Quality Inns International, Inc. v. McDonald's Corp.

OPINION

On September 21, 1987, Quality Inns International, Inc. announced a new chain of economy hotels to be marketed under the name “McSleep Inn.” The response of McDonald’s Corporation was immediate. It demanded by letter sent three days later that Quality International not use the name “McSleep” because it infringed on McDonald’s family of marks that are characterized by the use of the prefix “Me” combined with a generic word. Five days later, on September 29, 1987, Quality International filed this action seeking a declaratory judgment that the mark “McSleep Inn” (1) does not infringe McDonald’s federally registered trademarks in violation of 15 U.S.C. § 1114; (2) does not constitute a false designation of origin or a false description or representation of services as being associated with or originating with McDonald’s in violation of 15 U.S.C. § 1125(a); and (3) does not infringe or violate any common law rights that McDonald’s may have to its marks.

McDonald’s filed a counterclaim alleging trademark infringement and unfair competition under the same laws that Quality International invoked in its complaint for a declaratory judgment. In addition, McDonald’s alleges dilution of its marks in violation of the Illinois Anti-Dilution Act, Ill.Rev.Stat. Ch. 140, § 22.

The case came to trial before the Court without a jury on July 18, 1988 and concluded on July 26, 1988. The Court has reviewed all of the evidence received at trial, including the deposition testimony offered. It has studied the memoranda and cases submitted by counsel for the parties. This opinion will serve as the Court’s findings of fact and conclusions of law as prescribed by Fed.R.Civ.P. 52(a).

I. THE ISSUES

The issues are framed by the positions taken by the parties.

McDonald’s alleges a straightforward trademark infringement and unfair competition action. It contends that it is the owner of a family of marks each of which is formulated by combining the prefix “Me” with a generic word to form a fanciful trademark or service mark. It contends that the name “McSleep Inn” that has been adopted by Quality International is likely to cause confusion and that Quality International selected the word “McSleep” deliberately to trade on the goodwill and reputation of McDonald’s. It *202 claims attorneys’ fees under 15 U.S.C. § 1117.

Quality International’s defenses may be summarized under four points, as follows:

1) No likelihood of confusion: McDonald’s cannot claim ownership over every formative of “Me” plus a generic word, and the formative “McSleep” is not a name or, when used in its logo form, is not a logo that is likely to cause confusion.

2) Noncompeting uses: McDonald’s

marks have been developed in the fast-food business and do not preclude the use of “McSleep Inn” in the lodging business.

3) Extensive third-party uses: By allowing or acquiescing in the use by third parties of a proliferation of the use of words formulated by combining “Me” with a generic word, McDonald’s should be denied the right to preclude the use of “McSleep Inn.”

4) “Me” is generic: The use of “Me” as a prefix has become generic and has entered into the English language with a recognized meaning of its own.

II. QUALITY INTERNATIONAL

Quality International is a Delaware corporation with its principal offices in Silver Spring, Maryland. It is engaged in the lodging business, particularly in inns, hotels, suites, and resorts. Since 1981 it has been the fastest growing hotel franchise chain in the United States and is now the third largest franchiser of hotels both in terms of hotels and rooms available. Its sales for 1987 were over $56 million.

After Robert C. Hazard, Jr. became the chief executive officer of Quality International in 1980, the company adopted a long range plan that began with an analysis segmenting the lodging market into five sections: economy, luxury budget, mid-priced, luxury, and super luxury. Mr. Hazard then aimed various products of Quality International at these market segments. Clarion Hotels and Resorts became the luxury product of Quality International; Quality Inns, the mid-priced; and Comfort Inns, the luxury budget.

Having no product to compete in the economy segment, Quality International designed a concept for a hotel with a smaller basic room which would rent for between $20 and $29 per night. Each room would have a queen size bed, plush carpeting, color TV, and a contiguous bathroom. There would be no conference rooms, food or other amenities on the premises, except a swimming pool in certain geographical areas. These economy hotels would all be of new construction and a consistent architecture. The name selected by Mr. Hazard for this product was “McSleep Inn.” The first McSleep Inn is scheduled to open in December, 1988.

