McBummer: Thoughts on the McFamily of Trademarks McConcept
I’ve written before about the odd cultural juxtaposition of McDonald’s and the Muslim world. It turns out I don’t know the half of it! Now McDonald’s has lost its effort to extend its monopoly of “Mc”-family trademarks in Malaysia, which bucked the colonialist-lackey trend of extending American-style “McFamily Values” to the rest of the globe:
The Oak Brook-based fast-food giant took offense at McCurry Restaurant, a Malaysian joint that maintains its name is an abbreviation for Malaysian Chicken Curry. McDonald’s considers the “Mc” prefix to be its intellectual property.
The company long ago established that premise in the United States, successfully forcing two restaurant companies, McBagel’s and the vegetarian McDharma’s, to change their names. . . .
But Malaysia’s Appeal Court said Wednesday that McDonald’s can’t claim an exclusive right to the “Mc” prefix, overturning a 2006 court ruling. The Appeal Court ruled there was no proof that McCurry misrepresented itself to the public and confused consumers, Malaysia’s New Straits Times reported. Besides, McCurry serves Indian food, the Appeal Court said.
The first time I heard of this concept I was astonished, although it does make perfect sense from a brand owner point of view. But it really does amount to a monopoly of semiotic real estate:
A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods. . . . Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991). A suffix, prefix or syllable will not qualify for “family of marks” status if is, itself, merely descriptive. Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387 (7th Cir. 1992). By all indications this doctrine was recognized in dictum for the first time in U.S. Plywood Corp. v. Koveron Korporation, 288 F.2d 924 (Cust. & Pat.App. 1961) and first applied, albeit not by name, in Procter & Gamble Co. v. Conway, 57 C.C.P.A. 865, 419 F.2d 1332 (Cust. & Pat.App. 1970), wherein it was held that MR. STAIN was likely to be confused with MR. CLEAN on the sole basis of the “courtesy” of it all. The “family” argument, as enunciated by the courtiers of his shiny, sparkling Misterness, went as follows (ellipses omitted):
The mark MR. CLEAN and each of Opposer’s other marks consist of a courtesy title (MR., MRS., Lady, (MASTER)) coupled with a word having a significance associated with cleaning (CLEAN, CLEAR, SHEEN). The combination of a word associated with cleaning with a courtesy title and particularly with a courtesy title MR. or MISTER is wholly and entirely arbitrary in the field of cleaning products and obviously it is the courtesy title which makes the mark distinctive. It is the dominant portion of the mark.
Thus, the combination of the courtesy title MISTER with the word STAIN, wherein the MISTER portion of the mark is wholly and entirely arbitrary, is calculated to cause confusion in trade and to lead the purchasing public to believe that MISTER STAIN in another product of the manufacturer of MR. CLEAN, MR. CLEAR, MR. SHEEN, MRS. CLEAN, LADY CLEAN and MASTER-KLEAN, or is in some way sponsored by this Opposer. . .
[A]ppellee acted at its peril when, with the world to choose from in selecting a name for its goods, it took the courtesy title long in priority used by appellant and coupled it with a word having a relationship to cleaning, or a state of cleanliness, for its trademark.
A clean win for the big man. It didn’t carry the day in Malaysia, however.
So, yes, the “family of marks” argument is wholly consistent with brand protection, especially as brand equity accretes and commercial demands result in a mark holder “leveraging” that equity by extending the line associated with the mark, or at least with those familial traits.
But this family way was clearly an expansion of trademark rights into the once-feared land of “rights in gross.” Where the offspring in trademark families are afforded rights before they’re even born, you don’t ever have to use “McLikelihood” or “McConfusion” to sue McColeman or anyone else to sue for McFringement and win.
On the other hand, to paraphrase the panel in the Mr. Clean case, who told you to go Mc things up for yourself?
John Welch said, a long time ago: “The ‘family of marks’ doctrine is often invoked by hopeful Section 2(d) opposers [to registration of trademarks at the Patent and Trademark Office, but its applicability is almost always rejected by the Board.”