Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1284108
`05/10/2023
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`McDonald's Corporation
`
`Corporation
`
`Citizenship
`
`Delaware
`
`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,
`lee.james@btlaw.com, olayeni.odumosu@btlaw.com, valer-
`ie.matthews@btlaw.com, corrine.conway@btlaw.com, jeff.nicholas@btlaw.com
`3123571313
`
`Docket no.
`
`85529-364845
`
`Applicant information
`
`Application no.
`
`97283033
`
`Opposition filing
`date
`
`Applicant
`
`05/10/2023
`
`Terrell, Jaymie
`2714 FORT BAKER
`WASHINGTON, DC 20020
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`04/11/2023
`
`Opposition period
`ends
`
`05/11/2023
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Clothing, namely, hats, pants, shirts, shorts,
`skirts, dresses, scarves, bottoms as clothing, sweatsuits, hoodies, coats, sweatshirts, underwear,
`swimwear, headwear, tops as clothing, shoes, footwear, and socks
`
`Applicant information
`
`Application no.
`
`97264215
`
`Opposition filing
`date
`
`Applicant
`
`05/10/2023
`
`Terrell, Jaymie
`2714 FORT BAKER
`
`Publication date
`
`04/11/2023
`
`Opposition period
`ends
`
`05/11/2023
`
`

`

`WASHINGTON, DC 20020
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Clothing, namely, hats, pants, shirts, shorts,
`skirts, dresses, scarves, bottoms as clothing, sweatsuits, hoodies, coats, sweatshirts, underwear,
`swimwear, headwear, tops as clothing, shoes, footwear, and socks
`
`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
`
`Word mark
`
`Design mark
`
`MCDONALD'S
`
`Application date
`
`05/04/1961
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`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
`
`Application date
`
`09/30/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALDS
`
`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
`
`Application date
`
`07/31/1975
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCD
`
`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
`
`Application date
`
`03/02/2006
`
`

`

`Register
`
`Principal
`
`Registration date
`
`01/23/2007
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCCAFE
`
`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
`
`Application date
`
`03/02/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCCAFE
`
`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
`
`Application date
`
`02/05/1976
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MC CHICKEN
`
`NONE
`
`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
`
`Application date
`
`09/09/2009
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCNUGGET
`
`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
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`MCGRIDDLES
`
`NONE
`
`Application date
`
`03/15/2002
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`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
`
`Description of
`mark
`
`Goods/services
`
`MCDELIVERY
`
`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
`
`Application date
`
`11/06/2017
`
`

`

`Registration date
`
`06/26/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCPLAY
`
`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
`
`Application date
`
`08/08/1991
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MC
`
`NONE
`
`Class 042. First use: First Use: Jun 14, 1995 First Use In Commerce: Jun 14,
`1995
`restaurant services
`
`U.S. registration
`no.
`
`4568939
`
`Register
`
`Principal
`
`Registration date
`
`07/15/2014
`
`Application date
`
`09/18/2012
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`The mark consists of arch logo.
`
`Class 030. First use: First Use: Jan 20, 2014 First Use In Commerce: Jan 20,
`2014
`GROUND AND WHOLE BEAN COFFEE
`
`U.S. registration
`no.
`
`3467606
`
`Register
`
`Principal
`
`Registration date
`
`07/15/2008
`
`Application date
`
`12/03/2007
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`The mark consists of ARCHES.
`
`Class 020. First use: First Use: Dec 30, 1991 First Use In Commerce: Dec 30,
`1991
`DRINKING STRAWS
`
`U.S. registration
`
`5422046
`
`Application date
`
`05/31/2017
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`03/13/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`The mark consists of the stylized letter "M" in the form of Arches.
`
`Class 008. First use: First Use: Nov 8, 1984 First Use In Commerce: Nov 8,
`1984
`EATING UTENSILS, NAMELY, KNIVES, FORKS AND SPOONS
`
`U.S. registration
`no.
`
`2393485
`
`Register
`
`Principal
`
`Registration date
`
`10/10/2000
`
`Application date
`
`10/26/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 025. First use: First Use: Oct 1968 First Use In Commerce: Oct 1968
`Men's, women's and children's clothing, namely, coats, jackets, shirts, ties,
`sweaters, sweatshirts, blouses, jerseys, vests, uniforms and aprons
`
`U.S. registration
`no.
`
`1592293
`
`Register
`
`Principal
`
`Registration date
`
`04/17/1990
`
`Application date
`
`09/06/1989
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`THE DRAWING COMPRISES A STYLIZED REPRESENTATION OF THE LET-
`TER "M", AND A STYLIZED REPRESENTATION OF AN ARCH.
`
`Class 035. First use: First Use: 1955 First Use In Commerce: 1955
`FRANCHISE SERVICES NAMELY, OFFERING TECHNICAL ASSISTANCE IN
`THE ESTABLISHMENT AND/OR OPERATIONS OF RESTAURANTS
`
`U.S. registration
`no.
`
`0893440
`
`Register
`
`Principal
`
`Registration date
`
`06/23/1970
`
`Application date
`
`11/18/1968
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 100. First use: First Use: Oct 21, 1968 First Use In Commerce: Oct 21,
`1968
`
`

