
`
`91178758
`91192099
`
`91178758
`
`OPPOSER’S REPLY BRIEF
`
`(Public Version)
`(Unredacted – Filed Under Seal)
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ....................................................................................................................... 2
`
`OPENING REBUTTAL STATEMENT ..................................................................................................... 4
`
`I. McDonald’s Is Asserting Its Family of Marks, Not Just Certain Marks Individually ...................... 4
`
`II. McDonald’s is Opposing the Subject Applications, Not Applicant’s Common Law Use ............... 7
`
`A. The Scope of the Subject Applications is Limited Only by
`
`Their Designations of Goods ....................................................................................... 7
`
`B. “Gourmet” is Not a Meaningful Limitation ........................................................................ 9
`
`C. Applicant’s Actual Use Serves Only to Establish the Priority
`Afforded the Subject Applications ............................................................................ 10
`
`III. McDonald’s Has Met Its Burden of Proving Likelihood of Confusion and Dilution .................. 11
`
`A. The Mark McSWEET Falls Squarely Within McDonald’s Mc Family of Marks ............ 11
`
`B. The Goods are More Than “Sufficiently Related” ........................................................... 12
`
`C. The Fame of McDonald’s Mc Family Does NOT Favor Applicant ................................. 13
`
`D. McDonald’s Use of Its Mc Family Marks Is At Least Substantially Exclusive ............... 15
`
`E. McDonald’s Has Provided Persuasive Evidence of Actual Confusion ............................. 18
`
`
`
`
`
`
`
`
`
`IV. Applicant has Failed to Establish Ownership ............................................................................... 20
`
`V. Applicant’s Brief is Factually Erroneous ...................................................................................... 22
`
`SUMMARY ............................................................................................................................................... 24
`
`APPENDIX A – McDonald’s Response to Applicant’s Statement of Objections ................................... 25
`
`1
`
`

`
`INDEX OF CITED CASES
`
`Page(s)
`
`CASES
`
`AmBRIT Inc. v. Kraft Inc.,
`
`812 F.2d 1531, 1 USPQ2d 1161 (11th Cir. 1986) ................................................................................ 10
`
`Arachnid, Inc. v. Merit Industries, Inc.,
`
`939 F.2d 1574, 19 USPQ2d 1513 (Fed. Cir. 1991) .............................................................................. 21
`
`B.V.D. Licensing Corp. v. Body Action Design, Inc.,
`
`846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) ............................................................................. 14-15
`
`Citigroup Inc. v. Capital City Bank Group Inc.,
`
`94 USPQ2d 1645 (TTAB 2010) ............................................................................................................. 5
`
`Cunningham v. Laser Golf Corp.,
`
`222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) ............................................................................... 5-6
`
`Esso Standard Oil Co. v. E.F. Drew & Co., Inc.,
`
`277 F.2d 171, 125 USPQ 404 (CCPA 1960) .......................................................................................... 7
`
`Federated Foods, Inc. v. Ft. Howard Paper Co.,
`
`544 F.2d 1098, 192 USPQ 24 (CCPA 1976) ........................................................................................ 12
`
`Han Beauty, Inc. v. Alberto-Culver Co.,
`236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001) ................................................................................ 5
`
`Huang v. Tzu Wei Chen Food Co. Ltd.,
`
`849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) ................................................................................ 22
`
`In re Martin’s Famous Pastry Shoppe, Inc.,
`
`748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) ................................................................................ 12
`
`In re Youman,
`
`679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012) ............................................................................ 22
`
`Jacobs v. Int'l. Multifoods Corp.,
`
`668 F.2d 1234, 212 USPQ 641 (CCPA 1982) ...................................................................................... 13
`
`James B. Beam Distilling Co. v. Beamish & Crawford Ltd.,
`
`10 USPQ2d 1317, 1318 (Fed. Cir. 1989) ............................................................................................. 14
`
`Jim Beam Brands Co., Inc. v. Beamish & Crawford, Ltd.,
`
`852 F.Supp. 196, 31 USPQ2D 1518 (SDNY 1994) ............................................................................. 14
`
`J&J Snack Foods Corp. v. McDonald’s Corp.,
`932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) ................................................................................ 5
`
