Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1261779
`01/24/2023
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`McDonald's Corporation
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/25/2023
`
`110 N CARPENTER STREET
`CHICAGO, IL 60607
`UNITED STATES
`
`JOHN A. CULLIS
`BARNES & THORNBURG LLP
`ONE NORTH WACKER DR.
`SUITE 4400
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: trademarks-ch@btlaw.com
`Secondary email(s): btmcdonalds@btlaw.com, jcullis@btlaw.com, olay-
`eni.odumosu@btlaw.com, valerie.matthews@btlaw.com, cor-
`rine.conway@btlaw.com, jeff.nicholas@btlaw.com
`3123571313
`
`Docket no.
`
`85529-347347
`
`Applicant information
`
`Application no.
`
`90757193
`
`01/24/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`09/27/2022
`
`Opposition period
`ends
`
`01/25/2023
`
`Yiwu Jusen Outdoor Products Co., Ltd.
`ROOM 201 UNIT 3, BUILDING 67,
`CHENGXIN 2ND AREA, FUTIAN SUBDI
`YIWU ZHEJIANG, 322000
`CHINA
`
`Goods/services affected by opposition
`
`Class 014. First Use: Apr 14, 2021 First Use In Commerce: Apr 14, 2021
`All goods and services in the class are opposed, namely: Bracelets; Cufflinks; Earrings; Jewelry;
`Watches; Body jewelry; Children's jewelry; Costume jewelry; Hair jewelry in the nature of jewelry for
`use in the hair; Imitation jewellery; Jewellery cases; Jewellery findings; Jewellery foot chains; Jewelry
`brooches; Key chains; Necklace and earring combinations that can be worn separately or as one
`piece; Necklaces; Pet jewelry; Rings; Tie clips
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`1426681
`
`Register
`
`Principal
`
`Registration date
`
`01/27/1987
`
`Application date
`
`09/30/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALDS
`
`NONE
`
`Class 029. First use: First Use: 1948 First Use In Commerce: 1948
`CHICKEN, HASHBROWN POTOTOES, PREPARED EGGS, MILK, FRESH
`GARDEN SALADS AND PROCESSED INGREDIENTS THEREOF, FOR CON-
`SUMPTION ON OR OFF THE PREMISES
`Class 030. First use: First Use: 1948 First Use In Commerce: 1948
`HAMBURGER AND CHEESEBURGER SANDWICHES AND SPECIAL COM-
`BINATION SANDWICHES FEATURING HAMBURGERS AND CHEESEBUR-
`GERS, [ ROAST BEEF SANDWICHES, HOT CHOCOLATE, PREPARED CAT-
`SUP, COOKIES, ] HOTCAKES, TABLE SYRUP, FRUIT PIES, SPECIAL COM-
`BINATION EGG SANDWICHES, TEA, [ COFFEE, SOFT SERVE ICE CREAM
`OR ICE CREAM SUBSTITUTE, ICE CREAM OR ICE CREAM SUBSTITUTE
`SUNDAES, SOFT SERVE ICE MILK, SOFT SERVE ICE MILK SUNDAES,
`DONUTS, ] PASTRIES, CHICKEN SANDWICHES, PORK SANDWICHES, [
`BISCUIT AND HAM SANDWICHES ] AND BISCUIT AND SAUSAGE SAND-
`WICHES FOR CONSUMPTION ON OR OFF THE PREMISES
`Class 032. First use: First Use: 1948 First Use In Commerce: 1948
`CARBONATED AND NON-CARBONATED SOFT DRINKS [ AND FRUIT
`JUICES ] FOR CONSUMPTION ON OR OFF THE PREMISES
`
`U.S. registration
`no.
`
`0743572
`
`Register
`
`Principal
`
`Registration date
`
`01/08/1963
`
`Application date
`
`05/04/1961
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALD'S
`
`NONE
`
`Class 100. First use: First Use: Dec 1948 First Use In Commerce: Dec 1948
`Drive-In Restaurant Services
`
`U.S. registration
`no.
