IN THE MATTER OF AN OPPOSITION by McDonald's Corporation and McDonald's Restaurants of Canada Limited to application No. 731,302 for the trade-mark MCSOLD filed by Michael Terence McKenna
On June 25, 1993, the applicant, Michael Terence McKenna, filed an application to register the trade-mark MCSOLD based upon use of the trade-mark in Canada since October 1991 in association with:
“Services provided by persons duly authorized to act as agents in residential and commercial purchase and sale transactions, including without limiting the generality of such services, obtaining listings for real property and personal property, advertising any part or all of such property, introducing potential purchasers to such property, and all ancillary services”
The applicant disclaimed the right to the exclusive use of the word SOLD apart from his trade-mark.
The present application was advertised for opposition purposes in the Trade-marks Journal of March 2, 1994 and the opponents, McDonald's Corporation and McDonald's Restaurants of Canada Limited, filed a statement of opposition on June 28, 1994, a copy of which was forwarded to the applicant on August 17, 1994. The opponents alleged as their first ground of opposition that the applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act in that the trade-mark MCSOLD as applied to the services covered in the present application is confusing with the following registered trade-marks owned by the opponent, McDonald's Corporation:
TRADE-MARK REGISTRATION NO.
MCDONALD'S 141,977
MCDONALD'S HAMBURGERS 141,978
MCDONALD'S & M Design 141,374
MCDONALD'S & Design 176,783
BIG MAC 182,371
MCDONALDLAND & Design 218,993
BIG MAC & Design 219,423
RONALD MCDONALD 219,896
MCDONALD'S GOOD MORNING 220,219
CANADA & Design
EGG MCMUFFIN 221,457
MACSUNDAE 221,486
RONALD MCDONALD 225,901
RONALD MCDONALD Design 225,902
LITTLE MAC 230,837
MCHAPPY DAY 223,046
MCDONALD'S CARES & Design 243,165
BIG MACK'S 243,627
DOUBLE MAC 244,774
NOBODY CAN DO IT LIKE 249,611
MCDONALD'S CAN
MCBOO 253,152
MCCHICKEN 254,922
MCDONALDLAND 256,841
BIG MAC ATTACK 258,246
MCDONALDLAND 259,357
RONALD MCDONALD HOUSE 259,608
MANOIR RONALD MCDONALD 259,611
ATTACK A BIG MAC 262,644
MCDONALD'S & Design 262,687
CHICKEN MCNUGGETS 268,261
MCDOLLAR 269,956
MAYOR MCCHEESE 270,945
RONALD MCDONALD HOUSE 274,108
& Design
MC CHICKEN 275,398
MACPOULET 276,932
MCDONALDLAND FASHIONS 277,094
COLLECTION & Design
MCRIB 279,507
MCBUCK 283,637
MCCOTE & Design 283,789
RONALD MCDONALD HOUSE 286,141
& Design
MCDONUTS 287,330
MCCONE 287,732
MCMONEY 290,131
MCDONALD’S AND YOU 293.017
POULET MCCROQUETTES 295,104
MCDONALD'S, RONALD AND YOU 295,143
MCBARBEQUE 296,686
MCQ 296,687
MCDO 301,422
I'VE GOT A TASTE FOR 305,883
MCDONALD'S
MCDONALD'S PLAYLAND 310,250
MCDONALD'S PLAYLAND & Design 310,251
MCCOLA 314,361
MCMILLIONS 316,743
MCD.L.T. 316,918
MCNUT 320,301
MCMUFFIN 321,522
MCNOGG 322,335
CHICKEN MCSWISS 322,791
MAPLE MCCRISP 322,792
MCMILLION 322,909
MCJOBS & Design 330,965
MAC FRIES 332,947
MCCHEDDAR 334,618
