McDonald’s v McSweet: TTAB upholds survey for dilution

McSweet LLC had filed an application to register MCSWEET for pickled gourmet vegetables, and McDonald's Corp had opposed based on a family of 'MC' marks. McDonalds claimed that MCSWEET should not be registered based on likelihood of confusion and also based on dilution. In McDonald’s Corp v McSweet LLC (Consolidated Oppositions Nos 91178758 and 91192099), the Trademark Trial and Appeal Board (TTAB) found a likelihood of confusion and dilution by blurring. 

In considering the likelihood a confusion claim, the TTAB found that McDonald's owned a family of marks that contained of a 'MC' formation with a generic term and that this family of marks was famous. It found confusing similarities based on a review of the usual factors.

In considering dilution, the TTAB found that the 'MC' family of marks was distinctive and famous. It found that MCSWEET was diluting that family of famous marks.

The TTAB considered whether the use of MCSWEET was likely to cause dilution by blurring; in doing so, the TTAB considered the issues listed in 15 USC 1125(c)(2)(B). The interesting part of the discussion revolved around a survey that McDonald's submitted to show that there was an actual association between the marks.

At the start of the survey, the test cell respondents were shown a placard with MCSWEET and the control cell respondents were showed a placard with MR SWEET. The respondents were first asked to comment about the placard and 46% of the test cell spontaneously mentioned McDonald's compared to 0% of the control cell. Respondents were then asked distraction questions and then the following questions:

• Question 4: “Based on what you just saw, do you OR don’t you know who or what brand or company makes the product with the name that I showed you?”
• Question 5: “Do you or don’t you know of any other products or brands that are made by the same company that makes the product with the name that I showed you?”
• Question 6: “Do you believe that whoever makes the product with the name that I showed you is OR is not related to, sponsored by, or associated with any other brand or company?”
• Question 7: “What if anything, came to your mind when you first saw the name? Anything else?… What makes you say that?”

After eliminating duplicate answers, the survey showed that 67% of respondents who saw MCSWEET associated it with McDonald's even if they were not confused as to the source. Based on this result, the TTAB found likelihood of dilution through blurring.

This case is interesting because of the analysis of the survey showing dilution. The TTAB not only approved of the survey, but explains in detail how the analysis was done to show dilution.

Ethan Horwitz, Carlton Fields Jorden Burt, New York