`Kenner Parker Toys Inc. v. Rose Art Indus., Inc.,
`
`963 F.2d 350, 22 USPQ2D 1453 (Fed. Cir. 1992) ............................................................................... 15
`
`2
`
`

`
`Kimberly-Clark Corp. v. H. Douglas Enters., Ltd.,
`
`774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985) .................................................................................... 8
`
`Lloyd's Food Prods., Inc. v. Eli's, Inc.,
`
`987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) ................................................................................ 13
`
`McDonald’s Corp. v. McClain,
`37 USPQ2d 1274 (TTAB 1995) ...................................................................................................... 11-12
`
`Nike Inc. v. Maher,
`
`100 USPQ2d 1018 (TTAB 2011) ......................................................................................................... 15
`
`Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc.,
`
`889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) .............................................................................. 13
`
`Prima Tek II, L.L.C. v. A-Roo Co.,
`
`222 F.3d 1372, 55 USPQ2d 1742 (Fed. Cir. 2000) .............................................................................. 22
`
`Quality Inns Int’l, Inc. v. McDonald’s Corp.,
`695 F.Supp. 198, 8 USPQ2d 1633 (D. Md. 1988) .................................................................... 15-16, 18
`
`Recot, Inc. v. M.C. Becton,
`214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) .............................................................................. 13
`
`Safer Inc. v. OMS Investments Inc.,
`
`94 USPQ2d 1031 (TTAB 2010) ........................................................................................................... 25
`
`Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
`748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) ................................................................................. 7-8
`
`Syngenta Crop Protection, Inc. v. Bio-Chek, LLC,
`
`90 USPQ2d 1112 (TTAB 2009) ............................................................................................................. 6
`
`UMG Recordings, Inc. v. Mattel, Inc.,
`
`100 USPQ2d 1868 (TTAB 2011) ......................................................................................................... 16
`
`STATUTES
`
`15 U.S.C. §1060 .......................................................................................................................................... 21
`
`15 U.S.C. §1127 .......................................................................................................................................... 10
`
`TREATISES
`
`McCarthy, J.T., McCarthy on Trademarks and Unfair Competition,
`
`
`4th ed., updated 2012 ................................................................................................................ 5, 19
`
`3
`
`

`
`OPENING REBUTTAL STATEMENT
`
`
`
`As has been clear from the outset of this proceeding, McDonald’s is asserting its Mc family of
`
`marks. Yet, Applicant completely ignores this fact by focusing on McDonald’s pleaded registrations
`
`individually, and then highlights purported distinctions between its actual use of McSWEET and those
`
`specific registrations. The issue before this Board is whether the word mark McSWEET, as limited only
`
`by the goods designated in the Subject Applications, is likely to be confused with McDonald’s famous
`
`family of Mc-prefixed marks, based on the evidence.
`
`
`
`While McDonald’s will not repeat all of the law and evidence that support its claims, the record
`
`proves that Applicant’s McSWEET mark is likely to cause consumer confusion with McDonald’s family
`
`of Mc-prefixed marks. More specifically, the term McSWEET falls squarely within McDonald’s Mc
`
`family of “Mc” plus a generic or descriptive term, and Applicant seeks registration on goods that are at
`
`least sufficiently, if not highly, related to those goods with which the Mc family of marks is used and, in
`
`many instances, registered. Applicant admits to the fame of McDonald’s Mc family, and its suggestion
`
`that this fame somehow works against McDonald’s is a misstatement of the law. A brief analysis of the
`
`purported third-party “MC marks” that Applicant offers to challenge McDonald’s rights reveals that they
`
`are almost entirely surnames and fall outside McDonald’s claimed Mc family. Thus, they are not relevant
`
`to the likelihood of confusion analysis. Applicant attacks McDonald’s highly compelling expert survey
`
`with nothing more than non-expert attorney argument in a misguided attempt to claim that McDonald’s
`
`has produced no evidence of actual confusion. A high degree of likelihood of dilution also arises from
`
`this same evidence. Finally, Applicant has failed to produce anything more than inadmissible hearsay to
`
`prove that it owned the McSWEET mark when it filed the Subject Applications. Accordingly, this Board
`
`should find for McDonald’s on all grounds and sustain these opposition proceedings.
`
`I.