RONALD MCDONALD CHILDREN'S 335,462
CHARITIES
PARTNERS IN SUPPORTING 336,058
RONALD MCDONALD HOUSE
MCDONUTS 340,281
SAUSAGE MCMUFFIN 345,182
PIERROT MCDO 348,005
MCSALAD 349,411
MCDRIVE 350,689
MCFAST LANE 350,895
CHICKEN MCNUGGETS SHANGHAI 352,107
MCFORTUNE COOKIE 365,198
MCPIZZA & Design 365,613
MCDINNER 366,101
MCKIDS* & Design 368,913
MCKIDS 369,839
M & MCKIDS & Design 369,949
BACON ‘N EGG MCMUFFIN 375,891
MCKIDS 377,809
MCNUGGET BUDDIES 380,166
M & SPORTS MEMORIES & Design 380,723
MCKIDS & Design 381,837
COSMC 381,838
M Design 387,318
MCKIDS THE STORE FOR KIDS & Design 388,688
BIG MAC 388,940
MCDONALD’S & M Design 388,947
MCBIRTHDAY 389,326
READING IS FUN WITH RONALD 398,089
MCDONALD
MCNUGGETS 393,609
MCDONALD’S 394,442
MCLOBSTER 396,414
MCMATCH 397,197
MCDONALD’S IN RED SQUARE & Design 399,537
CHICKEN MCNUGGETS 401,871
POULET MCCROQUETTES 402,200
M & MCDONALD’S VALUE & Design 403,244
MCCLUB 403,665
MCFONDS 403,666
MCBOURSE 403,667
MCDONALD’S & Design 410,284
As their second ground, the opponents alleged that the applicant is not the person entitled to registration of the trade-mark MCSOLD in that, as of the applicant’s claimed date of first use, the applicant’s trade-mark was confusing with the trade-marks identified above which had previously been used in Canada and with the following trade-marks in respect of which applications for registration had been previously filed in Canada and which trade-marks and applications have not been abandoned:
TRADE-MARK APPLICATION NO.
MCSNACK 526,017
MCBLIMP 553,091
MCDRYER 585,640
MCTRADER 588,044
MCSTOP 568,109
MCD LEGER 679,393
MCDONALD’S & Anchor Design 609,011
MCFRANCHISE 648,350
MCKIDS 670,518
MCKIDS & Design 670,517
RONALD MCDONALD 652,804
As its final ground, the opponents alleged that the applicant’s trade-mark is not distinctive.
The applicant served and filed a counter statement in which he denied the allegations of confusion set forth in the statement of opposition.
The opponents filed as their evidence the affidavit of Peter Beresford and the statutory declaration of Robert W. White while the applicant submitted as his evidence the affidavit of Michael Terence McKenna. Further, both parties submitted written arguments and no oral hearing was conduced in respect of this opposition.
The main issue in this opposition is whether the applicant's trade-mark MCSOLD as applied to the services covered in the present application is confusing with one, or more, of the first opponent's registered trade-marks or pending trade-mark applications identified above. In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material dates in this opposition. In this regard, the material date with respect to the grounds of opposition based on Section 12(1)(d) of the Trade-marks Act is the date of my decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.)] while the material dates with respect to the non-entitlement and non-distinctiveness grounds are, respectively, the applicant's claimed date of first use [October 1991] and the date of opposition [June 28, 1994].
