BY: SAMANTHA GARRISON

In June of 2007, Mr. Tong Cheah attempted to register a trademark for the name and association of his food products: MACDIMSUM.  Cheah claimed he intended the mark to be used in association with Malaysian Asian and Chinese (MAC) food products.[1. McDonald’s thrwarts MACDIMSUM trademark bid, world intellectual property review, http://www.worldipreview.com/news/mcdonald-s-thwarts-macdimsum-trademark-bid (July 22, 2013).] While people would not immediately know what this word was in reference to, many would believe it to have an association with McDonald’s due to its prefix “MAC”.  McDonald’s agreed and sought to quash this trademark application.

McDonald’s Corporation owns, and uses often, its trademarks that are comprised of MC or MAC which are associated with its restaurants and foods such as MAC FRIES or MCCHICKEN.  These elements have become famous and are well identified by its consumers.  McDonald’s, in order to prove this, filed survey evidence.  A survey was conducted in order to show the confusion between MACDIMSUM and its association with McDonalds.  The survey consisted of members of the public viewing a card with the word MAZDIMSUM and another card with MACDIMSUM.  Survey results showed that twenty-nine percent of viewers associated MACDIMSUM with McDonald’s due to its prefix MAC. [2. Stella Syrianos, McDonald’s Successfully Blocks Bid for MacDimSum Trade-Mark in Canada, bloomberg bna: intellectual property law resource center (Sept. 1, 2013), http://iplaw.bna.com/iprc/5008/split_display.adp?fedfid=35576998&vname=wiprunotallissues&fn=35576998&jd=35576998.]

The federal court in reviewing this evidence used a “reasonableness” standard.  It found that the previous decision as to confusion was reasonable.  While McDonald’s has previously failed to preclude previous attempts at the use of “MC”, the facts of this case, specifically the intended use of the attempted trademark, were crucial in its decision. This decision also shows that “surveys still remain relevant in the likelihood of confusion analysis, if used carefully and to good effect.” [3. Id.]

The court in finding confusion also took into account the following that favored McDonald’s:  McDonald’s trademark is well known, MACDIMSUM is not a strong mark, Cheah’s goods were similar to McDonalds and were to be sold in a restaurant environment and McDonald’s established extensive evidence as to its use of its trademark for food products. [4. Id.]

This seems like a no brainer that McDonalds successfully blocked this potential trademark infringement considering the vast popularity of its prefixes.  However, McDonalds has had problems in the past defending its trademark.  If the ever so popular McDonalds cannot always succeed in protecting its trademark how could smaller companies ever hope to do so?