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).
Some of the over 14,000 McDonald’s in the United States have been sharing locations with gas stations since 1993, with some stations selling biodiesel fuel. The company identified seven third-party registrations for marks for goods including gasoline and/or diesel fuel and restaurant and/or convenience store services, as evidence that restaurant services and diesel fuel may emanate from the same source.
Since the applicant intends to offer biodiesel fuel to retail gasoline service stations and promote the fuel to consumers through a variety of advertising methods using the “BioMcDiesel” mark similar to McDonald’s, it is likely that consumers could make an association between the biodiesel fuel and McDonald’s restaurant services and related food products.
The Board found that there is a likelihood of confusion and the newcomer “has the clear opportunity, if not the obligation, to avoid confusion with well-known marks of others.”
By: Ken McLaughlin, Attorney
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