Page:Quality Inns v. McDonald's.pdf/14

 e protected on any goods which buyers would be likely to think came from the same source as plaintiff’s goods. "[W]e think that goods, though different, may be so related as to fall within the mischief which equity should prevent. Syrup and flour are both food products, and food products are commonly used together. Obviously the public, or a large part of it, seeing this trademark on a syrup, would conclude that it was made by the complainant. In this way the complainant’s reputation is put in the hands of the defendant."

247 F. 409–10. The Aunt Jemima doctrine was given strong impetus in Yale Electric Corp. v. Robertson, supra, where the owner of the Yale mark used in connection with the sale of locks, was permitted to preclude the use of the mark in connection with the sale of flashlights. In an oft-quoted opinion, Judge Learned Hand noted that infringement and injury can occur even when the junior user uses a mark on related, but noncompetitive, goods:

"However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner’s reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower’s use is so foreign to the owner’s as to insure against any identification of the two, it is unlawful. … The disparity in quality between [the senior user’s] such wares and anything the [junior user] makes no longer counts. … The [senior user] need not permit another to attach to its good will the consequences of trade methods not its own."

26 F.2d at 974 (citations omitted).

When the strength of the mark is so pervasive, however, to the point that the public actually attributes competitive products or services to the mark without the intent of attributing source, then the mark may be lost to the public domain. The public comes to understand the mark to refer only to the kind of goods and not to the origin. Thus, once enforceable marks such as aspirin, thermos, cellophane, and escalator have become generic words. Bayer Co., Inc. v. United Drug Co., 272 F. 505 (2d Cir.1921); King–Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir.1963); King–Seeley Thermos Co. v. Aladdin Industries, Inc., 418 F.2d 31 (2d Cir.1969); DuPont Cellophane Co., Inc, v. Waxed Products Co., Inc., 85 F.2d 75 (2d Cir.1936); Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950).

It is therefore necessary to measure, on the one side, the strength of the mark asserted and, on the other, the factors suggesting a likelihood of confusion, fully recognizing even as separate analyses are discussed that the two are integrally related. The first of these, strength of the mark, is now analyzed factually and how it is affected by charges that (1) third-party uses of McDonald’s marks have eroded or precluded their enforcement and (2) the prefix “Mc” is now generic.

McDonald’s golden arches and the McDonald’s logo rank among the strongest marks, enjoying instant recognition among virtually all members of our society. As noted earlier, evidence showed that among children McDonald’s “Ronald McDonald” enjoys virtually 100 percent recognition. To take judicial notice of a mark would perhaps be unprecedented, but the parties were not troubled with the notion in this ease as to some of McDonald’s marks such as the golden arches and Big Mac. See Fed.R.Evid. 201. Because of the ample presentation of evidence on the promotion and awareness of the marks of McDonald’s, the Court will not be required to consider whether judicial notice should be