`

`RESTAURANT SERVICES
`
`U.S. registration
`no.
`
`0992868
`
`Register
`
`Principal
`
`Registration date
`
`09/10/1974
`
`Application date
`
`09/19/1973
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 024. First use: First Use: Mar 1973 First Use In Commerce: Mar 1973
`TOWELS
`
`U.S. registration
`no.
`
`1753026
`
`Register
`
`Principal
`
`Registration date
`
`02/16/1993
`
`Application date
`
`05/21/1992
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M MCDONALD'S
`
`NONE
`
`Class 042. First use: First Use: Apr 1970 First Use In Commerce: Apr 1970
`restaurant services
`
`U.S. registration
`no.
`
`2709442
`
`Register
`
`Principal
`
`Registration date
`
`04/22/2003
`
`Application date
`
`03/15/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 043. First use: First Use: Oct 31, 1968 First Use In Commerce: Oct 31,
`1968
`RESTAURANT SERVICES
`
`U.S. registration
`no.
`
`2895568
`
`Register
`
`Principal
`
`Registration date
`
`10/19/2004
`
`Application date
`
`07/15/2003
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`M
`
`THE MARK CONSISTS OF A STYLIZED YELLOW "M" FORMING A DOUBLE
`ARCH DESIGN ON A RED BACKGROUND.
`
`Goods/services
`
`Class 043. First use: First Use: Oct 31, 1968 First Use In Commerce: Oct 31,
`
`