`
`1440655
`
`Register
`
`Principal
`
`Registration date
`
`05/26/1987
`
`Word mark
`
`MCDONALDS
`
`Application date
`
`09/30/1982
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: Sep 1973 First Use In Commerce: Sep 1973
`MEN'S CLOTHING, WOMEN'S CLOTHING AND CHILDREN'S CLOTHING,
`NAMELY, T-SHIRTS, [ NIGHT SHIRTS, ] HATS, [ SWEATERS ][, SHORTS, ]
`ATHLETIC SHIRTS, [ VESTS, ] SWEAT SHIRTS AND JERSEYS
`
`U.S. registration
`no.
`
`3074164
`
`Register
`
`Principal
`
`Registration date
`
`03/28/2006
`
`Application date
`
`06/13/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALD'S ALL AMERICAN
`
`NONE
`
`Class 041. First use: First Use: Apr 30, 1978 First Use In Commerce: Apr 30,
`1978
`ENTERTAINMENT SERVICES NAMELY CONDUCTING ATHLETIC EVENTS
`IN THE NATURE OF BASKETBALL AND SOCCER CLINICS AND COMPETI-
`TIONS
`
`U.S. registration
`no.
`
`1037773
`
`Register
`
`Principal
`
`Registration date
`
`04/13/1976
`
`Word mark
`
`Design mark
`
`MCD
`
`Application date
`
`07/31/1975
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: Jan 1975 First Use In Commerce: Jan 1975
`CONCENTRATED ALL PURPOSE CLEANER, SANITIZER-DETERGENT,
`DEEP FAT FRYER BOIL-OUT COMPOUND, STAINLESS STEEL CLEANER-
`DRESSING AND CHEMICAL CLEANER FOR GRILLS
`
`U.S. registration
`no.
`
`3201441
`
`Register
`
`Principal
`
`Registration date
`
`01/23/2007
`
`Application date
`
`03/02/2006
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`MCCAFE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 030. First use: First Use: May 2, 2001 First Use In Commerce: May 2,
`2001
`BEVERAGES MADE OF COFFEE BEANS, HOT CHOCOLATE, PASTRIES,
`MUFFINS, CAKES, COOKIES, BISCUITS AND SANDWICHES
`
`U.S. registration
`no.
`
`3212858
`
`Register
`
`Principal
`
`Registration date
`
`02/27/2007
`
`Word mark
`
`Design mark
`
`MCCAFE
`
`Application date
`
`03/02/2006
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 029. First use: First Use: May 2, 2001 First Use In Commerce: May 2,
`2001
`MILK-BASED BEVERAGES CONTAINING COFFEE, FRUIT AND FRUIT
`JUICE
`
`U.S. registration
`no.
`
`1065885
`
`Register
`
`Principal
`
`Registration date
`
`05/17/1977
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`MC CHICKEN
`
`NONE
`
`Application date
`
`02/05/1976
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`Class 029. First use: First Use: Jun 16, 1975 First Use In Commerce: Jun 16,
`1975
`COOKED CHICKEN FOR CONSUMPTION ON OR OFF THE PREMISES
`
`U.S. registration
`no.
`
`1266500
`
`Register
`
`Principal
`
`Registration date
`
`02/07/1984
`
`Application date
`
`06/21/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MC DOUBLE
`
`NONE
`
`Class 030. First use: First Use: Jun 30, 1977 First Use In Commerce: Jun 30,
`1977
`a Sandwich for Consumption On or Off Premises
`
`U.S. registration
`no.
`
`1315979
`
`Register
`
`Principal
`
`Registration date
`
`01/22/1985
`
`Application date
`
`06/11/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCRIB
`
`NONE
`
`Class 030. First use: First Use: Jun 30, 1981 First Use In Commerce: Jun 30,
`1981
`a Sandwich for Consumption On or Off the Premises
`
`U.S. registration
`no.
`
`1369360
`
`Register
`
`Principal
`
`Registration date
`
`11/05/1985
`
`Application date
`
`02/13/1984
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCMUFFIN
`
`NONE
`
`Class 030. First use: First Use: May 1983 First Use In Commerce: May 1983
`BREAKFAST FOOD COMBINATION SANDWICH FOR CONSUMPTION ON
`OR OFF THE PREMISES
`
`U.S. registration
`no.
