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appealtrialmotionwilltrademarkcorporation

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J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 59 USLW 2760, 18 U.S.P.Q.2d 1889

Facts

J & J Snack Foods Corporation sought to register the trademarks McPRETZEL and McDUGAL McPRETZEL for frozen soft pretzels. McDonald's Corporation opposed the registration, claiming that the use of these marks would likely cause confusion with its family of marks that include the prefix 'Mc' combined with generic food names. The Trademark Trial and Appeal Board agreed with McDonald's, leading J & J to appeal the decision. The court ultimately affirmed the Board's ruling.

J & J Snack Foods Corporation (J & J) appeals the decision of the United States Trademark Trial and Appeal Board denying registration of the trademarks McPRETZEL and McDUGAL McPRETZEL for frozen soft pretzels.

Issue

Whether the trademarks McPRETZEL and McDUGAL McPRETZEL are likely to cause confusion with the family of marks owned by McDonald's Corporation.

Whether there is evidence of intent to trade on goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion so as to bar trademark registration.

Rule

Analysis

In applying the rule to the facts, the court noted that McDonald's has established a family of marks that the public associates with its brand, particularly those using the 'Mc' prefix. The Board found that J & J's marks would likely be viewed by consumers as part of this family, leading to confusion regarding the source of the goods. The court emphasized that the extensive promotion and recognition of McDonald's marks contributed to the likelihood of confusion.

The Board found that by extensive promotion and use McDonald's has created public recognition of a family of marks wherein 'Mc' is combined with the generic name of a food product, and that the public has come to associate such marks with McDonald's.

Conclusion

The court affirmed the Board's decision, concluding that J & J's trademarks were likely to cause confusion with McDonald's family of marks.

The Board placed controlling weight on McDonald's use of a number of similar marks on food products, specifically, marks composed of the formative prefix 'Mc' and a generic food name; on McDonald's extensive promotion of this family of marks; and on the recognition and fame of this family of marks as associated with McDonald's.

Who won?

McDonald's Corporation prevailed in this case because the court found that there was a likelihood of confusion between J & J's proposed trademarks and McDonald's established family of marks. The court emphasized the importance of consumer perception and the extensive recognition of McDonald's marks, which contributed to the ruling against J & J's registration.

McDonald's Corporation was not required to own trademark rights to formative 'Mc' in order to protect its specific family of marks wherein prefix 'Mc' was used with generic food names to create fanciful words.

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