Page:Quality Inns v. McDonald's.pdf/21

 words alone. Unlike a copyright, mere reproduction of a trademark is not an infringement. Thus, a non-confusing parody of a famous mark (“Jordache” vs. “Lardashe”) would not be trademark infringement because the owner of the mark “does not own in gross the penumbral customer awareness of its name, nor the fallout from its advertising.” Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 625 F.Supp. 48, 56 (D.N.M.1985), aff’d, 828 F.2d 1482 (10th Cir.1987). As Justice Holmes said: "[W]hat new rights does the trademark confer? It does not confer a right to prohibit the use of the word or words. It is not a copyright. … A trademark only gives the right to prohibit the use of it so far as to protect the owner’s goodwill against the sale of another’s product as his. … When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo."

Prestonettes, Inc. v. Coty, 264 U.S. 359, 360, 44 S.Ct. 350, 350, 68 L.Ed. 731 (1924) (citations omitted); see also University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372 (Fed.Cir.1983); American Footwear Corp. v. General Footwear Co., 609 F.2d 635 (2d Cir.1979), ''cert. denied'', 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980).

It can be argued persuasively, however, that in this case the level of association reaches a level so great that confusion is likely to result. The question could well be asked: “With so much suggestion of or association with McDonald’s, could it be true that perhaps McDonald’s is a sponsor of McSleep Inns?”

The question whether a “likelihood of confusion” exists is, however, answered most persuasively by the survey evidence presented at trial. Although none of the surveys was perfect, they all spoke consistently that an appreciable number of consumers would be confused.

In Dr. Zeisel’s telephonic survey, the responses were closest to a statistical sample. Its greatest shortcoming was that perhaps the first question, which allowed the respondent to associate, brought McDonald’s to mind and therefore provided fuel for the next question as to who owns or sponsors McSleep Inn. The fear of any poison from that methodology, however, was allayed by his second survey which produced almost the same results. It is also noted that Dr. Zeisel conducted surveys, which he used as control for the research here, with the names “McTravel” and a concocted name “McTavish.” With respect to McTravel (using “Mc” plus a generic word), confusion with McDonald’s resulted, but with respect to McTavish (using what appears to be a proper name), there was virtually no confusion. In both Dr. Zeisel used the same warm-up question as he did in the telephone survey.

Because the telephonic survey could not present visual depictions of the mark, Dr. Zeisel did a mall intercept survey. That type of survey traditionally does not have a statistical probability because as a practical matter it is focused on randomly sampled shopping malls which are inherently biased. Both experts used this method, however, and the testimony received indicated that it was a popular method for use in the marketing industry. This survey by Dr. Zeisel revealed the same level of confusion as did the telephone survey. Over 30 percent confused the name McSleep Inn with McDonald’s, a level which the Court concludes is substantial.

Projecting 30 percent to the 144 million people, which Dr. Zeisel concluded was the potential audience for McSleep Inn, over 40 million people would be expected to be confused if his surveys were statistically correct.

Dr. Jacoby, Quality International’s expert, criticized Dr. Zeisel’s leading question and the absence of visual stimuli. As the Court has noted, it concludes that at least the leading question criticism may have been theoretically correct, but it did not as a practical matter materially alter the data.

Dr. Jacoby conducted his own survey using as stimuli: an airline travel magazine advertisement for Quality International, a mock up yellow pages advertisement, and an artist’s rendering showing McSleep Inn