`
`4071074
`
`Register
`
`Principal
`
`Registration date
`
`12/13/2011
`
`Word mark
`
`Design mark
`
`MCNUGGET
`
`Application date
`
`09/09/2009
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 029. First use: First Use: May 31, 2011 First Use In Commerce: May 31,
`2011
`PRODUCTS MADE OF POULTRY
`
`U.S. registration
`no.
`
`2678272
`
`Register
`
`Principal
`
`Registration date
`
`01/21/2003
`
`Application date
`
`03/15/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCGRIDDLES
`
`NONE
`
`Class 030. First use: First Use: Oct 2000 First Use In Commerce: Oct 2000
`SANDWICHES CONSISTING OF HOT CAKES, BEEF, CHICKEN, PORK, AND
`EGG AND CHEESE PRODUCTS
`
`U.S. registration
`no.
`
`2805110
`
`Register
`
`Principal
`
`Registration date
`
`01/13/2004
`
`Application date
`
`12/19/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCFLURRY
`
`NONE
`
`Class 030. First use: First Use: Oct 31, 1997 First Use In Commerce: Oct 31,
`1997
`frozen confections
`
`U.S. registration
`no.
`
`2805109
`
`Register
`
`Principal
`
`Registration date
`
`01/13/2004
`
`Application date
`
`12/19/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCFLURRY
`
`NONE
`
`Class 030. First use: First Use: Oct 31, 1997 First Use In Commerce: Oct 31,
`1997
`dairy based dessert products namely ice cream and frozen confections
`
`U.S. registration
`no.
`
`5241953
`
`Register
`
`Principal
`
`Registration date
`
`07/11/2017
`
`Application date
`
`04/15/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`MCDELIVERY
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 043. First use: First Use: May 17, 2017 First Use In Commerce: May 17,
`2017
`SERVICES FOR PROVIDING FOOD AND DRINK; RESTAURANT SERVICES;
`OPERATING RESTAURANTS AND OTHER ESTABLISHMENTS OR FACILIT-
`IES ENGAGED IN PROVIDING FOOD AND DRINK PREPARED FOR CON-
`SUMPTION AND SALE OF CARRY-OUT OR TAKE AWAY FOODS AND
`DRINKS
`
`U.S. registration
`no.
`
`5501789
`
`Register
`
`Principal
`
`Registration date
`
`06/26/2018
`
`Word mark
`
`Design mark
`
`MCPLAY
`
`Application date
`
`11/06/2017
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: May 1, 2013 First Use In Commerce: May 1,
`2013
`Downloadable mobile applications for playing computer game programs
`
`U.S. registration
`no.
`
`1947099
`
`Register
`
`Principal
`
`Registration date
`
`01/09/1996
`
`Word mark
`
`Design mark
`
`MC
`
`Application date
`
`08/08/1991
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`Attachments
`
`NONE
`
`Class 042. First use: First Use: Jun 14, 1995 First Use In Commerce: Jun 14,
`1995
`restaurant services
`
`78135408#TMSN.png( bytes )
`73059270#TMSN.png( bytes )
`78827670#TMSN.png( bytes )
`78827644#TMSN.png( bytes )
`86598144#TMSN.png( bytes )
`87673117#TMSN.png( bytes )
`Mcmrsoul NOO.pdf(192953 bytes )
`
`Signature
`
`/John A. Cullis/
`
`Name
`
`Date
`
`JOHN A. CULLIS
`
`01/24/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`In the Matter of:
`Application Serial No. 90/757,193
`
`Published in the Official Gazette
` September 27, 2022
`
`
`McDONALD’S CORPORATION,
`
`
`
`
`
`Opposer,
`
`
`v.
`
`YIWU JUSEN OUTDOOR PRODUCTS
`CO., LTD.,
`
`Applicant.
`
`
`
`
`
`Mark:
`
`
`
`
`
`
`Mcmrsoul
`
`Opposition No.:
`
`

`

`
`
`NOTICE OF OPPOSITION
`
`Opposer, McDonald’s Corporation, a corporation organized and existing under the laws
`
`of the State of Delaware, with offices at 110 N. Carpenter Street, Chicago, Illinois 60607, believes
`
`that it will be damaged by registration of the mark, Mcmrsoul, in International Class 14 as shown
`
`in Application Serial No. 90/757,193 filed by Applicant, Yiwu Jusen Outdoor Products Co., Ltd.,
`
`a company having an address located at Room 201 Unit 3, Building 67, Chengxin 2nd Area,
`
`Futian Subdi Yiwu zhejiang CHINA 322000, and hereby opposes the same and requests that
`
`registration to Applicant be refused.
