Page:Quality Inns v. McDonald's.pdf/15

 taken here. McDonald’s spends almost a billion dollars each year on marketing and advertising, a sum which increases steadily with its sales, which are at $14 billion. While the fact that McDonald’s is the largest single brand advertiser in the United States could alone lead to the conclusion of the strong public awareness of its marks, the evidence showed affirmatively that awareness was virtually universal, to the point where a journalist could allude to McDonald’s, without using its name, by coining words as “McLaw,” “McPaper,” and “McFashion.”

The power of this public recognition of McDonald’s is evidenced in various ways.

In recent years, McDonald’s began to focus on a long distance travel market, defined by customers traveling on the road who are more than 30 miles from home when they use the service. Pursuing this market, McDonald’s took over numerous tollway restaurants and converted them to McDonald’s restaurants. After the first year of conversion, the increased sales at all of the restaurants that were converted averaged over three times the previous year’s sales, and indeed the sale of gas at the neighboring gas station increased significantly, although not as much. McDonald’s attributes these successes to its recognition.

The attribution to McDonald’s, however, has not been totally under its control. Journalists have created their own words by adding “Mc” to a generic word. The Court was presented with literally hundreds of such uses, such as McLaw, McTax, McNews, McPaper, McSurgery, McArt, even McGod. Since the issue is raised in this action that “Mc” words have become generic, the Court will address the scope of this usage more fully below.

As part of its promotion, McDonald’s created a language that it called “McLanguage” from which it developed a family of marks for its products such as McChicken, McNugget, McPizza, as well as marks outside the food area related to its business such as McStop, McKids, and McShuttle. There is no evidence that this language or these marks existed before McDonald’s created them or that, outside of McDonald’s sphere of promotion and presence, anyone would understand these words to mean anything. “Mc” obviously is a Scottish or Irish surname used in proper names. The use to form words, however, was unique at the time. The marks that are owned by McDonald’s and that were formulated by combining “Mc” and a generic word are fanciful and enjoy a meaning that associates the product immediately with McDonald’s and its products and service.

They also constitute a family of marks that is enforceable against infringing uses, and since they are fanciful they will be given the strongest protection. McDonald’s Corp. v. McBagel’s, Inc., 649 F.Supp. 1268 (S.D.N.Y.1986).

A family of marks may have a synergistic recognition that is greater than the sum of each mark. But that is not to say that the prefix “Mc” coupled with any generic word may be precluded by McDonald’s. Each allegedly offending use must be tested against the likelihood of confusion, for the scope of enforceability, as the Court has already noted, is measured by the scope of confusion.

In this case the only examination that is made, and the only conclusions that are reached, relate to the allegedly infringing use of “McSleep Inn” by Quality International in the lodging business.

Quality International has pointed out that there are a substantial number of third-party uses of “Mc” with a generic word that would give rise to infringement to the same extent as would the mark McSleep Inn. Quality International urges that these uses by third parties are so pervasive that McDonald’s should now be denied the right to enforce its marks against McSleep Inn.

In recent years a significant number of third-party uses of “Mc” with a generic word has occurred in the commercial area. While the plaintiff proffered many such purportedly infringing marks from the