To improve its marketing of all products, Quality International adopted a “three chain logo” which consists of the three individualized but compatible logos for each of the products offered (Clarion, Quality Inn, and Comfort Inn), arranged horizontally under the caption “Quality International.” Each logo, though different, clearly belongs to a family. The outside shape of all three is square with rounded corners and all three include within the square a stylized sun and the applicable name “Comfort,” “Quality,” or “Clarion.”

This three chain logo will be expanded into a four chain logo when the McSleep Inns join the family of Quality International hotels and motels. As the new corporate signature of Quality International, the four chain logo will be featured in all corporate advertising.

While it is the policy of Quality International to advertise with a consistent corporate identification, at the present time, inns and motels franchised by Quality International advertise their individual facilities without reference to the corporate signature. Moreover, limited access highway signs which announce lodging at exits only depict the logo of the particular motels available at the exit; government regulations do not permit inclusion of the three chain or four chain logo. Examples of telephone directory advertising and even franchising offering materials received at trial did not include the Quality International corporate signature.

*203 III. MCDONALD’S CORPORATION

McDonald’s Corporation is a Delaware corporation with its principal offices in Oak Brook, Illinois. Founded by Ray A. Kroc, it opened its first restaurant in April, 1955, in Des Plaines, Illinois. It is now the largest fast food business in the world, with over 10,000 restaurants in 45 countries and over $14 billion in sales annually. In the United States it owns or franchises over 8200 restaurants. McDonald’s restaurants serve over 18 million people daily, and of all the people in the United States who eat out, 11 percent eat dinner and 25 percent eat breakfast at McDonald’s. McDonald’s claims that within the last four weeks, 89 percent of all children between the ages of two and seven and 64 percent of all adults have eaten at a McDonald’s restaurant. Indeed, over 95 percent of the entire American population has eaten at a McDonald’s, and eight percent of the entire work force in the United States once worked at a McDonald’s restaurant.

In mass marketing McDonald’s has widely promoted its business philosophy of “quality, service, cleanliness and value,” or “Q.S.C.V.” It first began network television advertising in 1965, and today 85 percent of its advertising is television advertising, although it also advertises on the radio and in print. In fiscal 1987, it spent over $400 million in media advertising in the United States alone. Its total expenditures for advertising and promotion over the last years have been in excess of six percent of its total sales and approximately $917 million for fiscal 1987. It is the largest single brand advertiser in the United States.

At trial McDonald’s presented diverse examples of its advertising directed at particular groups and designed for particular purposes. Approximately 22 years ago, McDonald’s created the figure of Ronald McDonald, a fictitious clown who presides over McDonaldland. While Ronald McDonald over the years has promoted values consistent with McDonald’s intended image, he has never urged directly that children purchase McDonald’s products. Ronald McDonald is also used extensively in connection with Ronald McDonald Houses, a charitable function supported by McDonald’s.

McDonald’s has achieved an extremely high awareness in the minds of the American public. It claims that when asked to name a fast food restaurant, 90 percent of the public will name McDonald’s. The recognition of Ronald McDonald by children between the ages of two and eight is 100 percent, a figure matched only by Santa Claus.

In 1977, McDonald’s began advertising a fanciful language called “McLanguage” that featured the formulation of words by combining the “Me” prefix with a variety of nouns and adjectives. In television advertising viewed by the Court, Ronald McDonald is shown teaching children how to formulate “Me” words, and he used words such as McService, McPrice, McFries and McBest.

In a consistent vein McDonald’s has coined “Me” words for many of its products and services. McChicken, Chicken McNuggets, Egg McMuffin or Sausage McMuffin, McD.L.T., McHappy Day, McFortune Cookie, McFeast, McCola, McPizza, McSnack are but some of the many. It has obtained trademark registrations for all of these.

McDonald’s marks are not limited to the fast food area, and it has obtained registrations for the use of marks in other areas as well. In the areas of children’s clothing, it owns McKids; in interstate travel plazas, McStop; in job programs, McJobs; in computer software, McClass; in ground shuttle transportation, McShuttle. It calls its own hotel at its home offices in Oak Brook, Illinois, McLodge.