`
`
`
`McDonald’s Is Asserting Its Family of Marks, Not Just Certain Marks Individually
`
`McDonald’s main brief (“MB”) carefully identified and laid foundation for its famous family of
`
`Mc-prefixed marks, and made clear that McDonald’s is asserting its family in these oppositions. (MB, 9-
`
`15.) Indeed, McDonald’s identified in the Notice of Opposition that the pleaded registrations were
`
`4
`
`

`
`merely illustrative examples of this larger family of marks. (See Dkt. No. 1, pp. 3-5.) Nevertheless,
`
`Applicant argues how “McSWEET and McDonald’s pleaded marks look and sound different,” and
`
`continues this comparison throughout its entire brief. (Applicant’s brief (“AB”), 20 (emphasis added).)
`
`Remarkably, in fifty-five pages Applicant does not even mention McDonald’s Mc family, and makes only
`
`one reference to the family of marks doctrine. (See AB, 33.)
`
`
`
`In its Notices of Opposition, McDonald’s identified certain of its then-registered Mc marks by
`
`way of example, but pled its larger “Mc” family as the basis of its opposition.1 This has been
`
`McDonald’s practice for more than thirty years of opposition proceedings, and the Board has repeatedly
`
`recognized McDonald’s Mc-prefixed family of marks. (ONOR K1-59.) Applicant’s position appears to
`
`be that there is no family of marks doctrine and that if McDonald’s is not presently using a single mark
`
`that is likely to be confused with McSweet, it has no recourse. Under Applicant’s approach, others could
`
`freely adopt marks that fall within a mark owner’s family and confuse consumers. That is not the law.
`
`The family of marks doctrine is universally accepted, both by the Board and by the courts. Han Beauty,
`
`Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); J&J Snack Foods
`
`Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-1892 (Fed. Cir. 1991); Citigroup Inc.
`
`v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1655 (TTAB 2010)(affirmed, 637 F.3d 1344, 98
`
`USPQ2d 1253 (Fed. Cir. 2011)); McCarthy, J.T., McCarthy on Trademarks and Unfair Competition
`
`§23.61 (4th ed., updated 2012)(citing cases); ONOR M16-22.
`
`
`
`Applicant goes even further, asserting that McDonald’s is not only limited to its pleaded
`
`registrations, but is also limited to the goods and services set forth in those registrations. (AB, 26 (“The
`
`identification of goods/services statement in the registration, not the goods/services actually used by the
`
`registrant, frames the issues.").) Here, Applicant confuses the law by borrowing a statement made in the
`
`context of a cancellation proceeding (where a registration is being challenged) and applying it to an
`
`opposition (where often a registration is being asserted). See Cunningham v. Laser Golf Corp., 222 F.3d
`
`1 The fact that a few of those registrations have since expired is inconsequential. McDonald’s could
`assert a dozen other Mc family registrations to replace them. As explained in its main brief,
`McDonald’s strategically rotates the use of family members in use at any given time. (MB, 10.)
`
`5
`
`

`
`943, 55 USPQ2d 1842 (Fed. Cir. 2000). Regardless of whether the proceeding is an opposition or a
`
`cancellation, it is the challenged right that “frames the issues,” not the rights being asserted by the
`
`plaintiff. Though an opposer (plaintiff) may assert a registration as grounds for its opposition, the
`
`opposer is not limited to the bounds of that registration and can also assert common law rights in support
`
`of, or as a basis for, the opposition. See, e.g., Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90
`
`USPQ2d 1112, 1119 (TTAB 2009)(“The Trademark Act permits opposition on the basis of prior use of ‘a
`
`mark or trade name previously used in the United States by another and not abandoned,’ i.e., ownership
`
`of a common-law trademark right.”) Cunningham was a cancellation, and was referring to the
`
`registration being challenged. 55 USPQ2d at 1846. It does not hold that an opposer is limited to the rights
`
`identified in the registered mark that it asserts as the basis for its opposition, and Applicant misstates the
`
`law in claiming that it does.2
`
`McDonald’s opposition is not limited to the pleaded registrations, nor is it limited to the goods
`
`and services set forth in those registrations. It is limited only by the evidence McDonald’s has presented
`
`to substantiate its Mc family. The Mc family has been recognized by the Board, the Federal Circuit, and
`
`countless consumers in the country, based on McDonald’s use of it for decades. (MB, 13-15, 37-39, 45-
`
`48.) Applicant attempts to redefine that family as being comprised of “Mc and a generic noun that
`
`describes a particular menu item” (AB, 23) or limit it to marks “containing the ‘MC’ prefix related to
`
`food products.” (AB, 38.) Such a position is not supported by the evidence. The Mc family is comprised
`
`of marks featuring the “Mc” prefix followed directly by a generic or descriptive term, such as
`
`McCAMERA, McLANGUAGE, McBITES, McFUN, etc, etc. (MB, 9-10.) And contrary to Applicant’s
`
`assertion, McSWEET falls squarely within that Mc family.
