Page:Quality Inns v. McDonald's.pdf/24

 for the meeting with McDonald’s in April 1987.

As noted earlier, the boundaries of enforceability of a mark are defined by where and in what markets an appreciable number of the public are confused. Here the confusion in a different, but related market, entitles McDonald’s to enforce its marks in that market.

Intent of Quality International

Intent of the infringing user to confuse is not necessary to establish a likelihood of confusion. On the other hand, the existence of an intent to confuse is “strong evidence establishing likelihood of confusion, since one intending to profit from another’s reputation generally attempts to make his signs, advertisements, etc., to resemble the other’s so as deliberately to induce confusion.” Pizzeria Uno, 747 F.2d at 1535. And an intentional infringement will entitle a plaintiff to an injunction; the defendant has no equity to object to one. Safeway Stores, Inc. v. Dunnell, 172 F.2d 649 (9th Cir.), ''cert. denied'', 337 U.S. 907, 69 S.Ct. 1049, 93 L.Ed. 1719 (1949); Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407 (2d Cir.1917), ''cert. denied'', 245 U.S. 672, 38 S.Ct. 222, 62 L.Ed. 540 (1917); Travelodge Corp. v. Siragusa, 228 F.Supp. 238 (N.D.Ala.1964), aff’d, 352 F.2d 516 (5th Cir.1965).

The intent to trade on the goodwill or reputation of another projects as does a missile to its target. In the absence of evidence of actual confusion, a Court may conclude, therefore, that the intended infringement would hit its target; certainly the infringer should not be the one to complain that it did not.

The Court finds that Mr. Hazard hoped that Quality International would become the “McDonald’s of lodging.” He believed, though mistakenly, that because he was in the lodging business and McDonald’s was in the fast food business, he was free to borrow, and expected that the confusion that would result would benefit his product. He wanted instant recognition, an image of consistency, quality, and value, all at the courtesy of McDonald’s.

There is a universe of names to select from and he combined “Mc” plus the generic word “sleep,” a combination that he knew McDonald’s invented and which had no meaning except to associate a product or service with McDonald’s. Despite his protestations, which the Court concludes were too vigorous, the Court finds that Mr. Hazard had McDonald’s in mind in the selection of the name and planned to use the name as the marketing hook—a reputation instantly understood by the public and a prophesy which Quality International intended to fulfill.

Perhaps he had a good faith belief he could use the name legally and truly intended, after adopting it, to try to distinguish it from McDonald’s. But its use was not available.

While the intent of Mr. Hazard in the selection and adoption of the name was deliberate, the Court believes that he and his staff believed that the use could be defended, albeit with a tainted understanding of their rights. Quality International knew of the risk but elected to proceed. Perhaps the initiation of this suit so promptly was the ultimate recognition of the risk.

For the reasons given the Court finds and concludes that (1) McDonald’s is entitled to enforce its family of marks that are characterized by the combination of the prefix “Mc” with a generic word; (2) the name McSleep Inn is likely to cause an appreciable number of the public to be confused by believing that McSleep Inn is sponsored, associated, affiliated, connected, or endorsed by McDonald’s; and (3) the adoption and use by Quality International of the name McSleep Inn was a deliberate attempt to benefit by the good will and reputation of McDonald’s. Therefore, the Court will find trademark infringement, unfair competition, and dilution under the Illinois statute (Ill.Rev.Stat. Ch. 140, § 22).

On the Court’s finding of trademark infringement and unfair competition, it will