`
`The grounds for this Notice of Opposition are as follows:
`
`1.
`
`Applicant is seeking to register the mark Mcmrsoul for “Bracelets; Cufflinks;
`
`Earrings; Jewelry; Watches; Body jewelry; Children's jewelry; Costume jewelry; Hair jewelry in
`
`the nature of jewelry for use in the hair; Imitation jewellery; Jewellery cases; Jewellery findings;
`
`Jewellery foot chains; Jewelry brooches; Key chains; Necklace and earring combinations that can
`
`be worn separately or as one piece; Necklaces; Pet jewelry; Rings; Tie clips” in International
`
`Class 14. This application is based on the Applicant’s alleged use the mark in accordance with 15
`
`U.S.C. § 1051(a).
`
`2.
`
`3.
`
`This Notice of Opposition is being timely submitted.
`
`Since 1955, Opposer has been in the business of developing, operating,
`
`franchising, and servicing an extensive system of restaurants that prepare, package, and sell a
`
`wide variety of high quality, quickly prepared, modestly priced foods. Opposer has carried on this
`
`business in the United States and throughout the world. Opposer and its subsidiaries now operate
`
`or license thousands of restaurants throughout the world, including nearly 14,000 restaurants in
`
`the United States.
`
`
`
`2
`
`

`

`4.
`
`In connection with this business, Opposer has, for decades, extensively used its
`
`“Mc” family of marks, which includes “Mc” used with various generic or descriptive terms, to
`
`advertise, promote, and sell a variety of food products and restaurant services. Opposer has also
`
`used its family of “Mc” marks on a variety of goods and services that are not related to food
`
`products or restaurant services, such as toys; charitable services; educational services;
`
`entertainment services; and men’s, women’s, and children’s clothing, namely, t-shirts, hats,
`
`athletic shirts, sweatshirts, and jerseys.
`
`5.
`
`Opposer’s extensive advertising and promotion of its various goods and services
`
`under its family of “Mc” marks features the use of television and print advertising, radio,
`
`newspaper and magazine advertising, outdoor billboard and signage, Internet advertising, mobile
`
`advertising and direct mail, which are directed to and reach the public in both local and nationwide
`
`markets. In addition, Opposer uses its “Mc” family of marks on food product packaging and
`
`point-of-purchase advertising. In sum, Opposer uses its family of “Mc” marks in connection with
`
`products similar or related to those that Applicant offers under the Mcmrsoul mark.
`
`6.
`
`Opposer owns numerous federal registrations for its family of “Mc” marks. These
`
`registrations include, but are not limited to, the following:
`
`MARK NAME
`
`REG. NO. REG. DATE
`
`GOODS/SERVICES
`
`1. McDONALD’S
`
`1,426,681
`
`01/27/1987
`
`
`
`3
`
`Chicken, hashbrown potatoes,
`prepared eggs, milk, fresh
`garden salads and processed
`ingredients thereof, for
`consumption on or off the
`premises; Hamburger and
`cheeseburger sandwiches and
`special combination sandwiches
`featuring hamburgers and
`cheeseburgers; hotcakes, table
`syrup, fruit pies, special
`combination egg sandwiches,
`
`

`

`tea, pastries, chicken
`sandwiches, pork sandwiches,
`and biscuit and sausage
`sandwiches for consumption on
`or off the premises; carbonated
`and non- carbonated soft drinks
`for consumption on or off the
`premises; Carbonated and non-
`carbonated soft drinks for
`consumption on or off the
`premises
`Drive-in restaurant services
`
`Men’s, women’s and children’s
`clothing, namely, t-shirts, hats,
`athletic shirts, sweatshirts and
`jerseys
`Entertainment services, namely,
`conducting athletic events in the
`nature of basketball and soccer
`clinics and competitions
`Concentrated all-purpose
`cleaner, sanitizer-detergent,
`deep fat fryer boil-out
`compound, stainless steel
`cleaner-dressing and chemical
`cleaner for grills
`Beverages made of coffee
`beans, hot chocolate, pastries,
`muffins, cakes, cookies,
`biscuits, and sandwiches
`Milk-based beverages
`containing coffee, fruit and fruit
`juice
`Cooked chicken for
`consumption on or off the
`premises
`A sandwich for consumption on
`or off premises
