S1 E42 The McSleep Inn case Enforcing a trademark outside of your direct competitors with Wayne Carroll

S1 E42 The McSleep Inn case Enforcing a trademark outside of your direct competitors. In season 13, episode 15, I talked about how I found three companies all using the same trademarks in three different product categories, a moving company, an automotive parts company, and an electric cooperative selling electricity. Clients often come to me when they see a company using a name similar to theirs and want to know if it is trademark infringement. In this episode I discuss the 8 trademark infringement factors and how they played out in a case between McDonalds and Quality Inns (1) Strength or Weakness of the Plaintiff’s Mark. (2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise. (3) Similarity of Plaintiff’s and Defendant’s Marks. (4) Actual Confusion. (5) Defendant’s Intent. (6) Marketing/Advertising Channels. (7) Consumer’s Degree of Care. (8) Product Line Expansion. McSleep Inn Case Quality Inns Intern., Inc. v. McDonald's Corp., 695 F. Supp. 198 - Dist. Court, D. Maryland 1988 Synopsis Quality Inns announced McSleep Inn hotels McDonalds Corp sent Cease and desist 3 days later Quality Inns sued for declaratory judgement CEO of Quality Inns presented the following to his Board of Directors: The marketing promise of McSleep is "a consistent, convenient, quality product at a low price." The marketing hook is the name "McSleep;" not McSleep Motor Inn or McSleep Motel — just "McSleep." The name McSleep should help consumers instantly identify the product for what it is — a consistently clean, quality product at a low price. * * * * * * McSleep is aimed at the entire travel market. Like McDonald's, it is acceptable for the upscale traveler who wants only a good night's sleep and for the economy traveler who wants to save money. Holding of the District Court: (1) McDonald's is entitled to enforce its family of marks that are characterized by the combination of the prefix "Mc" with a generic word; (2) the name McSleep Inn is likely to cause an appreciable number of the public to be confused by believing that McSleep Inn is sponsored, associated, affiliated, connected, or endorsed by McDonald's; and (3) the adoption and use by Quality International of the name McSleep Inn was a deliberate attempt to benefit by the good will and reputation of McDonald's. BIO: Wayne Carroll is a highly experienced intellectual property lawyer with over 15 years of experience. He holds a Juris Doctor degree with a concentration in Intellectual Property Law from Suffolk University Law School, as well as an undergraduate degree in Electronic Engineering Technology from DeVry University. Wayne is the CEO and Attorney at Inspired Idea Solutions, LLC, a firm he founded in 2013, where he specializes in patent strategy, patent prosecution, trademark strategy and registration, and copyright litigation. In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or [email protected]. You can also connect with Wayne on LinkedIn. Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.