`
`2 Cunningham’s actual lesson is more apropos. There, the registrant argued that his customers were
`more sophisticated and his product was better than the “ordinary” products of the petitioner. Id. at
`1846. The Federal Circuit affirmed the Board’s petition grant, noting that this evidence “was not
`probative” where the challenged registration was not limited to any particular class of purchasers. Id.
`
`6
`
`

`
`II.
`
`McDonald’s is Opposing the Subject Applications, Not Applicant’s Common Law Use
`
`While evidence showing the strength and breadth of McDonald’s actual use of its Mc family of
`
`marks is clearly relevant, evidence regarding how Applicant has used its McSWEET mark is much less
`
`so. That is because this dispute is about Applicant’s attempt to obtain an exclusive, nationwide right to
`
`use the word mark McSWEET with the goods designated in the Subject Applications. It is not about the
`
`particular ways Applicant may or may not have chosen to thus far limit its actual use in the marketplace.
`
`A.
`
`
`The Scope of the Subject Applications is Limited Only by Their
`Designations of Goods
`
`
`
`The scope of an opposition is defined by the rights being sought. See, e.g., Esso Standard Oil Co.
`
`v. E.F. Drew & Co., Inc., 277 F.2d 171, 125 USPQ 404, 404 (CCPA 1960)(“While appellee's evidence
`
`indicates that it applies the mark only to a specific composition used in laundering…we must consider it
`
`as embracing ‘water softeners’ generally, that being the present designation of the goods…”). Based on
`
`this well-established principle, broad sections of Applicant’s brief where Applicant paints a narrow
`
`picture of its use of McSWEET to mask the broad scope of the registration it seeks must be disregarded.
`
`(See, e.g., AB, 15-17, 23-29.) Whether or not Applicant’s goods are “strikingly different… [from
`
`Opposer’s goods] in the real-world marketplace” (Id., 9) is irrelevant. The Subject Applications do not
`
`limit use to “products sold in jars specifically” (Id., 30), “pickled deli-style vegetables as standalone
`
`items” (Id., 27), or even “high-quality, fresh pickled vegetables.” (Id., 14.) There is no limit to use “as
`
`part of [a] cocktail (e.g., on a toothpick)” (Id., 29) or as “garnishes in alcoholic beverages.” (Id., 26.)
`
`Rather, Applicant’s request for rights is only limited to:
`
`pickled gourmet vegetables, namely, pickled cocktail onions, pickled garlic, pickled,
`marinated olive medley, pickled green beans, and giardiniera, namely, a pickled celery,
`carrot, red pepper, garlic, green bean, and cucumber mix (S/N 78/947,247); and pickled
`asparagus (S/N 77/722,272).
`
`
`
`The above designation contains no limitation on packaging. “Ordinarily, for a word mark [the
`
`Board does] not look to the trade dress, which can be changed at any time.” Specialty Brands, Inc. v.
`
`Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). While Applicant
`
`touts its “sophisticated packaging” (AB, 15), the product could be just as easily sold in a non-descript
`
`7
`
`

`
`plastic bucket (a form of packaging actually considered by Applicant (ONOR C29-30 (Response to RFA
`
`75)), and still be covered under the rights sought. Despite the above guideline from Specialty Brands,
`
`Applicant relies on it to suggest the relevance of Applicant’s trade dress. (AB, 23.) Specialty Brands did
`
`make an exception to its rule, finding that trade dress contributed to the likelihood of confusion where an
`
`applicant had adopted trade dress much like that of the opposer (perhaps because it evidenced applicant’s
`
`bad faith intent). Id. at 1284. Here, Applicant presents its trade dress as a reason confusion is unlikely.