There is no evidence to suggest that anyone prior to McDonald’s used “Me” with a generic word. This is not to say, however, that every use today of “Me” plus a generic word belongs to McDonald’s family of marks, a subject that is discussed further, below.

IV. SELECTION OF THE NAME “McSLEEP”

The trade name for Quality International’s new economy line of hotels, McSleep *204 Inn, is the brainchild of its CEO, Robert C. Hazard, Jr. At trial he described how he thought of the name at 2 o’clock one morning in November or December 1986 and jotted down notes of his ideas at bedside. He wanted a name that conveyed thrift and consistency, and from a list of several names that he considered, he selected “McSleep.” He said that the “Me” from the Scottish surname conveyed thrift. The notion of “consistency” was the new generic meaning of the prefix “Me” in the English language. He denied that his selection was an imitation of McDonald’s or that McDonald’s occurred to him at the time that he selected the name McSleep. For the reasons given, the Court does not credit this testimony.

When Mr. Hazard first developed his five-year plan for Quality International, which he issued on January 1, 1983, he identified nine corporations whose values he emulated. One of the nine was McDonald’s, and the values that he attributed to McDonald’s, which he did not attribute to any of the other eight, were “quality, cleanliness and value” (actually McDonald’s corporate philosophy was Q.S.C. V. or quality, service, cleanliness and value). Those are the very values that later became the values of Quality International for its new McSleep Inn product in a slightly different form.

In presenting his idea of McSleep Inns to the Board of Directors of Quality International in June, 1987 for approval, Mr. Hazard described the new product in terms not only suggestive of McDonald’s advertising but openly modeled on the McDonald’s concept:

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.

Yet, when questioned at trial whether the promise of a consistent, convenient and quality product at a low price brought to mind McDonald’s, Mr. Hazard said it never occurred to him, though it was possible “it might remind some folks of McDonald’s.” He added, however, “it didn’t remind me of McDonald’s.”

Around the time that the McSleep concept was being presented to the Board, an early draft of the franchise brochure describing a McSleep Inn referred to the name as “instantly recognizable.” This characterization was considered “wrong” by a number of management of Quality International and was deleted from the final published version. Nevertheless, the draft evidenced a perception at Quality International at that time that the McSleep Inn would enjoy instant recognition, much as Mr. Hazard had promised to his Board when he said, “the name McSleep should help consumers instantly identify the product.”

In addition to his overtly expressed admiration for McDonald’s and its method of doing business, which appears to be the same course that Mr. Hazard pursued for Quality International, the possibility of actually working with McDonald’s in a joint venture involving an inexpensive, quality hotel with a fast-food restaurant was on the Quality International agenda at the time Mr. Hazard selected “McSleep.”

Years before, McDonald’s had adopted and used the name McStop in connection with a traveler’s plaza for the long distance traveler. The plaza by concept included a McDonald’s fast-food restaurant, a convenience store, gas station, lodging, and related businesses. While McDonald’s would only own the restaurant, it would supervise the development and quality of the entire plaza and thus call it “McStop.”

In the summer of 1986, Mr. James H. Nelms, a regional manager of Quality In *205 ternational, had been pursuing various discussions with McDonald’s and Kroh Brothers, a real estate developer, for possible participation in McStop plazas. Prior to a trade show in September of 1986, Mr. Nelms had numerous conversations to this end, and at the trade show he introduced the McDonald’s representatives to Mr. Hazard. Following that brief meeting, a representative of Kroh Brothers wrote to Mr. Hazard:

As you recall, Kroh Brothers Development Company is working with McDonald’s on the McStop concept. I have enclosed a flier that provides you with more information about what a McStop should be.

This letter was received by Mr. Hazard on October 2, 1986, and he referred it to Mr. Frederick W. Mosser, Quality International’s vice president in charge of franchising.

Quality International and McDonald’s pursued the McStop concept further, with discussions continuing into the Spring of 1987 but without reaching any agreement. It was after Mr. Hazard received the letter about McStop, however, when he selected the name McSleep for his new, budget-market product.