`

`1968
`RESTAURANT SERVICES
`
`U.S. registration
`no.
`
`1061031
`
`Register
`
`Principal
`
`Registration date
`
`03/08/1977
`
`Application date
`
`07/14/1976
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALD'S M
`
`NONE
`
`Class 042. First use: First Use: Oct 21, 1968 First Use In Commerce: Oct 21,
`1968
`RESTAURANT SERVICES
`
`U.S. registration
`no.
`
`1631967
`
`Register
`
`Principal
`
`Registration date
`
`01/15/1991
`
`Application date
`
`02/05/1990
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MCDONALD'S
`
`NONE
`
`Class 042. First use: First Use: Jul 1984 First Use In Commerce: Jul 1984
`restaurant services
`
`U.S. registration
`no.
`
`1287408
`
`Register
`
`Principal
`
`Registration date
`
`07/24/1984
`
`Application date
`
`09/30/1982
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M MCDONALDS
`
`NONE
`
`Class 042. First use: First Use: Apr 1970 First Use In Commerce: Apr 1970
`Restaurant Services
`
`U.S. registration
`no.
`
`1381652
`
`Register
`
`Principal
`
`Registration date
`
`02/04/1986
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`MCDONALD'S M
`
`NONE
`
`Application date
`
`04/29/1985
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`Class 029. First use: First Use: Sep 1983 First Use In Commerce: Sep 1983
`[PREPARED EGGS, PREPARED CHICKEN ENTREES, MILK, FRIED POTA-
`TOES AND FRESH SALADS, ALL FOR CONSUMPTION ON OR OFF THE
`PREMISES]
`Class 030. First use: First Use: Sep 1983 First Use In Commerce: Sep 1983
`[ SANDWICHES AND HAMBURGER SANDWICHES, PANCAKES, FRUIT
`PIES, COOKIES, CROUTONS, PASTRIES, DONUTS, ICE CREAM, ICE
`CREAM SUNDAES, KETCHUP AND ] SAUCES EXCEPT CRANBERRY
`SAUCE AND APPLESAUCE, TABLE SYRUP [, TEA, COFFEE, HOT CHOCOL-
`ATE AND SHAKES ] ALL FOR CONSUMPTION ON OR OFF THE PREMISES
`Class 032. First use: First Use: Sep 1983 First Use In Commerce: Sep 1983
`[ FRUIT JUICES CONTAINING WATER AND CARBONATED AND NON-
`CARBONATED SOFT DRINKS FOR CONSUMPTION ON OR OFF THE
`PREMISES ]
`
`U.S. registration
`no.
`
`1505016
`
`Register
`
`Principal
`
`Registration date
`
`09/20/1988
`
`Application date
`
`12/09/1987
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M MCDONALD'S
`
`NONE
`
`Class 029. First use: First Use: Oct 1979 First Use In Commerce: Oct 1979
`[ SOUP AND PRESERVES FOR CONSUMPTION ON OR OFF THE
`PREMISES ]
`Class 030. First use: First Use: Dec 1983 First Use In Commerce: Dec 1983
`SALT AND PEPPER
`
`U.S. registration
`no.
`
`0796852
`
`Register
`
`Principal
`
`Registration date
`
`09/28/1965
`
`Application date
`
`10/13/1964
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 046. First use: First Use: Aug 1, 1961 First Use In Commerce: Aug 1,
`1961
`HAMBURGER, CHEESEBURGER, AND FISH SANDWICHES, FRESH
`FRENCH FRIED POTATOES, HOT COFFEE, FRESH MILK, AND MILK
`SHAKES.
`
`U.S. registration
`no.
`
`5466069
`
`Register
`
`Principal
`
`Registration date
`
`05/08/2018
`
`Word mark
`
`M
`
`Application date
`
`04/28/2017
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consist of a stylized letter "M" in the form of arches inside a circle. Be-
`low the letter "M" is a series of eight circles forming a smile.
`
`Class 039. First use: First Use: Jul 5, 2017 First Use In Commerce: Jul 5, 2017
`Food delivery services
`
`U.S. registration
`no.
`
`5466068
`
`Register
`
`Principal
`
`Registration date
`
`05/08/2018
`
`Application date
`
`04/28/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`The mark consist of a stylized letter "M" in the form of arches inside a circle. Be-
`low the letter "M" is a series of eight circles forming a smile.
`
`Class 043. First use: First Use: Jul 5, 2017 First Use In Commerce: Jul 5, 2017
`Restaurant services
`
`U.S. registration
`no.
`
`1653279
`
`Register
`
`Principal
`
`Registration date
`
`08/06/1991
`
`Application date
`
`05/01/1990
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`M
`
`NONE
`
`Class 042. First use: First Use: Jun 16, 1989 First Use In Commerce: Jun 16,
`1989
`restaurant services
`
`Attachments
`
`Consolidated Notice of Opposition McWeed.pdf(256771 bytes )
`
`Signature
`
`Name
`
`Date
`
`/John A. Cullis/
`
`John A. Cullis
`
`05/10/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
`Applications Serial Nos. 97283033 and 97264215
`
`Published in the Official Gazette
`on April 11, 2023
`
`McDONALD’S CORPORATION,
`
`Opposer,
`
`v.
`
`JAYMIE TERRELL
`
`Applicant.
`
`
`
`
`
`Marks: McWeed
`
`
`
`
`
`
`
`
`
` Design Mark
`
`Opposition No.:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`Opposer, McDonald’s Corporation (the “Opposer”), 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 the registration of the marks,
`
`McWeed and the inverted Golden Arches design logo (the “Design Mark”), in International
`
`Class 25 as shown in Application Serial Nos. 97/283,033 and 97/264,215 filed by Applicant,
`
`Jaymie Terrell (the “Applicant”), an individual having an address at 2714 Fort Baker,
`
`Washington D.C. USA 20020, and hereby opposes the same and requests that the
`
`registrations to Applicant be refused.
`
`The grounds for this Consolidated Notice of Opposition are as follows:
`
`1.
`
`Applicant is seeking to register the marks, the McWeed mark and the Design
`
`Mark, for “Clothing, namely, hats, pants, shirts, shorts, skirts, dresses, scarves, bottoms as
`
`clothing, sweatsuits, hoodies, coats, sweatshirts, underwear, swimwear, headwear, tops as
`
`clothing, shoes, footwear, and socks” in International Class 25. These applications are based on
`
`the Applicant’s intent-to-use the marks filed under 15 U.S.C. § 1051(b).
`
`2.
`
`3.
`
`This Consolidated 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 over 14,000
`
`restaurants in the United States.
`
`4.
`
`In connection with this business, Opposer has, for decades, extensively used
`
`
`
`2
`
`