`
`However, “[i]t is settled that a distinction in trade dress cannot weigh against likelihood of confusion with
`
`respect to the registration of a simple word mark….” Kimberly-Clark Corp. v. H. Douglas Enters., Ltd.,
`
`774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985)(emphasis added); see also FN 2, supra.
`
`Applicant’s designation of goods also lacks any restriction of trade channels or class of
`
`purchasers. Though Applicant concedes that “absent restrictions…goods and services are presumed to
`
`travel in the same channels of trade to the same class of purchasers” (AB, 28), it nevertheless attempts to
`
`distinguish the scope of its mark based on these factors. Applicant repeatedly points out that its products
`
`are sold at farmers markets and “specialty stores.” (Id., 15, 23, 25, 28, 31, etc.) But Applicant admits that
`
`those are not the only channels in which its goods are sold, and the Subject Applications are not limited to
`
`those channels.3 Based on the unrestricted applications, Applicant could open a McSweet branded store
`
`next to a McDonald’s restaurant, or sell its product at quick service restaurant counters - a channel
`
`common for pickled goods. (See, e.g., O’Malley 146:3-147:18.) Likewise, while it claims that its
`
`products are “high-end” based upon its pricing (AB, 16, 31-32), Applicant could always drop its prices.4
`
`Although Applicant argues the same person is “never a customer of both [Applicant’s and Opposer’s
`
`products] at the same time” (AB, 31), the evidence belies this fact as Applicant has proffered a receipt for
`
`a purchase of both Applicant’s goods and McDonald’s goods from the same QFC store. (ANOR 579.)5
`
`3 Furthermore, Applicant’s largest client is QFC and McDonald’s has a presence in every QFC store.
`(MB, 17.)
`4
`In fact, it already undercuts its national brand competitor on unit price. (See MB, 25-26; App. Ex. 41.)
`5 We note that, even if the Subject Applications did contain limitations to packaging, trade channels or
`class of purchasers, such limitations would be insufficient to counteract the high likelihood of
`confusion with and dilution of McDonald’s Mc family based on the overall evidence in this matter.
`
`8
`
`

`
`B.
`
`“Gourmet” is Not a Meaningful Limitation
`
`Applicant takes every opportunity to describe its products as “gourmet” in a further attempt to
`
`distinguish them from McDonald’s products. While the word “gourmet” is in the designation of one of
`
`the two Subject Applications, it is a vague term like “high-quality” and “premium,” and has come to be
`
`known in the food industry as a mere term of puffery. Unlike terms such as “organic” or “kosher,” there
`
`is no regulation over use of the term “gourmet.” In fact, McDonald’s uses the term “gourmet” in
`
`association with food products offered at some of its restaurants (ONOR L68-70), and has even used the
`
`mark McGOURMET. (Id., L83-84.)
`
`Indeed, Applicant’s own culinary consultant explains that terms like “specialty” and “gourmet”
`
`have come to mean different things to different people. (ONOR F8-10, 89 (Bergman 19:2-7; 21:5-13;
`
`137:11-15).) For example, you can feast on a Budget Gourmet® frozen dinner from QFC for fifty cents.
`
`(Id., L13.) Moreover, some members of the media have described certain mainstream McDonald’s
`
`products as “gourmet.” (Id., L71, L73-75, L99-101). While Applicant may believe that “gourmet” has a
`
`particular meaning, it presents no evidence on “the quality of ingredients, the care in preparation, [or the]
`
`unique brine recipe” that allegedly make its products “gourmet.” (AB, 15.) Likewise, Applicant presents
`
`no evidence on how the term “gourmet” is commonly understood.6 As a result, “gourmet” offers no basis
`
`for distinguishing Applicant’s goods or the Subject Applications.
`
`6 From the outset, Applicant has wanted to make this case about product quality and has repeatedly
`characterized McDonald’s products as “cheap” and “unhealthy.” Attacking McDonald’s products is
`baseless and irrelevant. Though armed with considerable evidence concerning Applicant’s product
`recalls and other quality issues, McDonald’s will not engage in such conduct, but rather limit its
`REDACTED
`arguments to the confusing and diluting nature of Applicant’s McSWEET mark.