The final factor contributing to the Court’s belief that Mr. Hazard had McDonald’s in mind when he selected the name McSleep is the evidence that Mr. Hazard’s thinking was not limited to the one word McSleep, but rather a family of words, all created by using the prefix “Me” with a generic word. In the Spring of 1987 when he instructed his attorneys to register and protect the name McSleep, he also directed registration of the names “McSuite” (which he intended to use for two rooms at McSleep Inn connected by a door) and “McBudget.” At trial, Quality International indicated its abandonment of the “McSuite” name and concept, and no evidence was received about the role or intended use of McBudget.

Following selection of the name McSleep, and prior to presentation of the concept to the Board of Directors of Quality International in June, 1987, a trademark search was conducted of “McSleep” in which the report revealed to Quality International management numerous uses of “Me” formatives owned by McDonald's. Mr. Frederick W. Mosser, the vice president in charge of franchising, said that he was surprised at how many marks McDonald’s owned. He indicated that while he perceived some risk in proceeding with the name McSleep, he felt that these reservations were overcome in his mind by the facts that McDonald’s was in the food business and Quality International was in the lodging business, and that the names would be displayed in a distinctive manner.

Following approval by the Board in June of 1987, Mr. Hazard directed Susan B. Dynerman, his director of public relations, to make preparations for the public announcement of McSleep Inn at the trade show in Chicago in September 1987. When Mr. Hazard advised Ms. Dynerman of the new product, she raised questions “whether we could use the name____ I associated it with McDonald’s.”

A similar concern was expressecl by Quality International’s advertising agency. The account representative, Mr. Barry Smith, anticipated that McDonald’s “would be overjoyed” with the McSleep Inn announcement, and he promptly proceeded to obtain an indemnity agreement from Quality International, protecting the agency against litigation by McDonald’s. He had never before asked for an indemnity agreement from Quality International during the ten years that the agency had been representing Quality International.

Several weeks before the public announcement, Mr. Hazard engaged a market research firm to conduct a survey to determine which of several mock up versions of a McSleep Inn room had the most consumer appeal. The survey was conducted of 120 people outside of Quality International and a slightly larger number of employees. Each participant was given a questionnaire inquiring about specific aspects of the rooms under consideration. There was one question, however, inserted at Mr. Hazard’s request, that read as follows: “What is your overall impression of the name ‘McSleep Inn’ for the type of hotel/motel *206 accommodations described in the above statement?” The respondent was then given a choice of four grades ranging from "excellent name” to “poor name.” Over 40 of the respondents volunteered a written comment in response to that question suggesting an association with McDonald’s. Typical of the comments were: “Sounds like relationship to McDonald’s food chain,” or “Sounds cute but I thought it might be affiliated with McDonald’s,” or “Possibly owned by McDonald’s,” or “Reminds me of McDonald’s.”

When Mr. Charles Riter, president of the research firm, advised Mr. Hazard of the result some three to four weeks before the public announcement, Mr. Hazard agreed that it had occurred to him that “some people might associate or refer to or see in the name McSleep some relationships with McDonald’s.” He observed that the confusion, if any, associated the room with a “greasy hamburger” and that did not bother him, because the rooms were better.

In September 1987, at a meeting of Quality International’s sales force convened to announce the new McSleep Inn product, questions also were raised by salespersons of Quality International whether Quality International had the right to use the name McSleep.

Despite the persistent questioning by representatives of Quality International with respect to its rights to use McSleep Inn, Mr. Hazard proceeded with the public announcement on September 21, 1987. A press release was issued and Mr. Hazard also delivered a speech to the trade show in Chicago describing his new hotel. Prior to the public announcement, he invited interviews with the Washington Post and a trade magazine, Hotel and Motel Management. In the Washington Post article, Mr. Hazard is quoted as saying:

Obviously, [the name is] a takeoff on McDonald’s and quality at a consistent price____ We think we’re going to let McDonald’s continue to use their name.

Mr. Hazard admitted making that statement generally but stated he did not refer to the name of McDonald's but rather the concept. He added that the final sentence in the quote was made in jest in response to the reporter’s persistent questioning about McDonald’s.

With respect to the interview given to Hotel and Motel Management, Mr. Hazard expressed complete confidence in the reporter, who was a long-time friend. Mr. Hazard acknowledged the accuracy of all the quotations made of him and does not fault the reporter for making any comments. That article reported as follows:

And yes, the not-so-subtle reference to fast-food giant McDonald’s is purely intentional.

