McDonald’s Triumphant in “Mc” Trademark Dispute

Published on 7/25/2014
Categories: biodiesel, Intellectual Property, Trademark

An individual who wanted to trademark “BioMcDiesel” won’t be allowed to do so according to the Trademark Trial and Appeal Board, which ruled (McDonald’s Corp. v. Joseph, July 14, 2014, Bergsman, M.) that consumers would likely confuse the proposed biofuel mark with McDonald Corp.’s family of “Mc” trademarks.

The applicant, Joel Joseph, filed an intent-to-use application to register the trademark “BioMcDiesel,” in standard character form, for biodiesel fuel. McDonald’s opposed this registration for several reasons, including that “BioMcDiesel” could be construed as part of McDonald’s family of “Mc” formative marks and it had the “likelihood of confusion.” The applicant conceded that that “Mc” family of marks is famous and has been in use much longer than his application filing date.

The applicant’s mark, “BioMcDiesel” has the “Mc” formative in the middle of the mark with a generic term following it, which does not distinguish it enough from McDonald’s marks since its family of marks has such items as Chicken McNuggets, Egg McMuffin, and Sausage McMuffin.

The applicant’s biodiesel fuel is an alternative fuel for diesel engines or can be used as an additive to standard diesel fuel.  It can be made from used fryer grease, also known as yellow grease. McDonald’s is one of the largest suppliers of yellow grease and has received media publicity for its recycling programs. It promotes its sustainability programs, including its recycling efforts, on its website (McDonalds.com).

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