`
`REDACTED
`
`9
`
`

`
`C.
`
`
`Applicant’s Actual Use Serves Only to Establish the Priority
`Afforded the Subject Applications
`
`
`
`The question of priority has never been at issue in this case because, as Applicant admits,
`
`McDonald’s use far precedes even Applicant’s claimed first use date. However, Applicant’s first use date
`
`is relevant to the issue of actual confusion, discussed infra at page 20.
`
`Applicant alleges that (1) Leo McIntyre first used the McSWEET mark with pickled onions in
`
`1990, and (2) that the mark has been used with those goods “continuously from then until the present
`
`day.” (AB, 43.) The record does not support either of these contentions. Applicant’s sole member admits
`
`that he had no involvement with the McSWEET mark or the sale of pickled onions until 1999. (McCaslin,
`
`10:19-12:22.) Everything prior to that date is based purely on hearsay. Applicant admits that it has no
`
`record of any sales occurring prior to 1999. (ONOR E42 (McCaslin Disc. 61:10-24).) Instead, it relies on
`
`hearsay as to what the deceased Mr. McIntyre allegedly told Mr. McCaslin and Ms. Murray, printouts
`
`from Applicant’s present day website where Applicant repeats this hearsay-based story (App. Ex. 30), and
`
`a single-page internal third party hotel “newsletter” for which there is no foundation and which is not a
`
`proper specimen of trademark use. (App. Ex. 1). (AB, 10, 18.) Because all of this is inadmissible hearsay,
`
`it should be stricken or given no weight.
`
`Even if the third party “newsletter” advertisement could be construed as establishing use in 1990,
`
`there is no evidence showing continuous use from that point forward to 1999 other than Applicant’s self-
`
`serving statement that there was. (AB, 43.) Thus, on this record, this Board would have to assume the
`
`mark was abandoned in 1994 (15 U.S.C. §1127), and Applicant’s “subsequent use…does not
`
`retroactively cure past abandonment.” AmBRIT Inc. v. Kraft Inc., 812 F.2d 1531, 1 USPQ2d 1161, 1177
`
`(11th Cir. 1986). And while Applicant had nearly four years of discovery in this case to find a single
`
`witness that purchased a jar of pickled onions prior to 1999, it apparently could not do so. Applicant’s
`
`priority date is 1999, and the designations in the Subject Applications define the rights which Applicant
`
`seeks to obtain in the McSWEET mark.
`
`10
`
`

`
`III. McDonald’s Has Met Its Burden of Proving Likelihood of Confusion and Dilution
`
`
`
`McDonald’s trial brief establishes how each of the du Pont factors and dilution by blurring
`
`factors weigh in its favor. Thus, only the key factors on which Applicant focused its brief are highlighted
`
`below.
`
`
`
`
`
`A.
`
`The Mark McSWEET Falls Squarely Within McDonald’s Mc Family of Marks
`
`When the McSWEET mark is properly compared to McDonald’s Mc family of marks, the
`
`similarity of marks is beyond question. The mark McSWEET consists of the distinctive “Mc” prefix
`
`followed directly by a generic or descriptive term, namely, “sweet.” This fits precisely with how
`
`McDonald’s defines (and the marketplace understands) McDonald’s Mc family. Moreover, the fact that
`
`McDonald’s has already used the McSWEET mark in foreign countries (MB, 18-19) underscores how it
`
`falls within McDonald’s globally recognized Mc family.
`
`
`
`Applicant claims that McDonald’s case for similarity relies on “Mc” being the dominant portion
`
`of the mark, and proceeds to argue that the emphasis should be on “sweet.” (AB, 20-21.) However, that
`
`argument is without merit. Distinctiveness is what makes a term a trademark and the only distinctive part
`
`of “McSweet” is “Mc”. The record is replete with admissions from Applicant that the “sweet”
`
`component of the mark was selected because it describes the flavor of Applicant’s products. (ONOR C38
`
`(Response to RFA No. 8); E129-131 (McCaslin Disc. 187:10-189:10).) As such, “Mc” is the distinctive
`
`and source designating portion of Applicant’s Mark.
