McDonald’s Corporationv.Steven C. Williams

Trademark Trial and Appeal Board

Jul 20, 2009

No. 91175921 (T.T.A.B. Jul. 20, 2009)

Skoro
Mailed: July 20, 2009

Opposition No. 91175921

McDonald's Corporation

v.

Steven C. Williams

Before Walters, Zervas and Mermelstein,
Administrative Trademark Judges.

By the Board:

On March 6, 2006, Steven Williams (hereinafter
“applicant”) filed an application to register the mark WE’RE
LOVIN’ YOU for “café restaurant” services in Class 43.1 On
February 28, 2007, McDonald’s Corporation (hereinafter
“opposer”) filed a notice of opposition alleging a
likelihood of confusion between opposer’s I’M LOVIN’ IT
registrations2 and applicant’s applied-for mark. Applicant
answered the notice of opposition by denying the salient
allegations thereof.

1 Serial No. 78830281 claiming a bona fide intent to use the mark
in commerce.

2 Reg. No. 2978887, issued July 26, 2005, for I’M LOVIN’ IT, for
“restaurant services” in Class 43, claiming dates of first use
anywhere and first use in commerce of September 23, 2003.
Opposer also claims ownership of several other registrations
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Opposition No. 91175921
2
On December 22, 2008, opposer filed a motion to amend
its notice of opposition to add two new counts to the notice
on January 30, 2008, applicant answered the amended notice
of opposition, thus the amended notice of opposition was
made of record.3 On March 6, 2009, opposer filed a motion
for summary judgment and applicant responded.4
Opposer’s motion for summary judgment is based on the
newly added ground that applicant lacked the requisite bona
fide intent to use the mark in commerce for café restaurant
services at the time of filing his application.5 In support
of its motion for summary judgment, opposer has submitted
copies of applicant’s discovery responses and selections

containing this slogan for various food products. See Reg. Nos.
2978888, 2978889, and 3104640.
3 In that the amended answer was filed prior to the Board’s
ruling on the motion, it was acknowledged by Board order of
February 11, 2009, and the motion to amend was granted as
uncontested.

4 On February 27, 2009 applicant filed a motion to compel
opposer’s discovery responses. Opposer responded indicating that
the motion was premature in that its responses were not due until
February 27, 2009, and that it in fact submitted its responses
the same day. In light of the foregoing, the motion to compel is
hereby denied as moot.

5 Opposer added two grounds in its amended notice of opposition:
Count V – no bona fide intent to use the mark for restaurant
services and Count VI – fraud in signing the verification
statement that the mark was for restaurant services. The Board
will not need to reach the issue of fraud if we find no bona fide
intent to use the mark on the identified services.

Opposition No. 91175921
3
from deposition transcripts.6 Applicant has responded with
his own declaration, together with exhibits.
Opposer maintains that applicant’s discovery responses
demonstrate a prima facie case that applicant lacked a bona
fide intent to use the mark on café restaurants when he
filed his application. Opposer further contends that
applicant admits his intent in filing the application was
not to use the mark himself in a trademark fashion, but to
reserve rights in the slogan in hopes of selling a marketing
proposal to opposer for it to use in promoting its own
restaurants.7 Thus, according to opposer, applicant’s mere
statements of subjective intention, without more, are
insufficient to establish applicant’s bona fide intent to
use the mark in commerce on the identified services, thus
rendering the application void ab initio, and that it is
entitled to judgment in its favor as a matter of law.
Applicant contends, on the other hand, that the
evidence of his good faith in filing the application, and
his bona fide intent to use the mark WE’RE LOVIN’ YOU in
commerce, raises “disputed facts.” Applicant states that he
filed the application as a result of instructions he was
given by opposer’s representatives to develop a small

6 These consist mainly of documents produced by applicant and
excerpts from the depositions of applicant, Mr. Williams, and his
partner, Mr. Stephen Strode.
Opposition No. 91175921
4
business alliance through opposer’s vendor diversity
program. (Br. 7-8). Based on the information applicant
received from various sources, he thought he was required to
have trademark protection for his slogan which, admittedly,
was a spin off of opposer’s I’M LOVIN’ IT slogan to further
entice opposer to fit his advertising campaign into their
program. (Br. 8; Williams Dec. ¶ 7; P’s Br. Exs. F, G & H).
In order to do this, he looked at other restaurant chains
and saw their advertising slogans in association with
restaurant services, so that was the filing class he
selected. (Br. 10-11; see also Williams Dec. ¶ 7). Thus,
applicant’s intention was a good faith belief that where
opposer “would ultimately provide usage of the mark for
promotional item advertising programs in café restaurant was
reasonable due to my level of business contacts. My intent
and actions I believe were applicable in respect to the
rules set forth in the ITU application.” (Br. p. 11).
In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issues
of material fact and that it is entitled to judgment as a
matter of law. See Fed. R. Civ. P. 56(c). In considering
the propriety of summary judgment, all evidence must be
viewed in a light favorable to the nonmovant, and all