`A sandwich for consumption on
`or off premises
`Breakfast food combination
`sandwich for consumption on or
`off the premises
`
`2. McDONALD’S
`
`743,572
`
`01/08/1963
`
`3. McDONALD’S
`
`1,440,655
`
`05/26/1997
`
`4. McDONALD’S
`ALL
`AMERICAN
`
`3,074,164
`
`03/28/2006
`
`5. McD (Stylized)
`
`1,037,773
`
`04/13/1976
`
`6. McCAFE
`
`3,201,441
`
`01/23/2007
`
`7. McCAFE
`
`3,212,858
`
`02/27/2007
`
`8. McCHICKEN
`
`1,065,885
`
`05/17/1977
`
`9. McDOUBLE
`
`1,266,500
`
`02/07/1984
`
`10. McRIB
`
`1,315,979
`
`01/22/1985
`
`11. McMUFFIN
`
`1,369,360
`
`11/05/1985
`
`
`
`4
`
`

`

`12. McNUGGET
`
`4,071,074
`
`12/13/2011
`
`Products made of poultry
`
`13. McGRIDDLES
`
`2,678,272
`
`01/21/2003
`
`14. McFLURRY
`
`2,805,110
`
`01/13/2004
`
`15. McFLURRY
`
`2,805,109
`
`01/13/2004
`
`16. McDELIVERY
`
`5,241,953
`
`07/11/2017
`
`17. McPLAY
`
`5,501789
`
`06/26/18
`
`19. Mc
`
`1,947,099
`
`01/09/1996
`
`
`
`Sandwiches consisting of hot
`cakes, beef, chicken, pork, and
`egg and cheese products
`Frozen confections
`
`Dairy based dessert products
`namely ice cream and frozen
`confections
`Services for providing food and
`drink; restaurant services
`Operating restaurants and other
`establishments
`Downloadable mobile
`applications for playing
`computer game programs
`Restaurant services
`
`Each of the aforesaid registrations is valid, subsisting, and in full force and effect.
`
`Furthermore, Opposer applied to register and commenced use of the above-listed marks in
`
`association with their respective designated goods prior to the filing date of the subject
`
`application, namely June 6, 2021, and the alleged first use dates of April 14, 2021.
`
`7.
`
`Each of the above-listed registrations is at least prima facie evidence of the
`
`validity of each registration, of Opposer’s ownership thereof, and of Opposer’s exclusive right to
`
`use such registered marks on the goods or services set forth in the registrations.
`
`8.
`
`Through Opposer’s extensive and continuous use of its family of “Mc” marks, the
`
`public has come to recognize marks combining “Mc” with a common word for a wide variety of
`
`goods and services as being uniquely associated with Opposer. Opposer has developed, at great
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`effort and expense, exceedingly valuable goodwill with respect to the specific marks listed above,
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`as well as for its entire “Mc” family of marks. Opposer’s “Mc” family of marks is famous and
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`was famous long prior to the filing date of the subject application filed by Applicant.
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`9.
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`Both the Trademark Trial and Appeal Board and the Federal Circuit have long
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`recognized the validity of Opposer’s rights to its famous “Mc” family of marks. McDonald’s Corp.
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`v. McClain, 37 U.S.P.Q.2d 1274, 1276 (TTAB 1995) (“The family of [McDonald's] marks has
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`been recognized by this Board and by the courts”); McDonald’s Corp. v. McKinley, 13 U.S.P.Q.2d
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`1895, 1899 (TTAB 1989) (“In view of opposer’s extensive evidence of use and promotion of
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`marks having a ‘Mc’ or ‘Mac’ portion, there can be no doubt that opposer has established that its
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`marks comprise a family”); McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d 1268 at *7
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`(TTAB 2014) (“Based on the record before us, . . . Opposer has established that, based on its use
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`and promotion of its family of marks, Opposer continues to own a family of marks consisting of
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`the prefix ‘Mc’ combined either with a generic term or a descriptive term.”); McDonald’s Corp.