`
`B.
`
`The Goods are More than “Sufficiently Related”
`
`McDonald’s agrees with Applicant that “the goods and services need not be the same or
`
`competitive for confusion to be likely,” rather they need only be “sufficiently related.” (AB, 25.) Where
`
`the parties differ is on what constitutes “sufficiently related.” Because of the fame of the Mc family,
`
`McDonald’s food products do not have to “overlap” with Applicant’s food products (Id., 26), and
`
`McDonald’s need not “specialize in pickled vegetables” for a likelihood of confusion to arise. (Id., 27.)
`
`Indeed, the Board has found likelihood of confusion with the Mc family in cases where the applicant’s
`
`goods were not food products and were much less similar than here. See, e.g., McDonald’s Corp. v.
`
`11
`
`

`
`McClain, 37 USPQ2d 1274 (TTAB 1995)(legal services). In this case, both parties specialize in food
`
`products, and the record shows that both parties sell many of the same vegetables. (MB, 31.) Both
`
`McDonald’s and Applicant sell vegetables as ingredients. (Compare AB, 26 to McCaslin 86:14-87:17;
`
`89:12-90:15; 92:13-93:5.) Both parties also use the marks at issue to sell grocery products.7 McDonald’s
`
`has sold its Arch Cards in thousands of grocery stores for many years (Kizior 22:19-22) and, contrary to
`
`Applicant’s assertion, many of the cards do feature Mc marks. (See, e.g., Kizior 15:11-20; McD Ex. 3
`
`(McCafe).) These cards reflect a pre-purchase of McDonald’s food products, and have no purpose other
`
`than for redemption for food and beverage products at a McDonald’s restaurant. (Id., 6:13-20.)
`
`Furthermore, Applicant’s statement that it “seems unlikely [McDonald’s] will enter the grocery sector”
`
`with food products (AB, 30) is simply wrong given that Peter Sterling’s deposition outlined McDonald’s
`REDACTED
`
`plans to do exactly that with its McCafe branded coffee.8
`REDACTED
`
`Applicant cites a 1976 case for the premise that goods not “commercially related” do not become
`
`similar simply by virtue of being sold in the same grocery store. (AB, 29). In that case, Federated Foods,
`
`Inc. v. Ft. Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976), the goods at issue were toilet
`
`paper and sponges. Id. at 29. Thus, it was not hard for Judge Rich to point out their many off-setting
`
`differences. When the case involves food products used in a complementary fashion, the result is much
`
`different. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
`
`(Fed. Cir. 1984)(bread and cheese sold in same grocery sufficiently related). There is plenty of evidence
`
`in the record showing how Applicant has marketed its pickled vegetables as complimentary to the types
`
`of food McDonald’s is famous for providing under its Mc family of marks, such as sandwiches and
`
`hamburgers. (MB, 32.)
`
`Finally, Applicant places considerable emphasis on a “something more” requirement for
`
`comparing a mark used with restaurant services to one used with food products. (AB, 25-27.) Such
`
`7 Applicant’s argument that McDonald’s “Arch Card is not a grocery store product” because it does
`not reflect as “sold” on the receipt (AB, 29) completely misses the point. Grocery customers do not
`care how the grocer handles its accounting. They care about the source of the goods in their cart.
`8 Though not of record, the Board may take judicial notice that McDonald’s has filed S/N 85/719,760
`for McCAFE for use with ground and whole bean coffee.
`
`12
`
`

`
`requirement might apply if McDonald’s use of its Mc family was limited to restaurant services, but the
`
`record clearly demonstrates otherwise. However, even if this requirement were applied here, it would be
`
`easily met. The need for “something more” was first announced by Judge Rich in Jacobs v. Int'l.
`
`Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982). Judge Rich then provided an
`
`example of what that “something” could be, citing a case where “the owner of BEEFEATER for gin, a
`
`well known and famous mark, was successful in halting the use of BEEFEATER…to identify restaurant
`
`services.” Id. (emphasis in original). In another example relied upon by Applicant, the Federal Circuit
`
`applied the “something more” requirement to vacate the summary judgment cancellation of a mark for
`
`barbeque sauce brought by a petitioner that used the same mark in association with restaurant services at
`
`its single location restaurant in Alabam