7 See Ex. D, Depo. of applicant, Steven Williams, at 59:14-16;
203:14 - 204:1; 205:20 - 206:4; Ex. L, Depo. of Stephen Stode, at
185:19 - 186:6; 187:3-11.
Opposition No. 91175921
5
justifiable inferences are to be drawn in the nonmovant's
favor. The Board may not resolve issues of material fact;
it may only ascertain whether such issues are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
As a general rule, the factual question of intent is
particularly unsuited to disposition on summary judgment.
See Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d
1563, 20 USPQ2d 1295 (Fed. Cir. 1991). The Board has held,
however, that the absence of any documentary evidence
regarding an applicant’s bona fide intention to use a mark
in commerce is sufficient to prove that an applicant lacks
such intention as required by Section 1(b) of the Trademark
Act,8 unless other facts are presented which adequately
explain or outweigh applicant’s failure to provide such
documentary evidence. See Commodore Electronics Ltd. v. CBM
Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
At the outset, we find that there is no genuine issue
of material fact concerning opposer’s standing to be heard

8 Lanham Act § 1(b) states that “a person who has a bona fide
intention, under circumstances showing the good faith of such
person, to use a trademark in commerce” may apply for
registration of the mark.

Opposition No. 91175921
6
on its claim. Although opposer neither submitted status and
title copies of its pleaded registrations of its I’M LOVIN’
IT mark nor an affidavit or declaration in support of its
allegations of use of its I’M LOVIN’ IT mark, there is other
evidence establishing opposer’s standing. The record
includes applicant’s statements that he was aware of
opposer’s I’M LOVIN IT trademark (Interr. 14 response); that
he familiarized himself with opposer’s marks (Ex. D.
Williams Depo. at 197:7 – 198:19); and that he selected the
subject mark as a “variation on [opposer’s] “I’m lovin’ it’
slogan”. (P’s Br. Ex. F).9 We find applicant’s statements
sufficient to establish that opposer has a real interest in
the outcome of this proceeding; that is, opposer has a
direct and personal stake in the outcome of the opposition.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
Under the Lanham Act, 15 U.S.C. §§ 1051 et seq., a
trademark or service mark is any combination of words,
names, symbols or devices that are used to identify and
distinguish goods or services and to indicate their source.

9 Exhibit F is an undated letter from applicant to
representatives of opposer with whom he was working, Cathy
Nemeth, identified by applicant as Vice President for World
Wellness, and Mary Dillon, Global Chief Marketing Officer, which
was produced by applicant in response to opposer’s document
request no. 26.

Opposition No. 91175921
7
See 15 U.S.C. § 1127. While copyright law protects the
content of a creative work itself, it is trademark law that
protects those symbols, elements or devices which identify
the work in the marketplace and prevent confusion as to its
source.10 Further, a mark that does not perform the role of
identifying a source is not a trademark. See EMI Catalogue
Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 56
USPQ2d 1270, 1275 (2d Cir. 2000).
It has long been held that slogans cannot be registered
as marks by the advertising agency, even if they would be
subject to registration by the end users of the marks. See
In re Admark, Inc., 214 USPQ 302, 303 (TTAB 1982). The
reason is plain: the slogan does not identify and
distinguish the services of the advertising agency, but
rather is the creative work itself. Id.; see also In re
Advertising & Marketing Development., Inc., 821 F.2d 614, 2
USPQ2d 2010 (Fed. Cir. 1987) (explaining that an advertising
agency cannot register a mark it uses to identify the
subject of the advertising as opposed to the agency's

10 It should be noted that the same mark that performs this
source-identifying role in one set of hands may constitute the
creative work itself in another. Such distinction often is
appropriate when an advertising agency licenses a slogan to a
client for the client's use in marketing a product. In this
scenario, the slogan is part of the advertising agency's creative
work, but it may become a source identifier when used by the
client. See 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §16.39, at 16-64.2 (4th ed. 2000) (“In many
situations … the mere conception of a mark by an advertising
agency for possible use by the client does not create any
trademark rights in the agency.”).
Opposition No. 91175921
8
services); In re Local Trademarks, Inc., 220 USPQ 728, 730
(TTAB 1983).
Section 1(b) of the Trademark Act requires an applicant
filing a Section 1(b) application to verify that it has “a
bona fide intention, under circumstances showing the good
faith of such person” to use its mark in commerce for the
goods or services specified in the application. 15 U.S.C.
§ 1051(b)(1). If the applicant does not have a bona fide
intent to use the mark in connection with the identified
services as of the filing date of the application, the
application is invalid. See Lane Ltd. v. Jackson
International Trading Co., 33 USPQ2d 1351 (TTAB 1992) and
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503, 1506 n.7 (TTAB 1993). Whether an applicant has
the requisite bona fide intent requires “a fair objective
determination based on all of the circumstances” L.C.
Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008).
In this case, opposer has proffered documents that
applicant provided to it through discovery and deposition
testimony, which include applicant’s interrogatory responses
and document production which, opposer asserts, demonstrates
that applicant had no intent to use the mark in connection
with restaurant services, for which he applied, but rather
adopted the mark as part of his proposed marketing campaign
for opposer which involved using a seatbelt device for
Opposition No. 91175921
9
children as a promotional item.11 Specifically, opposer
points to applicant’s statements made during his
deposition,12 that he met with opposer’s representatives who
were recruiting minority and small business vendor
contracts; that he was told to protect his intellectual
property rights before making any presentation to opposer;
and that he adopted the slogan as a spin-off of opposer’s
mark as a means to further entice opposer to adopt his
marketing program.
Applicant has countered the motion with statements of
subjective intent, together with supporting documentation,
consistent with opposer’s position. Applicant notes a
series of events, meetings and conversations with various
people, both inside and outside of opposer, that led him to
believe that his obtaining a registration for the subject
mark was at the “behest” of opposer (Dec. ¶ 7); and that it
would be used by opposer if it adopted the marketing
campaign applicant was proposing (Id.). Applicant contends
that this shows his good faith in adopting the mark.
Federal Rule of Civil Procedure 56(c) provides:

11 Applicant proposed to use its EZ Reach seatbelt device with
this proposed slogan on it as a promotional item in opposer’s
Happy Meal product; and also proposed to expand its use to create
a “wellness corporate responsibility” presentation.

12 These statements have also been repeated by applicant in his
declaration submitted in support of his opposition to the motion
for summary judgment.
Opposition No. 91175921
10
The judgment sought should be rendered
if the pleadings, the discovery and
disclosure materials on file, and any
affidavits show that there is no genuine
issue as to any material fact and that
the movant is entitled to judgment as a
matter of law.

Federal Rule of Civil Procedure 56 requires a nonmoving
party to go beyond the pleadings and to “set out specific
facts showing a genuine issue for trial.” Fed. R. Civ. P.
56(e)(2); Celotex Corp. v. Catrett, supra at 324.
In its response to the motion, applicant points to the
same evidence as opposer, which is contrary to the statutory
requirement that an applicant must have a bona fide intent
to use the subject mark on the identified services at the
time of filing. Applicant has stated that he has never
owned a restaurant and has no intention of opening one (Ex.
D, 203:4-9; 206:13-19); that his intention at the time of
filing was “filing it in the category of café and
restaurants being that in the presentation to [opposer] that
it would be covered…” (Ex. D 206:1-3); that “the intent was
to, one, sell the Easy Reach seat belt device as a Happy
Meal program to create a wellness corporate responsibility
presentation…” (Ex. D. 226:17-19); and that the “goods and
services intended to be offered by applicant is its
utilization of mark on applicant’s seat belt awareness
promotion item….” (Ex. E, Interr. response # 5).
Opposition No. 91175921
11
To raise a genuine issue of material fact, applicant
must rely on specific facts that establish the existence of
an ability and willingness to use the mark to identify its
claimed “café restaurant” services at the time of the filing
of the application. Applicant’s declarations and
documentation from third parties13 merely support his
misinterpretation of the law regarding intent to use a mark
in commerce. There was no intended use of the mark in
commerce as a source indicator for café restaurant services.
See In re Advertising & Marketing Dev. Inc., 2 USPQ2d 2010,
2014 (Fed. Cir. 1987) (“for applicant to be a provider of
services, the applicant also must have used the mark to
identify the named services for which registration is
sought”); and American Express Co. v. Goetz, 85 USPQ2d 1913,
1915 (2d Cir. 2008) (“Trademark Trial and Appeal Board has
long recognized ... that the slogans cannot be registered as
marks by the advertising agency, even if they would be
subject to registration by the end users of the marks”).
Therefore, after having considered the evidence and
arguments submitted by the parties in connection with the
motion, and viewing that evidence in the light most

13 Applicant provides various email/letters between himself and
the other people, whom he believed to be representatives of
opposer, Ms. Nemeth, Dillon and Mr. Lamar, advising him that he
should get trademark protection before making the presentation to
opposer and that they liked his marketing campaign proposal.

Opposition No. 91175921
12
favorable to applicant,14 we find that applicant lacked a
bona fide intent to use the mark for café restaurants.
Thus, because applicant has not established that there is
any genuine issue of material fact as to his lack of a bona
fide intent to use the mark for café restaurants, but has in
fact admitted he was not going to use it for café
restaurants, the service for which he applied, opposer’s
motion for summary judgment is hereby granted.15
The opposition is sustained, and registration is
refused to applicant.

14 Applicant complains in his response that opposer’s objections
to his discovery requests have left him unable to respond to
opposer’s motion for summary judgment. However, to respond to
the motion for summary judgment, applicant needed to establish
that he had a bona fide intent to use the mark in connection with
restaurant services himself, as set out in his application. All
such evidence would have been within applicant’s control and
could not be obtained from opposer.
15 It is noted that on May 13, 2009 applicant filed a surreply to
the motion for summary judgment, which opposer has moved to
strike. Applicant then filed a reply to the motion to strike.
In that the Board does not consider surreplies, the motion to
strike is hereby granted. We add, however, that we have not
considered any new issue which opposer may have discussed in its
reply brief.