## Facts

- McDonald’s Corporation operated thousands of restaurants nationwide and owned numerous trademarks using the “Mc” prefix, marketed as a recognizable “family of marks.”
- Druck and Gerner, D.D.S., P.C., a New York professional corporation, opened a dental practice in Plattsburgh, New York in 1981 under the name “McDental,” using prominent signage.
- Defendant obtained a New York service mark for “McDental” and attempted (without completion) to register the mark federally.
- Defendant later opened a second “McDental” office in Vermont (later renamed and sold).
- McDonald’s presented evidence of the fame and distinctiveness of its “Mc” marks, including marketing testimony and consumer survey evidence indicating that consumers associated “McDental” with McDonald’s.
- After learning of “McDental” in 1987, McDonald’s sent protest letters and engaged in unsuccessful efforts to secure a name change before filing suit in 1990.
- The case was tried to the court in a non-jury trial; defendant asserted laches based on alleged notice since 1981.

## Issues

1. Whether McDonald’s had protectable rights in a “family of ‘Mc’ marks” and whether “McDental” was likely to cause confusion under the Lanham Act.
2. Whether McDonald’s claims were barred by laches due to delay and resulting prejudice.
3. Whether defendant’s use supported state-law claims for dilution and unfair competition, and what remedies were appropriate.

## Decision

- The court found McDonald’s had a strong, publicly recognized family of “Mc” marks.
- The court held defendant’s use of “McDental” was likely to cause confusion and therefore infringed McDonald’s rights under the Lanham Act.
- The court rejected laches because McDonald’s did not inexcusably delay after learning of the use and defendant failed to show sufficient prejudice.
- The court granted injunctive relief barring defendant from using “McDental.”
- The court denied attorney’s fees, finding the case was not “exceptional” under the Lanham Act.

## Legal Principles

- A trademark owner may prove protectable rights in a “family of marks” where a common formative element (here, “Mc”) is used extensively and recognized by the public as indicating a single source.
- Likelihood of confusion may be shown where the accused mark shares the family’s distinctive formative structure and commercial impression, particularly when the family is strong.
- Consumer survey evidence can be substantial proof of likely confusion or mistaken association.
- Laches requires (1) delay, (2) inexcusable delay, and (3) prejudice; correspondence and investigation after first actual knowledge may defeat an “inexcusable delay” showing, and the defendant must prove prejudice.
- Attorney’s fees under the Lanham Act require an “exceptional” case; prevailing alone is insufficient.

## Conclusion

The court concluded that “McDental” improperly traded on the source-identifying power of McDonald’s “Mc” family of marks and enjoined further use, while rejecting laches and declining to award attorney’s fees.


McDonald’s Corp. v. Druck & Gerner, D.D.S., P.C., 814 F. Supp. 1127 (N.D.N.Y. 1993)