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`v. McBagel’s, Inc., 649 F. Supp. 1268, 1272 (S.D.N.Y. 1986) (finding that McDonald’s “owns a
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`‘family of marks’ both registered and unregistered, whose common characteristic is the use of
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`“Mc” or ‘Mac’ as a formative”); J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
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`1463 (Fed. Cir. 1991) (recognizing “McDonald’s specific family of marks wherein the prefix ‘Mc’
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`is used with generic food names to create fanciful words.”).
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`10.
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`Despite Opposer’s long-standing prior rights in its “Mc” family of marks for
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`restaurant services, food products, and a wide variety of other goods and services, on June 6,
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`2021, Applicant filed its application to register the Mcmrsoul mark for “Bracelets; Cufflinks;
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`Earrings; Jewelry; Watches; Body jewelry; Children's jewelry; Costume jewelry; Hair jewelry in
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`the nature of jewelry for use in the hair; Imitation jewellery; Jewellery cases; Jewellery findings;
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`Jewellery foot chains; Jewelry brooches; Key chains; Necklace and earring combinations that can
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`be worn separately or as one piece; Necklaces; Pet jewelry; Rings; Tie clips” in International
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`Class 14. Given Opposer’s widespread advertising and promotion of its “Mc” family of marks,
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`Applicant’s selection and use of the Mcmrsoul mark, which incorporates the “Mc” prefix followed
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`by the term “mrsoul”, suggests an intent by Applicant to trade off the goodwill and recognition
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`associated with Opposer’s trademarks.
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`11.
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`Potential purchasers, upon seeing the dominant “Mc” in the Mcmrsoul mark, are
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`likely to mistakenly believe that the goods offered thereunder originated or are connected with, or
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`are sponsored, licensed, or approved by, Opposer. Thus, the registration and use by Applicant of
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`the Mcmrsoul mark in connection with its goods, for all channels of trade and all types of
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`prospective purchasers, is likely to cause confusion, mistake, or deception in violation of 15
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`U.S.C. § 1052(d).
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`12.
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`Issuance of the registration to Applicant for the Mcmrsoul mark will also diminish
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`and dilute the distinctive quality of Opposer’s rights in its famous family of “Mc” marks, and will
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`blur and otherwise impair the distinctiveness of this family of marks in violation of 15 U.S.C. §
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`1125(c).
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`13.
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`If the registration is issued to Applicant for the Mcmrsoul mark, the confusion
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`with Opposer’s marks would result in damage and injury to Opposer and the public. Registration
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`of the Mcmrsoul mark would also give Applicant an unqualified right to wrongfully appropriate
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`Opposer’s valuable goodwill and reputation associated with Opposer’s marks; to benefit from the
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`likely confusion among purchasers led to believe that goods of Applicant are related in some
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`fashion to Opposer; to dilute the distinctiveness of Opposer’s marks and harm its goodwill and
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`reputation associated with its marks; to tarnish Opposer’s good name by offering goods not subject
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`to Opposer’s quality controls; and to restrict the natural growth of Opposer’s “Mc” family of
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`marks.
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`WHEREFORE, Opposer requests that this Opposition be sustained and Application
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`Serial No. 90/757,193 be refused registration.
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`The requisite filing fee of $600.00 and any additional fees related to this matter are being
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`charged to a MasterCard credit card concurrently with this filing.
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`Date: January 24, 2023
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`Respectfully submitted,
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`McDONALD’S CORPORATION
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`By: /John A. Cullis/
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`John A. Cullis
`Lawrence E. James, Jr.
`Barnes & Thornburg LLP
`One North Wacker Drive, Suite 4400
`Chicago, IL 60606
`T: (312) 357-1313
`F: (312) 2759-5646
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`CERTIFICATE OF TRANSMISSION
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`I hereby certify that the foregoing NOTICE OF OPPOSITION is being electronically
`transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) at
`http://estta.uspto.gov/ on the date noted below:
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`Date:
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`January 24, 2023
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`By:
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` /John A. Cullis/
`One of the Attorneys for
`Opposer, McDonald’s
`Corporation
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