“The concept is just like McDonald’s,” Hazard said. “A guy making $150,000 a year can eat there and feel comfortable and a guy making $10,000 a year can eat there and feel comfortable because he knows what he’s getting — consistent quality. And that doesn’t exist in the lodging industry.”

The inquiries about McDonald’s, that began with employees and continued with reporters, were repeated by the attendees at the conference in Chicago.

Quality International not only was aware of the risk that attended its adoption and use of the name McSleep Inn, a risk that it was infringing McDonald’s family of marks, but it also had good reason to believe that the public might be actually confused. It nevertheless proceeded with both the announcement and its plans to sell franchises for McSleep Inn.

Three days after the public announcement, McDonald’s wrote to Quality International complaining of its planned use of the words “McSleep” and “McSuite” and demanding the immediate discontinuance of those plans. There followed some telephone conversations between the parties, but before any issue was resolved, Quality International filed suit in this court, five days after McDonald’s sent its letter.

Beginning in June, 1987 Quality International began making changes in the presentation of McSleep Inn that were intended to emphasize McSleep Inn’s association with Quality International. Quality International’s four chain logo was to be pictured on a *207 flag to be placed outside each McSleep Inn, on a decal to be placed on the front door, and on the wall behind the registration desk. It changed the name from “McSleep” to “McSleep Inn.” It adopted a policy of including the four chain logo with all corporate advertising. And three weeks before trial, after the Court had already heard motions for summary judgment in this case, it added a small sign underneath the McSleep Inn sign on the main pylon in front of the hotel which reads “by Quality International.”

The McSleep Inn mark has not been exposed to the consuming public in connection with the sale of McSleep Inn services, although hundreds of franchise packets have been sent out to potential franchisees of McSleep Inn. To date only four franchises are signed up, but others are in process. The first McSleep Inn is scheduled to open in Pikesville, Maryland, in December 1988.

The earliest justifications given by Mr. Hazard and Mr. Mosser, the vice president in charge of franchising, for using the name McSleep Inn in the face of McDonald’s family of marks, were grounded on the observation that McDonald’s was in the fast-food business and Quality International was in the lodging business. Later they urged that the “Me” prefix had become generic and was in the English lexicon and that the mark McSleep Inn would be displayed in a distinctive manner.

V. SURVEY TESTIMONY

It is undisputed that appropriate survey evidence is meaningful to establish the likelihood of confusion, and at trial each party presented survey evidence of its own and offered a critique of the survey evidence presented by the other.

A mall intercept survey was conducted on behalf of Quality International by Dr. Jacob Jacoby, a professor at New York University. This type of survey is conducted at randomly selected shopping malls by showing participants a visual stimulus and obtaining responses to questions.

Dr. Jacoby’s survey was actually four separate surveys, each conducted in connection with a different visual stimulus. About 160 respondents were interviewed in each of the surveys. The first of the four stimuli used in the mall intercept survey by Dr. Jacoby was an advertisement for Quality International as it would appear in an airline magazine. The text of the advertisement contained a reference to McSleep Inn along with other products of Quality International, and the four chain logo was included at the bottom. That advertisement did not advertise McSleep Inn specifically. The second stimulus was a mock up of a yellow page display advertisement in which a McSleep Inn was advertised with the McSleep Inn logo and the four chain logo which included the name Quality International. The third stimulus was an artist rendering of a proposed McSleep Inn in front of which was a sign on a pylon that included the McSleep Inn logo and under which there was a smaller sign with the words “by Quality International.” Finally, a control survey was conducted by showing the respondents a picture of an Egg McMuffin sandwich with the words Egg McMuffin written underneath it.

In connection with the survey involving the airline advertisement, despite the fact that arrows were added to the advertisement pointing to McSleep Inn, only 57 percent of those surveyed were aware that McSleep Inn was being advertised. Of those 57 percent, in response to the question “Who or what company, or companies, is that [that owns or operates this motel]?” only 7.5 percent responded “McDonald’s.”