Considering the inherent distinctiveness of the trade-marks at issue [ss. 6(5)(a)], I find that the applicant's trade-mark MCSOLD possesses some minor degree of inherent distinctiveness as applied to the services involving purchase and sale transactions covered in the present application. Certain of the first opponent's trade-marks such as MCDONALD'S, RONALD MCDONALD, and the design trade-marks including these words, are weak marks which possess little inherent distinctiveness while the first opponent's trade-marks comprising or including the word MCDONALDLAND do possess some inherent distinctiveness. Further, a number of the first opponent's marks including the MC or MAC prefix in combination with a food identifier possess some measure of inherent distinctiveness, as do the trade-marks which include the prefix MAC or MC in combination with a word or words which are descriptive of food products. The former group of trade-marks include such marks as: MACSUNDAE, EGG MCMUFFIN, BACON ‘N EGG MCMUFFIN, SAUSAGE MCMUFFIN, MCCHICKEN, MACPOULET, MAYOR MCCHEESE, MCRIB, MCCOTE & Design, MCCONE, MCCOLA, MCNUT, MCMUFFIN, MCNOGG, MCLOBSTER, MCDONUTS, MCSALAD, MAC FRIES, MCFORTUNE COOKIE and MCPIZZA while the latter group is represented by the trade-marks MCSNACK, MCDINNER, MCBARBEQUE, POULET MCCROQUETTES, MAPLE MCCRISP, CHICKEN MCSWISS, MCCHEDDAR, MCNUGGETS, CHICKEN MCNUGGETS and CHICKEN MCNUGGETS SHANGHAI. Other of the first opponent's trade-marks are inherently distinctive in relation to the food products or restaurant services covered in the respective registrations, including the trade-marks BIG MAC, BIG MAC ATTACK, MCHAPPY DAY, BIG MACK'S, MCBOO, MCBLIMP, MCDRYER, MCSTOP, ATTACK A BIG MAC, MCQ, MCDO, PIERROT MCDO, COSMC, MCCLUB, MCFONDS, MCBOURSE, MCDRIVE, MCFAST LANE, MCD.L.T., MCMILLION, MCBIRTHDAY and MCMILLIONS. Finally, the first opponent has a group of marks possessing some inherent distinctiveness but covering wares and services unrelated to either food products or restaurant services, including the trade-marks: MCKIDS and MCKIDS & Design covering clothing, shoes and health and beauty products; MCDONALD’S PLAYLAND entertainment services; POULET MCCROQUETTES and CHICKEN MCNUGGETS as applied to toys; MCMATCH promotional game materials; MCFRANCHISE franchising services; MCTRADER trading cards; LITTLE MAC and DOUBLE MAC electric food cookers; MCBUCK, MCDOLLAR and MCMONEY as applied to imitation money; and MCJOBS covering the training of handicapped persons as restaurant employees.
With respect to the extent to which the trade-marks at issue have become known [ss. 6(5)(a)], the applicant's trade-mark MCSOLD had not become known in Canada as of his claimed date of first use, the material date in respect of the non-entitlement grounds. Further, the McKenna affidavit establishes that the applicant’s trade-mark MCSOLD has become known to a relatively minor extent in the area of Victoria, British Columbia in relation to real estate services. On the other hand, a number of the first opponent's trade-marks are very well known in Canada either in association with the operation of fast-food restaurants or in association with the food products sold in those restaurants. In particular, the opponents' evidence establishes that the trade-marks MCDONALD'S, BIG MAC, EGG MCMUFFIN, SAUSAGE MCMUFFIN, MCCHICKEN, CHICKEN MCNUGGETS and MCD.L.T. are very well known in Canada. However, the Beresford affidavit does not establish that such trade-marks as MACSUNDAE, LITTLE MAC, DOUBLE MAC, MCCONE, MCCOLA, MCNUT, MCDONUTS, MCPIZZA, MCLOBSTER or MCNOGG have become known to any extent in Canada.
The length of time that the trade-marks at issue have been in use [ss. 6(5)(b)] also favours the opponents in view of the use in Canada by the second opponent and licensees of the first opponent of the trade-marks MCDONALD'S since at least 1960, BIG MAC since 1968, EGG MCMUFFIN since at least 1976, SAUSAGE MCMUFFIN since 1984, MCCHICKEN since 1981, CHICKEN MCNUGGETS since 1983 and MCD.L.T. since 1985. In his affidavit, Mr. McKenna states that he has been identified by the nickname MCSOLD for several years and prior to the opponents’ adoption of their trade-mark EGG MCMUFFIN. However, the applicant has not shown that such activities constitute use of the mark MCSOLD as a trade-mark in association with the services covered in the present application within the scope of Section 4(2) of the Trade-marks Act. Rather, Mr. McKenna’s activities involving the use of his nickname prior to October of 1991 appear to have been limited to his sale of motor vehicles.