`

`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.
`
`Additionally, Opposer has, for decades, extensively used its Golden Arches
`
`mark in various design iterations to advertise, promote, and sell a variety of food products
`
`and restaurant services. During that time, Opposer has expanded the use of its Golden Arches
`
`trademark to include a wide variety of goods and services, including food and drink products
`
`such as coffee, chicken, specialty sandwiches, breakfast items, pancakes, baked pastries, and
`
`café and restaurant services, all of which are advertised and promoted throughout the United
`
`States. Opposer has also used its Golden Arches mark 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.
`
`6.
`
`Opposer extensively advertises and promotes its various goods and services
`
`under its family of “Mc” marks and its Golden Arches mark on 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 and its Golden Arches mark on food product packaging and point-of-purchase advertising.
`
`In sum, Opposer uses its family of “Mc” marks and its Golden Arches mark in connection
`
`
`
`3
`
`

`

`with products and services similar or related to those that Applicant offers under the McWeed
`
`mark and the Design Mark.
`
`7.
`
`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
`
`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
`
`
`
`4
`
`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
`
`

`

`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
`
`12. McNUGGET
`
`4,071,074
`
`12/13/2011
`
`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
`
`5,501,789
`
`06/26/2018
`
`18. Mc
`
`1,947,099
`
`01/09/1996
`
`
`
`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
`Products made of poultry
`
`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
`
`Opposer also owns numerous federal registrations for its Golden Arches mark. These
`
`
`
`5
`
`

`

`registrations include, but are not limited to, the following:
`
`
`
`MARK
`
`REG.
`NO.
`
`REG. DATE GOODS/SERVICES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`3,467,606 July 15, 2008
`
`Drinking Straws
`
`4,568,939
`
`July 15, 2014
`
`Ground and Whole Bean Coffee
`
`5,422,046 March 13,
`2018
`
`Eating Utensils, Namely, Knives,
`Forks and Spoons
`
`2,393,485 October 10,
`2000
`
`Men’s, women’s and children’s
`clothing, namely, coats, jackets,
`shirts, ties, sweaters, sweatshirts,
`blouses, jerseys, vests, uniforms and
`aprons
`
`1,592,293 April 17, 1990 Franchise services, namely, offering
`technical assistance in the
`establishment and/or operations of
`restaurants
`
`893,440
`
`June 23, 1970 Restaurant services
`
`992,868
`
`September 10,
`1974
`
`Towels
`
`1,753,026 February 16,
`1993
`
`Restaurant services
`
`2,709,442
`
`April 22, 2003 Restaurant services
`
`
`
`2,895,568 October 19,
`2004
`
`Restaurant services
`
`1,061,031 March 8, 1977 Restaurant services
`
`
`
`
`
`
`
`
`
`6
`
`

`

`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`
`
`1,631,967
`
`January 15,
`1991
`
`Restaurant services
`
`1,287,408
`
`July 24, 1984
`
`Restaurant services
`
`1,381,652 February 4,
`1986
`
`Sauces except cranberry sauce and
`applesauce, table syrup
`
`1,505,016 September 20,
`1988
`
`Salt and pepper
`
`796,852
`
`September 28,
`1964
`
`Hamburger, cheeseburger, and fish
`sandwiches, fresh French fried
`potatoes, hot coffee, fresh milk, and
`milk shakes
`
`5,466,069 May 8, 2018
`
`Food delivery services
`
`5,466,068 May 8, 2018
`
`Restaurant services
`
`1,653,279 August 6,
`1991
`
`Restaurant services
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Each of the above registrations is valid, subsisting, and in full force and effect.
`
`Additionally, Opposer applied to register and commenced use of the above-listed marks in
`
`association with their respective designated goods prior to the Applicant’s filing date of the
`
`McWeed mark and the Design Mark applications, February 24, 2022 and February 11, 2022,
`
`respectively.
`
`8.
`
`Each of the above-listed registrations is at least prima facie evidence of the
`
`
`
`7
`
`

