Page:Quality Inns v. McDonald's.pdf/12

 producing results within a percentage point or two of each other.

Dr. Zeisel criticized Dr. Jacoby’s surveys in several respects. The principal criticisms were in three areas. With respect to the airline magazine advertisement and the yellow page advertisement, the McSleep Inn trademark was so diluted by the Quality Inns logo that a significant number of people did not even know that McSleep Inn was being advertised. In that context, he did not believe that any meaningful results were obtained. With respect to the artist’s rendering of the McSleep Inn, he agreed that the concept was appropriate, but criticized the fact that the respondent was shown a logo that included the phrase “by Quality International” underneath it. Not only did he consider that to be nothing more than a reading exercise for the respondent, but he observed that the respondent was allowed to retain the picture in front of him when answering the questions.

McDonald’s presented evidence that showed that of the 70 persons in Dr. Jacoby’s survey who correctly identified the hotel with Quality International, 50 said they did so because they read it on the sign. When asked why they identified McSleep Inn with Quality International, typical responses were: “It says so on the ad,” “The ad tells you that it’s operated by Quality Inns International,” “Because it says so,” or “Because it says so on the sign I just read.” McDonald’s offered similar evidence on the yellow page advertisement and the airline advertisement where the respondents indicated they simply read Quality International in the advertisement.

Quality International justified its inclusion of “by Quality International” with the reason that it had made the decision to include that on the sign and wanted to test real life circumstances.

Trademark law gives the owner of a mark the right to preclude a use by a junior owner of a mark that causes or is likely to cause confusion, cause mistake, or deceive an appreciable number of typical consumers into believing that some sponsorship, association, affiliation, connection, or endorsement exists between the owner of the senior mark and the owner of the junior mark. See, e.g. 15 U.S.C. § 1114(a), but common law concepts of unfair competition are similar. The gist of a claim for trademark infringement, or the related commonlaw tort, is a sanction against one who trades by confusion on the goodwill or reputation of another, whether by intention or not. There are but two inchoative elements that must be established for entitlement, from which all permutations and guises of the cause of action are derived: the senior owner of the mark must demonstrate (1) the adoption and use of a mark and his entitlement to enforce it, and (2) 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. Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir.1928). The articulation of standards and criteria are numerous for reaching the conclusion whether plaintiff has made his case.

The owner of a mark who has developed a reputation and identity with a mark through his products, service, marketing, and presence in the market, has an interest in protecting the business and reputation for which the mark stands, not only at the present time in the current markets in which he does business, but for future times and in related markets that the development of his business might naturally take him. Communications Satellite Corp. v. Comcet, Inc., 429 F.2d 1245 (4th Cir), ''cert. denied'', 400 U.S. 942, 91 S.Ct. 240, 27 L.Ed.2d 245 (1970); Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928); McDonald’s Corp. v. McBagel’s, Inc., 649 F.Supp. 1268 (S.D.N.Y.1986). The extent to which he may protect this interest relates directly to the strength of his mark. While one mark may not enjoy the strength of identity to preclude use of a junior mark in a related field or neighboring market, another may enjoy such recognition that confusion might result outside his own field or beyond the markets in which he does business. See, e.g. Maier Brewing