In connection with the yellow page stimulus, of 164 respondents, 83 percent (or 136 respondents) knew that the advertisement was advertising McSleep Inn. Of those, 10.3 percent identified McDonald’s as the name of the company that owns or operates McSleep Inn.

With respect to the artist’s rendering of a McSleep Inn, 163 respondents were shown the picture and 147 indicated they knew that McSleep Inn was being advertised. Of those 16.3 percent said that McDonald’s was the company that owns or operates the hotel. If the responses are limited to those who had made decisions *208 during the previous year about staying in hotels or motels, 21.4 percent of those responding identified McDonald’s as the owner or operator of the McSleep Inn.

Finally, with respect to the picture of an Egg McMuffin, 87 percent of those shown the picture identified it as a product of McDonald’s.

Dr. Jacoby concluded that these figures reflected “a low level of likelihood of confusion.” He went on to point out that one would predict that as McSleep Inns were advertised and became more widely known to the public “even the current low level of likely confusion would be substantially reduced.”

McDonald’s offered two surveys conducted by Dr. Hans Zeisel, a professor at the University of Chicago. His first survey was a telephone survey conducted of a statistical sample of the population consisting of 400 persons randomly selected. The first two questions asked of the respondents were:

If you were driving along the highway and you saw a sign for a hotel called McSleep Inn [the name is spelled out], what would you expect this hotel to be like?

and

And who or what company do you believe owns or operates this hotel called McSleep Inn?

Dr. Zeisel testified that the first question was a warmup that introduces the respondent to the subject of the inquiry, i.e. McSleep Inn, and that the second question was the critical one. In response to the second question, 31 percent of the people surveyed answered, “McDonald’s.” If only the respondents who stayed in a hotel at least once during the past 12 months are included, 33 percent answered “McDonald's;” and if only respondents who stayed in hotels at least 12 times during the past year are counted, 39 percent responded “McDonald’s.” He concluded that naming a hotel “McSleep Inn” would likely cause confusion among “a substantial proportion of the population by leading them to believe that this hotel is somehow related to McDonald’s.”

Dr. Jacoby, Quality International’s expert, criticized the survey by Dr. Zeisel, arguing that the warmup question was merely a free association question which was leading and prompted the answer to the second question. It was also contended that the survey only tested auditory response to McSleep Inn and provided no visual stimulus, which was unlike the real world. He urged that a “mall intercept” survey would be superior.

Although Dr. Zeisel was not in favor of mall intercept surveys because such surveys cannot as a practical matter be performed on a valid statistical sample, in response to the criticism of Dr. Jacoby he conducted a second survey using a visual stimulus. In the second survey, Dr. Zeisel also eliminated the first question of his first survey to prove, as he testified, that the first question did not materially alter the results.

The mall intercept survey conducted by Dr. Zeisel interviewed 401 persons at randomly selected shopping malls across the country. After two unrelated warmup questions, the respondent was asked the following question:

Please take a look at this. Here is a photograph of a sign for a hotel you might see if you were driving along the highway. [The witness was then shown the McSleep Inn logo that is the subject of registration before the Patent and Trademark Office.] Who or what company do you believe owns or operates this hotel?

Over 31 percent (31.9%) of all the respondents expressed the belief that McDonald’s owns or operates the hotel. If only respondents who stayed in a hotel at least once during the last 12 months are included, 34.5 percent believed that McDonald’s owns or operates McSleep Inn; and if only respondents who stayed in hotels 12 or more times during the past year are included, 38.5 percent believed that McDonald’s owns or operates McSleep Inn.

The results obtained by Dr. Zeisel in his two surveys are not materially different, *209 producing results within a percentage point or two of each other.

Dr. Zeisel criticized Dr. Jacoby’s surveys in several respects. The principal criticisms were in three areas. With respect to the airline magazine advertisement and the yellow page advertisement, the MeSleep Inn trademark was so diluted by the Quality Inns logo that a significant number of people did not even know that MeSleep Inn was being advertised. In that context, he did not believe that any meaningful results were obtained. With respect to the artist’s rendering of the MeSleep Inn, he agreed that the concept was appropriate, but criticized the fact that the respondent was shown a logo that included the phrase “by Quality International” underneath it. Not only did he consider that to be nothing more than a reading exercise for the respondent, but he observed that the respondent was allowed to retain the picture in front of him when answering the questions.

