Page:Quality Inns v. McDonald's.pdf/19

, cost; everyday; prepackaged; specialty chain; quick; convenient; reduces choices; self-service; mass merchandising; standardized; state of the art marketing; low brow; assembly line precision; uniform; market dominance formula; handy location; positive attitude; simple; comfortable; honest; looks okay; and working man. He reduced these to four terms which he characterizes as the definition of “Mc,” that is, “basic, convenient, inexpensive, and standardized.”

McDonald’s retained an outside firm to do its own internal marketing research into the public perception of the meaning of “Mc” and the conclusions reached were similar to those reached by Dr. Shuy. McDonald’s list, which was much shorter, distilled the following definitions: (1) “reliable at a good price,” (2) “prepackaged, consistent, fast, and easy” (3) “a prefix McDonald’s adds to everything it does,” and (4) “processed, simplified, has the punch taken out of it.”

Dr. David W. Lightfoot, a linguist from the University of Maryland, testified at trial on behalf of McDonald’s. He took no issue with the meanings derived by Dr. Shuy and by McDonald’s own internal survey. However, he disputed vigorously any notion that “Mc” is a generic word. He pointed out that “Mc” does not have a single easy identifiable meaning. For instance, of the 27 or so definitions derived by Dr. Shuy from the journalistic uses, many were not incorporated into Dr. Shuy’s condensed definition. Dr. Lightfoot concluded that all the meanings derived by Dr. Shuy, by McDonald’s and by him were essentially descriptive of McDonald’s Corporation and the reputation it has earned over the years. He concluded that whether or not there was a specific reference to McDonald’s Corporation in each article, in every case the allusion was to McDonald’s and its family of marks in a manner that was intended to be cute and playful.

The Court concludes that indeed the uses in the press of “Mc” plus a generic word are coined and novel to each article for the playful use by the author. In each case the allusion, whether express or implied, was to McDonald’s, sometimes flattering and sometimes pejorative. There was no single independent meaning of “Mc” understood in the language and its uses have been created to convey any one of several attributes that the author makes to McDonald’s.

This is not analogous to a circumstance where a product is referred to so frequently by brand name that even competitive brands are called by the one name and the brand identity is lost. On the contrary, the attribution of source to McDonald’s in the use of “Mc” is strong and persists. The Court notes that while most of the articles used by Dr. Shuy did not contain express allusions to McDonald’s, a very similar group of articles that he did not use in his analysis, but which conveyed the same meanings, made express allusions to McDonald’s. The Court therefore rejects any contention that McDonald’s has lost its right to enforce its marks because “Mc” has become a prefix with a single meaning that has become part of the English language and beyond McDonald’s control.

The central question for resolution in this litigation is whether the use of McSleep Inn is likely to cause confusion so that an appreciable number of the public attribute the product and services of McSleep Inn to McDonald’s. Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208 (2d Cir.1985); Spring Mills, Inc. v. Ultracashmere House, Ltd., 689 F.2d 1127 (2d Cir.1982); Eastern Wine Corp. v. Winslow–Warren, Ltd., 137 F.2d 955 (2d Cir.), ''cert. denied'', 320 U.S. 758, 64 S.Ct. 65, 88 L.Ed. 452 (1943).

When the junior mark has not been presented to the consuming public, as it has not been in the instant case, there is less opportunity to determine whether actual confusion exists. In circumstances such as these, other factors for analysis become important. In Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir.1984), the Fourth Circuit accepted a list of seven factors to consider in determining the