As for the respective wares and services of the parties [ss. 6(5)(c)], the applicant's “Services provided by persons duly authorized to act as agents in residential and commercial purchase and sale transactions, including without limiting the generality of such services, obtaining listings for real property and personal property, advertising any part of all of such property, introducing potential purchasers to such property, and all ancillary services” bear little similarity to any of the wares and services covered in the first opponent's registrations and pending applications. Likewise, the channels of trade [ss.6(5)(d)] associated with the wares and services covered in the respective registrations and pending applications of the first opponent and the channels of trade associated with the applicant's services covered in the present application differ.
As to the degree of resemblance between the trade-marks of the parties [ss. 6(5)(e)], the applicant's trade-mark MCSOLD bears some similarity both in appearance and in sounding to a number of the first opponent's "Mc" formative trade-marks in that the trade-marks commence with the element MC. On the other hand, the trade-marks at issue do not suggest the same ideas. While a number of the first opponent's marks suggest a name, a surname, or a food product, other of its trade-marks such as MCBOO, MCQ, MCJOBS, MCDRIVE, MCDO, MCCLUB, MCBLIMP, MCSTOP, MCDRYER, MCMATCH and McD.L.T. either suggest no idea or suggest ideas completely unrelated to the idea suggested by the applicant's trade-mark MCSOLD. On the other hand, there is at least some similarity in the ideas suggested by the applicant’s trade-mark and the opponents’ marks MCBUCK, MCMONEY, MCMILLION, MCFONDS, MCBOURSE and MCFRANCHISE, all of which vaguely suggest a connection with a sale or business transaction.
As a surrounding circumstance with respect to the issue of confusion, the opponents have relied upon the adoption and use of an alleged family of MC and MAC formative trade-marks. In view of the decision in McDonald's Corp. v. Yogi Yogurt Ltd., 66 C.P.R. (2d) 101, an opponent relying upon a family or series of trade-marks must evidence use of those marks in the marketplace. In the present case, and apart from the evidence of adoption by the first opponent of a number of MC formative trade-marks, the opponents have submitted evidence of significant use by the second opponent and licensees of the first opponent of the trade-marks MCDONALD'S in association with fast-food restaurant services and EGG MCMUFFIN, SAUSAGE MCMUFFIN, MCCHICKEN, CHICKEN MCNUGGETS, MCD.L.T., and to a lesser extent MCRIB, all as applied to food products. I am satisfied, therefore, that the opponents have established the existence of a family or series of trade-marks including the component MC followed by the name of a food product. However, the existence of such a family of marks does not mean that the opponents' protection for their MC formative marks necessarily extends beyond the area of food products and restaurant services. Indeed, in McDonald's Corp. et al. v. Coffee Hut Stores Ltd., 68 C.P.R. (3d) 168 (F.C.A.), at page 170, Hugesson, J.A. cited with approval the following comments of Mr. Justice Strayer in McDonald's Corp. et al. v. Silcorp Ltd./ Silcorp Ltée, 24 C.P.R. (3d) 207 concerning the opponents’ family of marks as follows:
Having regard to the Coffee Hut decision, supra, it is apparent that the existence of the opponents' family or series of marks is not a relevant factor with respect to the issue of confusion unless the trade-mark at issue comprises the prefix MC, or MAC, in combination with the name of an edible as applied to food products. I am therefore not convinced that the existence of the opponents' family of marks is a particularly relevant factor with respect to the issue of confusion in this opposition where the applicant's mark does not include the name of an edible and the applicant's services are unrelated to food products and restaurant services.