McDonald’s presented evidence that showed that of the 70 persons in Dr. Jacoby’s survey who correctly identified the hotel with Quality International, 50 said they did so because they read it on the sign. When asked why they identified MeSleep Inn with Quality International, typical responses were: “It says so on the ad,” “The ad tells you that it’s operated by Quality Inns International,” “Because it says so,” or “Because it says so on the sign I just read.” McDonald’s offered similar evidence on the yellow page advertisement and the airline advertisement where the respondents indicated they simply read Quality International in the advertisement.

Quality International justified its inclusion of “by Quality International” with the reason that it had made the decision to include that on the sign and wanted to test real life circumstances.

VI. APPLICABLE LEGAL PRINCIPLES

Trademark law gives the owner of a mark the right to preclude a use by a junior owner of a mark that causes or is likely to cause confusion, cause mistake, or deceive an appreciable number of typical consumers into believing that some sponsorship, association, affiliation, connection, or endorsement exists between the owner of the senior mark and the owner of the junior mark. See, e.g. 15 U.S.C. § 1114(a), but common law concepts of unfair competition are similar. The gist of a claim for trademark infringement, or the related commonlaw tort, is a sanction against one who trades by confusion on the goodwill or reputation of another, whether by intention or not. There are but two inchoative elements that must be established for entitlement, from which all permutations and guises of the cause of action are derived: the senior owner of the mark must demonstrate (1) the adoption and use of a mark and his entitlement to enforce it, and (2) the adoption and use by a junior user of a mark that is likely to cause confusion that goods or services emanate from the senior owner. Yale Electric Corf. v. Robertson, 26 F.2d 972 (2d Cir.1928). The articulation of standards and criteria are numerous for reaching the conclusion whether plaintiff has made his case.

The owner of a mark who has developed a reputation and identity with a mark through his products, service, marketing, and presence in the market, has an interest in protecting the business and reputation for which the mark stands, not only at the present time in the current markets in which he does business, but for future times and in related markets that the development of his business might naturally take him. Communications Satellite Corp. v. Comcet, Inc., 429 F.2d 1245 (4th Cir.), cert. denied, 400 U.S. 942, 91 S.Ct. 240, 27 L.Ed.2d 245 (1970); Yale Electric Corf. v. Robertson, 26 F.2d 972 (2d Cir. 1928); McDonald’s Corp. v. McBagel’s, Inc., 649 F.Supp. 1268 (S.D.N.Y.1986). The extent to which he may protect this interest relates directly to the strength of his mark. While one mark may not enjoy the strength of identity to preclude use of a junior mark in a related field or neighboring market, another may enjoy such recognition that confusion might result outside his own field or beyond the markets in which he does business. See, e.g. Maier Brewing *210 Co. v. Fleischmann Distilling Corp., 390 F.2d 117 (9th Cir.), cert. denied, 391 U.S. 966, 88 S.Ct. 2037, 20 L.Ed.2d 879 (1968) (beer vs. scotch); Cook Chemical Co. v. Cook Paint & Varnish Co., 185 F.2d 365 (8th Cir.1950) (paint vs. insecticide); Carling Brewing Co., Inc. v. Philip Morris, Inc., 277 F.Supp. 326 (N.D.Ga.1967) (beer vs. tobacco); Esquire, Inc. v. Maira, 101 F.Supp. 398 (M.D.Pa.1951) (magazine vs. clothing store). The measurement of this strength is revealed by evidence demonstrating a likelihood of confusion. The relationship of these two factors, strength and confusion, operates such that evidence of strength of a mark is perhaps the most significant factor in predicting the likelihood of confusion. On the other hand, evidence of the likelihood of confusion in a related field or neighboring market, or even in a competitive market, defines the scope of a mark’s enforcement and therefore is the measurement of its strength. Variations on the weight of evidence on these two aspects, i.e., the strength of the mark and the likelihood of confusion, will determine whether one mark will preclude the use of a later adopted and used mark.