`

`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.
`
`9.
`
`Through Opposer’s extensive and continuous use of
`
`the
`
`trademark
`
`McDONALD’S, and its “Mc” family of 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. Additionally, the use and promotion of the Golden Arches mark over
`
`many decades has caused consumers in the United States to associate the mark with Opposer for
`
`several years prior to Applicant’s filing of the subject applications. Opposer has developed, at
`
`great effort and expense, exceedingly valuable goodwill with respect to the specific marks listed
`
`above, as well as for its entire “Mc” family of marks and all of its Golden Arches mark. Opposer’s
`
`“Mc” family of marks and its Golden Arches mark are famous and were famous long prior to the
`
`filing dates of the subject applications filed by Applicant.
`
`10.
`
`Both the Trademark Trial and Appeal Board and the Federal Circuit have long
`
`recognized the validity of Opposer’s rights to its famous “Mc” family of marks. McDonald’s
`
`Corp. v. McClain, 37 U.S.P.Q.2d 1274, 1276 (TTAB 1995) (“The family of [McDonald's]
`
`marks has been recognized by this Board and by the courts”); McDonald’s Corp. v.
`
`McKinley, 13 U.S.P.Q.2d 1895, 1899 (TTAB 1989) (“In view of opposer’s extensive
`
`evidence of use and promotion of marks having a ‘Mc’ or ‘Mac’ portion, there can be no
`
`doubt that opposer has established that its marks comprise a family”); McDonald’s Corp. v.
`
`McSweet, LLC, 112 U.S.P.Q.2d 1268 at *7 (TTAB 2014) (“Based on the record before us, .
`
`. . Opposer has established that, based on its use and promotion of its family of marks,
`
`Opposer continues to own a family of marks consisting of the prefix ‘Mc’ combined either
`
`with a generic term or a descriptive term.”); McDonald’s Corp. v. McBagel’s, Inc., 649 F.
`
`
`
`8
`
`

`

`Supp. 1268, 1272 (S.D.N.Y. 1986) (finding that McDonald’s “owns a ‘family of marks’ both
`
`registered and unregistered, whose common characteristic is the use of “Mc” or ‘Mac’ as a
`
`formative”); J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463 (Fed. Cir.
`
`1991) (recognizing “McDonald’s specific family of marks wherein the prefix ‘Mc’ is used
`
`with generic food names to create fanciful words.”).
`
`11.
`
`Despite Opposer’s long-standing prior rights in its “Mc” family of marks and
`
`its Golden Arches mark for restaurant services, food products, and a wide variety of other
`
`goods and services, on February 24, 2022 and February 11, 2022 respectively, Applicant
`
`filed the applications to register the McWeed mark and the Design Mark for “Clothing,
`
`namely, hats, pants, shirts, shorts, skirts, dresses, scarves, bottoms as clothing, sweatsuits,
`
`hoodies, coats, sweatshirts, underwear, swimwear, headwear, tops as clothing, shoes, footwear,
`
`and socks” in International Class 25. Given Opposer’s widespread advertising and promotion
`
`of its “Mc” family of marks and its Golden Arches mark, Applicant’s selection and use of
`
`the McWeed mark, which incorporates the “Mc” prefix followed by a descriptive or generic
`
`word for the applied-for goods, coupled with the use of the inverted Golden Arches logo, suggests an
`
`intent by Applicant to trade off the goodwill and recognition associated with Opposer’s
`
`trademarks.
`
`12.
`
`Potential purchasers, upon seeing the dominant “Mc” in the McWeed mark
`
`and the Design Mark are likely to mistakenly believe that the goods offered thereunder
`
`originated or are connected with, or are sponsored, licensed or approved by, Opposer. Thus,
`
`the registrations and planned use by Applicant of the McWeed mark and the Design Mark in
`
`connection with the goods, for all channels of trade and all types of prospective purchasers,
`
`is likely to cause confusion, mistake, or deception in violation of 15 U.S.C. § 1052(d).
`
`
`
`9
`
`

`

`13.
`
`Issuance of the registrations to Applicant for the McWeed mark and the
`
`Design Mark will also diminish and dilute the distinctive quality of Opposer’s rights in its
`
`famous family of “Mc” marks and its Golden Arches mark, and will blur and otherwise
`
`impair the distinctiveness of this family of marks in violation of 15 U.S.C. § 1125(c).
`
`14.
`
`If registrations are issued to Applicant for the McWeed mark and/or the
`
`Design Mark, the confusion with Opposer’s marks would result in damage and injury to
`
`Opposer and the public. Registrations of the McWeed mark and the Design Mark would also
`
`give Applicant an unqualified right to wrongfully appropriate Opposer’s valuable goodwill
`
`and reputation associated with Opposer’s marks; to benefit from the likely confusion among
`
`purchasers led to believe that goods of Applicant are related in some fashion to Opposer; to
`
`dilute the distinctiveness of Opposer’s marks and harm its goodwill and reputation associated
`
`with its marks; to tarnish Opposer’s good name by offering goods not subject to Opposer’s
`
`quality controls; and to restrict the natural growth of Opposer’s “Mc” famil