McDonald’s Triumphs over BioMcDiesel

On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration.

Mr. Joseph argued that he was entitled to registration by asserting, among other things, that McDonald’s permits thousands of third-party uses of trademarks that include the prefix MC-, and that the parties’ goods and services are sufficiently distinct that confusion is not likely. However, Mr. Joseph did not submit evidence in support of his arguments to the TTAB. He also did not explain the reason that he decided to use the MC- prefix in his mark.

In making its decision, the TTAB recognized that McDonald’s has a famous family of MC-formative marks that cover a variety of goods and services, including restaurant services, foods and charity initiatives, as well as sustainability programs and the sale of yellow grease. It also found that there was a sufficient relationship between gas stations and food service/restaurants and their products that consumers would mistakenly believe that the parties’ products came from the same source. Among the evidence the TTAB considered were articles about McDonald’s biodiesel program for recycling used fryer grease, including one that referred to the fuel as “McDiesel.” The TTAB also took note of McDonald’s’ evidence that restaurant services and fuel are sometimes supplied under the same brand (e.g., COSTCO, BP & Design and MEIJER (Stylized)). In addition, the TTAB considered evidence that McDonald’s is the largest supplier of yellow grease in the United States and uses biodiesel fuel recycled from its yellow grease to fuel its own delivery trucks.

Gibbons will continue to monitor developments in both brand protection and the TTAB’s treatment of famous marks.

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