Accordingly, a mark may enjoy such strength that it may be enforced in related fields or neighboring markets, whether they are product markets or territorial markets. Or, stated obversely, the likelihood of confusion in related fields or neighboring markets will demonstrate the strength of the mark. Communications Satellite Corp. v. Comcet, Inc., supra; Yale Electric Corp. v. Robertson, supra; McDonald’s Corp. v. McBagel’s, Inc., supra. Thus, a mark is not to be confined formulistically to a classification established by the Patent and Trademark Office or by lines of market competition. A mark is the identity of a corporation, a product or a service, and to the extent goodwill attaches, it knows no boundaries. Its reach is its strength. Where the public is confused and attributes a source, product, or service incorrectly, the owner of the mark, even though not a competitor, may experience damage to his reputation and goodwill. Both of these may have more meaning to the owner than immediate profits in the marketplace because they represent the potential for long range future profits.

On the other hand, two marks that serve to identify products in two unrelated markets may very well coexist without confusion in the public’s eye. Thus Notre Dame brand imported french cheese has been permitted to coexist with Notre Dame University; Bulova watches with Bulova shoes; Alligator raincoats with Alligator cigarettes; “This Bud’s for you” in beer commercials with the same phrase used by a florist; White House tea and coffee with White House milk; Blue Shield medical care plan with Blue Shield mattresses; Family Circle magazine with Family Circle department store; Ole’ cigars with Ole’ tequila; and Sunkist fruits with Sunkist bakery products. The list continues.

The determinative test cannot focus on how close or related the industries or products are, but rather by whether confusion is created so that an appreciable number of typical consumers will likely be confused.

It cannot be overlooked, however, that a close affinity of markets for two different products or services can create in the public perception a belief or expectation that one would be expected to go into the other. This belief or expectation becomes a factor in explaining confusion that may be shown between two products that do not compete with each other. Thus, the relatedness of markets in which the competing marks are used is relevant to the likelihood-of-confusion issue.

The enforcement of trademark rights to prevent use on related, but noncompetitive, goods is sometimes referred to as the “Aunt Jemima doctrine.” The rule dates from the 1917 decision of the Second Circuit in Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407 (2d Cir.1917) cert. denied, 245 U.S. 672, 38 S.Ct. 222, 62 L.Ed. 540 (1918), which enforced the mark “Aunt Jemima” used by the plaintiff on pancake batter against use of the same mark on defendant’s pancake syrup. The court rejected the old rule limiting enforcement to competitive goods and said a mark would *211 be protected on any goods which buyers would be likely to think came from the same source as plaintiffs goods.

[W]e think that goods, though different, may be so related as to fall within the mischief which equity should prevent. Syrup and flour are both food products, and food products are commonly used together. Obviously the public, or a large part of it, seeing this trademark on a syrup, would conclude that it was made by the complainant. In this way the complainant’s reputation is put in the hands of the defendant.

247 F. 409-10. The Aunt Jemima doctrine was given strong impetus in Yale Electric Corp. v. Robertson, supra, where the owner of the Yale mark used in connection with the sale of locks, was permitted to preclude the use of the mark in connection with the sale of flashlights. In an oft-quoted opinion, Judge Learned Hand noted that infringement and injury can occur even when the junior user uses a mark on related, but noncompetitive, goods:

However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner’s reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower’s use is so foreign to the owner’s as to insure against any identification of the two, it is unlawful____ The disparity in quality between [the senior user’s] such wares and anything the [junior user] makes no longer counts____ The [senior user] need not permit another to attach to its good will the consequences of trade methods not its own.

26 F.2d at 974 (citations omitted).

When the strength of the mark is so pervasive, however, to the point that the public actually attributes competitive products or services to the mark without the intent of attributing source, then the mark may be lost to the public domain. The public comes to understand the mark to refer only to the kind of goods and not to the origin. Thus, once enforceable marks such as aspirin, thermos, cellophane, and escalator have become generic words. Bayer Co., Inc. v. United Drug Co., 272 F. 505 (2d Cir.1921); King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir.1963); King-Seeley Thermos Co. v. Aladdin Industries, Inc., 418 F.2d 31 (2d Cir.1969); DuPont Cellophane Co., Inc. v. Waxed Products Co., Inc.,