Why McSleep lost

[RonButters at AOL.COM]

In a message dated 12/10/03 6:09:57 PM, dave at WILTON.NET writes:


> The decision in the "McSleep" suit is questionable. AFAIK, McDonald's is
> not
> in the hotel business.
>

Again, I am not a lawyer, and I hope Bethany Dumas will correct me where I am
wrong here:

My memory is that McDonald's argued that hotels are so often in the food
business that the public might quite naturally believe that McDonald's had gone
into the hotel business if McSleep were allowed to prevail. In addition, there
is something in trademark law called "dilution," a basis for claiming
infringement if a very famous mark is used by someone else as a trademark in such a way
that the owner of the mark might well suffer loss. I'm not totally sure how
this works, but I think it might be grounds for, say, preventing a chain of
second-hand automobile stores (not owned by Disney) from calling themselves
"Mickey Mouse" Auto SuperStores. "Mickey Mouse" is not a trademark associated (as
of today) with automobile sales. However, M.M. is so famous that the public
might reasonably be led to believe that Disney was going into the car business.
And even if the public did not generally believe this, the mark is so famous
that Disney could claim that their lingjuistic property was nonetheless being
misappropriated and "diluted."

By the way (as I recall) the McSleep people argued that McDonald's had no
right to "Mc-" in and of itself because it is, they said, a generic term for
cheap stuff. They lost, despite impressive evidence presented in court by Roger
Shuy himself.