As a further surrounding circumstance with respect to the issue of confusion, the opponents sought to rely upon their evidence relating to the existence of an employee incentive program whereby more than Canadian 68,000 employees of the second opponent and licensees of the first opponent can purchase a range of goods which display one, or more, of the first opponent's trade-marks [para. 41, Beresford affidavit]. However, very few of the wares identified in the photocopy of the merchandise catalogue comprising exhibit JJ to the Beresford affidavit include the opponents’ “Mc” formative marks. As well, the goods are only available to employees of either the second opponent or licensees of the first opponent and not to the average consumer of the opponents' wares and services and no evidence has been furnished by the opponents as to the extent to which its Canadian employees purchase goods from the merchandise catalogue. As a result, this evidence is of little relevance to the issues in this opposition and, in particular, does not assist the opponents in establishing a reputation for the alleged family of “Mc” formative trade-marks extending beyond their food products and restaurant services.
As yet a further surrounding circumstance with respect to the issue of confusion, the opponents submitted evidence relating to the free distribution by the second opponent and the licensees of McDonald's Corporation of hand puppets, get well cards, greeting cards and stencils, as well as the “treat-of-the-week” distributed to children [para. 33, Beresford affidavit]. Further, promotional booklets to raise the safety consciousness of children have been distributed in Canada by the second opponent [para. 35, Beresford affidavit]. In paragraph 34 of his affidavit, Mr. Beresford also notes the following:
34. From time to time, various “McDonald’s” restaurants will conduct local programs or projects with a view to promoting the company and local “McDonald's” restaurants. “Mc” formative words are often featured in such promotions. Now produced, shown to me and marked Exhibit “AA” to this my affidavit is a photocopy of an entry form promoting, among other things, THE GREAT McRACE. Now produced, shown to me and marked Exhibit “BB” to this my affidavit is a photocopy of a flyer entitled “McNEWS”. Now produced, shown to me and marked collectively Exhibit “CC” to this my affidavit are photocopies of a McCALENDAR desk calendar and an advertisement therefor.
Even though the opponents have not provided any evidence as to the volume or dollar value of such premium distributions, their evidence does establish some measure of a reputation for the “Mc” formative trade-marks in association with booklets, flyers, calendars, and other printed materials.
In paragraphs 24 to 29 of the Beresford affidavit and the accompanying exhibits referred to in these paragraphs, the opponents have also submitted evidence of publicity, advertising and articles appearing in publications featuring the use of so-called “McLanguage”. Included in this evidence are reference to such terms as: “McMaking it”, “McAUTO”, “McWidens”, “McShortage”, “McProblems”, “McSneeze”, “McFortune”, “McBarge”, “McBlimp”, “mcunion”, “McMuseum” and “McHistory”. I would note that the photocopy of the storyboard comprising exhibit P is unreadable while no circulation figures in Canada are provided in the White affidavit for the majority of the United States publications referred to in paragraph 27 of the Beresford affidavit and they have therefore been ignored. While this evidence does not establish that the opponents have any proprietary rights in any of these terms as trade-marks or otherwise, it does increase the likelihood that the average person encountering a trade-mark including the formative “MC” in combination with another word or element might assume some connection with the opponents.
Having regard to the above and, in particular, to the differences between the applicant's services and the opponents' restaurant services and food products, as well as the other wares and services covered in the first opponent's registrations and pending applications, and considering further the differences in the potential channels of trade associated with the respective wares and services of the parties, and bearing in mind the decision of the Federal Court of Appeal in McDonald's Corp. et al. v. Coffee Hut Stores Ltd., referred to above, I have concluded that there would be no reasonable likelihood of confusion between the applicant's trade-mark MCSOLD as applied to the services covered in the present application and the trade-marks of the first opponent. I have therefore rejected the opponents' grounds of opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 28th DAY OF FEBRUARY, 1997.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.